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T 0447/22 is another addition to the debate over how much the description of a patent should be used to interpret the claims. The case considers two issues that may soon be referred to the Enlarged Board of Appeal (EBA): claim interpretation and adaptation of description. The Board of Appeal in this case found that inconsistencies between the description and the claims can be ignored in claim interpretation, whilst simultaneously defending the need for adaptation of the description to the claims for purposes of clarity.
Construing the claims in view of the description
T 0447/22 related to an opposition of the granted patent EP2425173 for a device for renovating pipes. The patentee also brought infringement proceedings in Germany against the opponent. Claim construction was a key issue in the opposition case.
Claim 1 as granted specified a “[a] machining device for machining the material of a pipe system”. The device was defined as comprising a) protruding parts, b) means for removing a material and c) a steering device. A key question on appeal was the meaning of the term “steering device”. The patentee argued that the steering device did not necessarily have to be different to the protruding parts. In support of this interpretation, the patentee pointed to parts of the description which mentioned that the protruding parts could also act to steer the device. According to the patentee, a claim did not require there to be a separate “steering device”.
| Pipes |
The Board of Appeal noted the “extensive body of case law of the Boards of Appeal” according to which a claim may be interpreted with the help of the description (r. 13.1). It was clear to the Board of Appeal that “[t]t is a general principle applied throughout the EPC that a term of a claim can be interpreted only in context. The claims do not stand on their own, but together with the description and the drawings they are part of a unitary document, which must be read as a whole” (r. 13.1).
However, the Board of Appeal also noted that there are certain limits to this general principle that the claims should be interpreted together with the description. Namely, the description cannot be used to “read into the claim features appearing only in the description”. In other words, the description cannot be used as a repository of definitions that can be used to change the meaning of otherwise clear claim language, as “[t]his would not be to interpret claims but to rewrite them” (r. 13.1). As such, “in the event of a discrepancy between the claims and the description, those elements of the description not reflected in the claims are not, as a rule, to be taken into account for the examination of novelty and inventive step” (r. 13.1).
In the case in question, the Board of Appeal found that the passages in the description indicating that the protruding parts may act as the steering device could not be used to alter the meaning of the claim. As such, for the Board of Appeal the term “steering device” in the claim required there to be “an actual physical component of the machining device which is adapted for actively controlling the direction of the machining” (r. 12). The claim language therefore required there to be protruding parts that were separate and distinct from a steering device.
In the national infringement proceedings, the claims were construed differently. The Regional Court of Düsseldorf found that the protruding parts specified in the claims could also be the steering device. However, the Board of Appeal did not think a decision by a national court was sufficient reason for it to alter its own conclusions (r. 13.7). The Board of Appeal concluded: “the present case is one where the interpretation of a claim in the light of the description reaches its limits”. Particularly, incorporating into the claim the features provided in one embodiment described in the description could “only lead to a technically discrepant claim interpretation which the skilled person would be unwilling to adopt and would actually deprive the claims of their intended function” (13.6).
Under the interpretation of the main request by the Board of Appeal, claim 1 of the main request was found to lack novelty in view of the cited prior art. Claim amendments submitted as an auxiliary request were considered novel and inventive.
The requirement to adapt the description post-grant
The Board of Appeal also had to consider whether an auxiliary request submitted by the patentee should not be allowed because it was inconsistent with the description. The opponent particularly argued that the description should be amended in line with the Board’s narrower interpretation of the claims, i.e. that the steering device should be physically distinct from the protruding parts specified in the claim.
The opponent argued that the patentee had not made all the amendments necessary to the description required by the claim amendments of the auxiliary request. However, the Board of Appeal did not agree. For the Board of Appeal, the passages of the description identified by the opponent contained inconsistencies with the claims that were present on grant. As such, the lack of clarity did not newly arise as a result of the post-grant amendments. As such, the Board of Appeal found that the opponent’s request to revoke the patent due to the absence of further amendments to the description, lacked legal basis and must be rejected (r. 86).
The Board of Appeal thus remitted the case to the opposition division with the order to maintain the patent as amended on the basis of the auxiliary request.
Final thoughts
The Board of Appeal in this case was unequivocal that, under the prevailing case law of the Boards of Appeal, inconsistencies between the description and the claims render the claims unclear under Article 84 EPC. The decision in T 0447/22 nonetheless provides some comfort by confirming that a lack of conformity between the description and the claims cannot be used to revoke a granted patent if this lack of conformity existed at grant. We await the expected referral (or referrals) to the Enlarged Board of Appeal around the issues of adaptation of the description and claim interpretation.
Despite defending the need for the description to be amended in line with the claims under Article 84 EPC, T 0447/22 also undermines the practical importance of such a requirement. The Board of Appeal admitted that “those elements of the description not reflected in the claims are not, as a rule, to be taken into account for the examination of novelty and inventive step”. Therefore, whilst the Board of Appeal accepted that there were clear discrepancies between the granted claims and the description, leading to a lack of clarity under Article 84 EPC, the Board of Appeal found that these discrepancies nonetheless had no impact on claim interpretation or the consequent validity of the patent. What mattered was the wording of the claims. If discrepancies between the description and the claims can be ignored in this way, why does the EPO continue to feel the need to get on its high horse about description amendments?
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)
- 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)
- Don’t shoot yourself in the foot: European file history in US patent claim interpretation (K-fee v Nespresso) (Jan 2024)
Description amendments
- Board of Appeal finds no legal basis for the requirement to amend the description in line with the claims (T1989/18) (Dec 2021)
- Can amending the description to summarize the prior art add matter to the patent application as filed? (T 0471/20) (Jan 2022)
- EPO Board of Appeal toes the party-line on description amendments (T 1024/18) (April 2022)
- Board of Appeal case law against the description amendment requirement starts to mount up (T 2194/19) (16 Nov 2022)
- Another Board of Appeal enters the fray on description amendments (T 3097/19) (Nov 2022)
- Board of Appeal poised on the brink of a referral on description amendments (T 56/21) (July 2023)
- Adding matter by amending the description to exclude embodiments (Ensygnia v Shell [2023] EWHC 1495 (Pat) (Aug 2023)
- Referral on description amendments moves one step closer (T 56/21) (Nov 2023)
- Deletion of claim-like clauses: Board of Appeal finds legal basis for adaptation of the description from “the EPC as a whole” (T 0438/22) (Jan 2024)
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