New referral to the Enlarged Board of Appeal
Can the description be used to interpret the claims?
New referral to the Enlarged Board of Appeal
A recent case has put the spotlight again on the question of how much emphasis should be put on the content of the description when interpreting the meaning of the claims of a European Patent?
The case in question (T 0439/22) concerned a heated tobacco product where the claims specified that the tobacco be ‘gathered’. The description provided its own definition of this term which included arrangements where the tobacco was ‘convoluted, folded, or otherwise compressed or constricted’. Prior art cited by the Opponent described a similar product where the tobacco was ‘spirally wound’.
In the past, Boards of Appeal have been reluctant to look to the description as an aid to interpret claim language which is clear in itself. However, in this case, the Board have indicated that they see some divergence in the case law such that a referral to the Enlarged Board of Appeal is necessary.
The Enlarged Board of Appeal is the ultimate arbiter on matters of Law relating to European Patents. Questions may be referred to it in order to ensure uniform application of the law, or if a point of law of fundamental importance arise. In practice, this means that the resolution of the issue being referred must be critical to decide the case. In T0439/22, the Board considered that if the claim is interpreted with reference to the description it would lack novelty whereas taking the language of the claim alone would resolve the case in favour of the Patentee. The fate of the patent thus rests on whether the description should be consulted or ignored.
Only the minutes of T0439/22 are available so far. A full written decision is expected in June where we will see the precise wording of the questions the Board wishes the Enlarged Board to answer. It is entirely possible that nothing will come of this case as it is within the competence of the Enlarged Board to decline to answer any questions referred to it, for example if they do not agree that the Case Law is sufficiently divergent. It is also common for the Enlarged Board to revise or reword any referred questions.
We will follow the progress of this case with interest to see whether the Enlarged Board wish to pick up this thorny issue and if so, how any decision they ultimately make will inform European Patent practice going forward.
****** UPDATE******
G1/24: A New Referral to the Enlarged Board of Appeal
The matter of whether and to what extent, the description of a European patent may be used to interpret the scope of the claims may soon be decided by the EPO’s Enlarged Board of Appeal. In case T0439/22, the Board of Appeal have referred three questions to the Enlarged Board in pending case G1/24:
- Is Article 69(1), second sentence EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC to be applied on the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC?
- May the description and figures be consulted when interpreting the claims to assess patentability and, if so, may this be done generally or only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation?
- May a definition or similar information on a term used in the claims which is explicitly given in the description be disregarded when interpreting the claims to assess patentability and, if so, under what conditions?
The Enlarged Board have the option not to accept the referral if they do not agree that the established case law is sufficiently unclear. It is also possible for the Enlarged Board to redefine the referred questions, and even to broaden their scope if it is felt that an important legal principal is in issue. This case will be one to watch as any final decision is likely to have significant implications for both patent owners and practitioners.