Will we have a referral on using the description for claim interpretation or is the Board of Appeal jumping the gun? (T 439/22)

http://ipkitten.blogspot.com/2024/01/will-we-have-referral-on-using.html

PatKat awoke from her mince pie induced doze to the intriguing news that there may be another referral to the Enlarged Board of Appeal (EBA) waiting in the wings. This potential referral concerns the all important question of how much the description should be taken into account for claim interpretation. In the pending appeal case T 439/22, the Board of Appeal suggests that a referral is needed in view of the conflicting case law on whether the description should be consulted in order to interpret otherwise clear claim language. However, do the facts of this particular case really justify a referral? 

Gathered, spiralled or both?

The pending appeal in T 439/22 relates to a Philip Morris patent EP3076804. The patent was maintained at Opposition. On appeal, the Board of Appeal’s non-binding preliminary conclusion was that the case hinges on the question of whether the description should be taken into account when interpreting otherwise clear claim language. Interpretation of the claims in line with the description favours the Opponent’s case, whilst ignoring the description favours the Patentee. For the Board of Appeal, diverging case law on claim construction and the fact that the question is of fundamental importance would justify a referral. 

The granted patent EP3076804 related to a cartridge for a “heat-not-burn” smoking device, in which tobacco is heated, not burnt. The question in the pending appeal is whether the claims are novel. The smoking device cartridge in the relevant prior art is described as comprising “spirally wound” smoking material (e.g. tobacco). The claims of the patent specify that the cartridge comprises “gathered” smoking material. It is critical to the novelty of the claim whether the “spirally wound” material of the prior art should be considered equivalent to the “gathered” material of the claim. The description provided a very broad definition of gathered: “As used herein, the term ‘gathered’ denotes that the sheet of tobacco material is convoluted, folded, or otherwise compressed or constricted substantially transversely to the cylindrical axis of the rod.” The view of the Board of Appeal was that this definition was at odds with the normal, narrower, definition of the term as used in the tobacco industry. 

The Opposition Division took what the Board of Appeal considered to be the “classical approach” to claim interpretation. Under this approach, the description should only be consulted in order to construe words in the claims that are otherwise unclear (T 169/20, IPKat). For the Board of Appeal, this line of case law prohibits any recourse to the description for the interpretation of otherwise clear claim language (IPKat). However, the Board of Appeal considered there to be an alternative branch of case law, according to which definitions provided in the description “cannot be left unconsidered” (T 1473/19). 

Where is the real divergence in the case law? 

Confusingly, the case cited by the Board of Appeal as taking the divergent “non-classical” approach to claim interpretation is one of the “catastrophic comma loss” cases (T 1473/19, IPKat). However, contrary to the Board of Appeal’s suggestion in the present case, T 1473/19 found that in the case of a contradiction between the description and the claims, the ordinary meaning of the words in the claims should take precedence. In particular, “[t]he primacy of the claims [..] limits the extent to which the description may serve as a dictionary for the terms used in the claims.” (T 1473/19, r. 3.16.2). T 1473/19 therefore appears entirely aligned with the approach that alternative definitions of otherwise clear language cannot be mined from the claims. 

In this Kat’s view, the divergence in the case law on claim interpretation is thus not to be found in the question of whether the description may be mined for definitions of otherwise clear claim language. The case law (including in T 1473/19) appears relatively aligned that this is not permissible. Are readers aware of any recent explicitly contradictory decisions?

As later admitted by the Board of Appeal in T 439/22, the divergence in the case law on claim interpretation is instead on the broader question of whether the description should be consulted in EPO proceedings pursuant to Article 69 EPC and/or Article 84 EPC (para. 7.) (see also IPKat). In the recent decision T 1924/20, for example, the Board of Appeal found that “a skilled reader of a patent claim would, for many reasons, interpret the claims based essentially on their own merits […] This is because the ‘subject-matter of the European patent’ […] is defined by the claims and only by them”. In other words, according to this decision, claim interpretation in EPO proceedings should be performed pursuant to Article 84 EPC. This approach is different to one taken in T 1473/19, which found that the claims should be interpreted holistically, taking into account the drawings and description, pursuant to Article 69 EPC. A holistic approach to claim interpretation would also appear to permit functional language in the description to influence how the claims may be interpreted (T 450/20, IPKat). However, as mentioned above, the Board of Appeal in T 1473/19 did not consider interpreting the claims under Article 69 EPC as justifying a change to the interpretation of otherwise clear claim language in view of language provided in the description (IPKat). 

It is at this juncture that we see the connection with the “adaptation of the description” debate, on which we are shortly expecting a separate referral in an unconnected case (T 56/21, IPKat). Boards of Appeal have defended the EPOs requirement for adaptation of the description in line with the claims in view of the relevance of the description for claim interpretation under Article 69 EPC and/or Article 84 EPC. However, arguably, this case law defending the “adaptation of the description requirement” conflicts with the broad consensus among the Board of Appeal that no approach to claim interpretation can alter the interpretation of prima facie clear claim language (IPKat). The opposing view is that holistic interpretation of the claims in view of the description pursuant to Article 69 EPC means that the description should be brought in line with the claims as a matter of patent quality. 

Final thoughts

It is hard to think of a more fundamental question for patent law other than that of how the words in a claim should be interpreted. It is therefore highly undesirable for there to be confusing and contradictory Boards of Appeal case law on this issue. How is one expected to draft a patent application if the rules for the interpretation of a language used in the claims and description are unclear? The Board of Appeal has indicated that it intends to refer the question on how to interpret the claim wording to the EBA. It is now up to the parties whether they wish to first discuss the issue at oral proceedings. However, this Kat is not sure that the facts of the case in T 439/22 will convince the EBA that a referral is justified. Watch this space! 

Further reading

Claim interpretation

• Boeing’s comma drama: Commas and taking the description into account when construing a claim (T 1127/16) (April 2021)
• Another case of catastrophic comma loss (T 1473/19): Interpreting the claims in view of the description (Jan 2023)
• EPO tries to have its cake and eat it on claim interpretation (T 0169/20) (March 2023)
• Construing the claims to include technical effects mentioned in the description (T 1924/20) (April 2023)
• The risk of pre-grant description amendments (T 450/20) (July 2023)
• Benefits and pitfalls of functional patent claims (and why the UK is out of step with the EPO on claim construction): Astellas v Teva [2023] EWHC 2571 (Pat) (Nov 2023)

Description amendments

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