http://ipkitten.blogspot.com/2024/07/breaking-referral-to-enlarged-board-of.html
| One or two referrals? |
We now have confirmation of the referral to the Enlarged Board of Appeal (EBA) on how and if the description should be used to interpret the claims of a patent (G 1/24). The following questions have been referred to the EBA in T 0439/22:
1. 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?
2. 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?
3. 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 referred case relates to a Phillip Morris patent (EP3076804) for a smoking article. The question before the Board of Appeal at opposition was whether the description of the patent should be used to change the definition of “gathered” tobacco from the normal definition of “gathered” known in the art. To justify the referral to the EBA, the Board of Appeal cites contradictory case law on whether the description should be used to interpret prima facie clear claim language and on the broader question of whether the description as a whole should be used to construe the claims.
The EBA will now have to decide whether to accept the referral as admissible. This Kat remains dubious that a referral is actually justified for the specific facts of the case (IPKat). Furthermore, even if the EBA finds the referral admissible there is still no guarantee that the broader legal questions surrounding claim interpretation will be clarified. The EBA has a habit of narrowing the questions referred to it if it considers them too broad with respect to the case in question. The EBA may also choose to give only high-level guidance, as in G2/21, and leave it to the Boards of Appeal to interpret the practical consequences.
In the meantime, we are also still awaiting a referral from the unrelated case T 56/21. In this case, the Board of Appeal indicated back in December 2023 that they were poised on the brink of a referral on the question of whether applicants should be forced to adapt the description in line with the claims (IPKat). The only advancement in this case since December has been some recently filed third party observations. What is the reason for the hold up? Was the Board of Appeal in T 56/21 perhaps waiting to see how the Phillip Morris case (now G 1/24) would proceed? There is an argument that the two referrals should be combined, given that both relate to the importance or otherwise of the description for claim interpretation. Stay tuned!
Further Reading
- 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)
- Will we have a referral on using the description for claim interpretation or is the Board of Appeal jumping the gun? (T 439/22) (Jan 2024)
- Imminent EBA referral confirmed on the question of using the description to interpret the claims (T 0439/22) (April 2024)
Content reproduced from The IPKat as permitted under the Creative Commons Licence (UK).