The latest referral, T 0439/22, to the Enlarged Board of Appeal (EBA) addresses the critical issue of how and whether the description should be used to interpret patent claims (G 1/24). This case involves a Phillip Morris patent (EP3076804) for a smoking article, with the Board of Appeal citing conflicting case law regarding the use of the description in interpreting claims that are prima facie clear. This broader issue of whether the description should generally be used to construe the claims justifies the referral to the EBA.
Complexities in Patent Claim Interpretation
In this article, we explore the complexities of patent claim interpretation, emphasizing the challenges posed by the inherent limitations of natural language in representing novel technical advancements. Since patent claims are linguistic constructs, some degree of interpretation is inevitable. This necessity has led to divergent decisions by different Boards of Appeal (BoA), prompting two BoAs to refer essential questions to the Enlarged Board of Appeal (EBA). They seek clarity on the application of Article 69 EPC in assessing patentability and the extent to which descriptions and drawings should be used in this process.
Challenges in Patent Claim Interpretation
Patent claims represent technical advancements for which the inventor or applicant seeks protection. Natural language, however, has inherent limitations and is not particularly suited to describe technical innovations, especially novel ones. This leads to the inevitable need for interpretation of claim language, a challenge recognized even in ancient times.
Different approaches to claim interpretation have led to conflicting decisions by various Boards of Appeal (BoA). For instance, in appeal T439/22, BoA 3.2.01 referred questions to the EBA regarding whether Article 69 EPC applies to interpretation for assessing patentability and to what extent the description and drawings may be used in this process. Similarly, in appeal T56/21, BoA 3.3.04 is considering referring questions to the EBA about whether inconsistencies between claims and the description/drawings—where the description reveals subject matter not encompassed by the claims—constitute a violation of Article 84 EPC and a basis for refusal of the application.
Approaches to Determining Claim Content
The debate centers on two primary approaches to determining the content of a claim:
- Article 84 EPC Approach: This approach defines the claimed subject matter of the invention based on the realizations of the elements specified in the claim.
- Article 69 EPC Approach: This approach determines the extent of protection, including the infinite number of embodiments that may infringe the claim. The extent of protection encompasses future equivalents based on unforeseen technological developments over the patent's twenty-year term, which the inventor/applicant cannot fully assess at the priority date.
Although the 'subject matter of the claim' and the 'extent of protection' are closely related, they are not identical. Different BoAs have issued conflicting decisions on this matter. For example, in T1473/19, the BoA treats claim interpretation under Article 69 EPC as consistent for both patentability (Articles 54, 56, 83, 123(2)) and the extent of protection (Article 123(3) EPC). Conversely, in T169/20, the BoA argues that Article 84 EPC provides the legal basis for claim interpretation, with the phrase 'supported by the description' guiding how and when claims should be interpreted. Interpretation is limited to cases where this support is necessary and feasible.
Historic Basis for Divergence
The discrepancy between limited application of Article 69 EPC for determining the extent of protection (Article 123(3)) and broader application for assessing both patentability and protection (Articles 54, 56, 83, 123(2,3)) appears rooted in different formulations in the EBA decisions G2/88 and G6/88. Remarkably, these decisions were issued on the same day and drafted by the same rapporteur.
Recommendations for the European Patent System
To enhance the European patent system, it is crucial to:
- Ensure that claims/descriptions allow for predictable interpretation to provide appropriate protection based on the disclosure of the claimed subject matter.
- Adhere to Article 84 EPC requirements, ensuring claimed subject matter is sufficiently described and within the applicant’s/inventor’s possession at the priority date.
- Clarify the EPO’s role in harmonizing the extent of protection among national courts and the UPC, ensuring legal certainty for patent proprietors and the public.
By addressing these issues, the European patent system can achieve greater consistency and predictability in patent claim interpretation, benefiting all stakeholders involved.
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Author: Dr. Michael Schmid