Questions on claim interpretation now referred to Enlarged BoA (G1/24)
1. Facts underlying T 0439/22:
Claim 1 comprises a term ("gathered sheet") which has a clear and agreed meaning to the skilled person. However, the description defines the term more broadly. Which understanding is to be used for determining novelty of claim 1? This question is considered decisive as cited D1 is considered novelty-destroying when the broader understanding based on the description is applied. The 1st instance ruled that the term should be given the meaning established in the art (i.e., ignoring the definition comprised in the description).
2. Key considerations for referral:
The BoA considers the case law to diverge on the following questions which are all seen as decisive:
a) legal basis for construing patent claims
b) whether it is a prerequisite for taking the figures and description into account that the claim wording when read in isolation be found to be unclear or ambiguous
c) extent to which a patent can serve as its own dictionary.
Regarding a), the decision refers to G 2/88 and G 6/88 highlighting that in the early days of the EPC, Art. 69 and the Protocol were applied in the context of patentability, and that a strong line of case law seems to have departed from these fundamental decisions.
Regarding b), the decision considers that some decisions always take the descr./fig. into account for claim interpretation, others only when there is unclarity/ambiguity in the claims and even some never consider the description or figures.
Regarding c), decisions are identified which consider the patent to be its own dictionary, others are found to say that the description should not be used to limit the claimed subject matter beyond the skilled person's understanding of the claim for sake of legal certainty, and again others hold that definitions in the description are only to be disregarded if found to contradict the claim.
The BoA then continues to analyze decisions from DE, FR and the UK as well as from the UPC (!) and concludes that these decisions unanimously apply Art. 69 and the Protocol in re of claim interpretation also under patentability. Even further, the BoA finds that none of these national/UPC decisions requires claims to be unclear as a prerequisite to interpret the claims using the description and figures.
3. Personal opinion
The referral is well reasoned and the references made to national and UPC case law are truly impressive. It carries the handwriting of legal member P. Guntz, former chair of Munich's 7th civil chamber (patent litigation).
A decision regarding the questions raised is long overdue. At least from a German IP perspective, it has been very hard to make sense of the many EPO decision taking the claims on their merits only (no interpretation based on the descr./fig. at all) or only resorting to the descr./fig. in case of unclarity.
Article by Michael Schmid-Dreyer, Patent Attorney at HKW Intellectual Property
