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The referral to the Enlarged Board of Appeal in G1/24 is one of the most closely watched referrals of recent times (IPKat). The referral will address a question relevant to every European patent application, namely how should the claims be interpreted? Unsurprisingly, the amicus curiae have been flooding in (including from CIPA). KatFriend, Greg Corcoran, who contributed to CIPA’s Amicus Brief, now takes a look for IPKat at the comments from the EPO President on the referral, and presents his own views and observations on what these might indicate about the way the wind is blowing at the EPO.
Over to Greg:
“The President of the European Patent Office (‘EPO’) filed Comments in G1/24 relating to claim interpretation in which he asked Enlarged Board of Appeal (EBA) to account for the EPO’s practice of amendment of the description when considering the referral questions. Could his request be successful?
In the Referral G1/24 regarding use of the description for claim interpretation, the President proposed answers to the referral questions in his recently filed Comments. His answers rely on the right of the EPO to require amendment of the description. At first sight this does not appear to be directly responsive to the referral questions. It neither features in the parties’ replies to the referral questions nor is it at the heart of any of the Amicus Briefs. Yet a referral to the Enlarged Board on this very question of amendment of the description was long awaited in T56/21. The referral failed to materialise because that board decided that it would be unnecessary. That the President attempts to broaden the existing referral so late in the proceedings could seem surprising.
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The Referral
The referral questions focus on interpretation of the claims and the use of the description and drawings for that interpretation. The questions can be summarised as (reordered for a logical presentation):
Question 2) should reference be made to the description and the drawings when interpreting claims?
Question 1) is Art 69 (1) EPC and the Protocol of Interpretation the legal basis for the interpretation? and
Question 3) can a specification be a dictionary of definitions for the patent?
Review of EPC Articles for Interpretation
The title of Art 69 European Patent Convention (‘EPC’) is ‘Extent of Protection’. The extent of protection conferred by ‘a… patent or … patent application shall be determined by [its] claims’. However, ‘the description and drawings shall be used to interpret the claims’. So it would seem prima facie from this article of the EPC itself that the claims should not be read on their own.
Following one established line of case law, which is relied on the President, Art 69 EPC and the Protocol should only be applied post grant. During prosecution, ‘the claims shall define the matter for which protection is sought. The claims shall be clear and concise and supported by the description’. This last phrase of the latter sentence is generally accepted to mean that the support for the claims, including after amendment, should exist in the original description. However, this sentence – in the line of case law relied on by the President and EPO practice – has been taken to mean that the claims should ‘interpreted’ during prosecution, so that they are clear in themselves when read by a person skilled in the art (i.e. without necessarily needing the description). The last phrase of this later sentence has been taken to mean that the description should be made to support the description, ‘requiring the description to be adapted to the allowed claims’.
Recent Relevant Case Law
A few decisions in the last couple of years represent different, apparently divergent positions in EPO case law and which are relevant for the present referral.
In T438/22 the board decided Art 69 EPC applies post grant , and supported the practice of adaption of the description relying on Arts 84 & 94(3) EPC and Rules 42, 48 and 71(1) EPC. Yet the board stated that any amendment of the description should not add matter to the application as filed, Art 123(2) EPC.
The board in T56/21 decided differently, that there is no basis from Art 84 or elsewhere in the EPC for amending the description to comply with claims, but the board found that Art 84 EPC and rule 43 EPC were the main provisions for interpreting the claims during prosecution. Art 69 (1) EPC is reserved for application after examination of patentability, i.e. post-grant.
The interlocutory decision of the present referral T439/22 questions whether Art 69 (1) EPC and the Protocol rather than Art 84 EPC should provide basis for claim interpretation. The UPC Court of Appeal decision Nanostring was cited shortly before oral proceedings in April 2024, i.e. late in the proceedings. In Nanostring the Court of Appeal ruled that claim interpretation applies Art 69(1) EPC and the Protocol on Interpretation and that reference should always be made to the description and drawings when interpreting claims. This decision has been applied consistently in subsequent UPC decisions (e.g. SodaStream v Aarke).
The President’s Answers
It is within this context that the President provided his proposed answers to the Referral:
Question 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?
No: Article 69(1), second sentence, EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC are not applied on the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC by the EPO.
Summarising the President’s comments, he considers that Art 69(1) EPC and its Protocol have historically never been directly applied when assessing patentability substantively (Arts. 52 to 57 EPC). Yet this does not mean that Examination and Opposition divisions do not consider the description and claims when assessing substantive patentability. It is an important consideration that the same principles of claim interpretation should be applied by the EPO and post grant by national courts and the UPC (which do apply Art 69(1) EPC and its Protocol for determining the extent of protection of a claim). The EPO must take into account all provisions of the Convention to provide guidance on its tasks. For legal certainty to the public, the scope of protection should be clear from the allowed claims and the claims must be supported by the description. In granting patents, the EPO must interpret the claims and description transparently without affecting legal certainty for third parties. Yet the President considers knowledge of the legal basis for the performance of the EPO has little consequence on the outcome, because the outcome depends on the facts and circumstances of each case.
Question 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?
Yes: The description and figures may be consulted when interpreting the claims to assess patentability. This may be done generally.
The President considers enforceable rights derivable from a patent should so far as possible relate to the same subject matter found patentable during examination with use of the drawings and description to understand the claims. However, the claims have primacy above the description. The claims should be as clear as possible so that third parties (e.g. the courts and the public) should have the same understanding of the claimed subject matter as the EPO. Unclear and ambiguous features contrary to Art 84 EPC can only be remedied by amendment of the claims and of the description to comply with the allowed claims.
Question 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?
No: A definition or similar information for a claim term, which is explicitly given in the description, should not be disregarded when interpreting the claims to assess patentability. Such definitions should be incorporated into the claims by amendment so far as is possible so that the meaning of the claim is clear from the wording of the claim alone.
The President’s answer follows from the considerations for his answer to question 2. The EPO will take account during search and examination of a generally accepted definition of a term in the relevant technical field and any different definition given within the application itself.
Comparison of the President’s Comments and the Amicus Briefs
As indicated in the Introduction to this article, the President’s answers, particularly to question 2, fundamentally rely on the EPO’s practice of adapting the description in compliance with the claims, T438/22. The justification for this practice that the President presents is for the certainty of claim scope for third parties and to help the courts achieve consist claim interpretation. Yet this decision appears to have been cited in none of the Amicus Briefs.
It is curious that the President relies on amending the description in his answers so soon after the decision T56/21. That case was expected to result in a referral, as reported by IPKat. Yet that board disappointed many (as reported by the IPKat) by deciding that a referral was not appropriate because ‘the wording of Article 84 EPC as well as its context leave no room for requiring, in examination, that the description be adapted to allowable claims to match their subject-matter’. If the legislator considers it justified to require the description be aligned with the subject matter of the claims, the legislator should provide for the respective legal basis by way of amendment to the EPC. Respecting ‘a requirement to adapt the description to amended claims would disregard the choices made by the legislators and encroaches on the competence of the national courts’. T56/21 was noted by over a third of the Amicus Briefs, but in the context of the referral questions, i.e. relating to claim interpretation , rather than in the context adaption of the description.
President’s Reference to T56/21:
Although the President concurs with T56/21 in answering the first question of the present referral, i.e. that Art 69 EPC and the Protocol are not relevant for assessing patentability during examination, he characterises T56/21 as ‘divergent’ with respect to the practice of adaption of the description. He considers that Art 69 EPC and the Protocol are irrelevant when adapting the description to the claims, instead favouring Art 84 EPC to be applied during examination: the ‘claims shall be clear and concise and supported by the description’. He considers that this support requirement is an independent and fundamental requirement of the claims.
With such clear differences of opinion regarding the existence of basis in the EPC for amending the description between the board in T56/21 and the President’s view, it seems that the time is ripe for a referral. Both positions of the President (and T438/22) and the board of T56/21 cannot be right. The lack of a referral from T56/21 seems now to have been an opportunity missed.
Reason for the President’s Comments
Perhaps the President has realised this as well. The Comments of the President could be portrayed by some as simply justifying existing EPO practice. However, should the Enlarged Board decide the first question in the affirmative, i.e. affirm that Art 69(1) EPC is relevant for assessing patentability and thus during prosecution, there is a possibility that EPO’s practice of amending the description could be unnecessary. As the Interlocutory Decision, T439/22, states, a description adapted to comply with allowed claims risks having the subject-matter of an application examined by the European Patent Office to be consequently different from the subject-matter taken as the basis for allowing monopoly protection by the national courts. To anticipate uncertainty in the legal authority and basis for established practice of the EPO to adapt the description in view of allowed claims, it would then would seem reasonable that the President should seek certainty for all. In all fairness, it would thus appear that this is the object of his request:
‘A clarification [on the issue of adaption of description] from the Enlarged Board of Appeal when answering the referred questions would help resolve the debate.’
Possible Outcomes
The President points out that, in his view, to answer the referral questions, the Enlarged Board should consider the impact on existing EPO practice of amendment of the description. To some he appears to seek not only to maintain the existing practice of the EPO in adapting the description but he also appears to want to support the success of the UPC. From that viewpoint, it is as if he wants to have his cake and eat it. Can he really try to achieve both?
One outcome would be that the Enlarged Board answers the first referral question in the negative, consistently with the President’s view and affirm existing practice of the EPO. That he wishes to main existing practice for the stability, consistency, certainty of existing practice of the EPO is understandable. After all, change can be disruptive and there would risks in adapting EPO practice should the decision of the Enlarged Board be inconsistent with the President’s view.
A second outcome would be that the Enlarged Board answers the first referral question in the affirmative. If the President and the EPO wish to support the success of the UPC as the President has often stated, another view is that they could do no better than to assess patentability prior to grant with more consistency to the same assessment at court, in line with this outcome. Change in the practice of the EPO was no doubt foreseeable as a possible consequence of the introduction of the UPC (and Unitary Patent). It consequently follows, from this point of view, that if interpretations pre- and post-grant were more consistent, third parties, not just the patent owners, should and so would benefit from improved certainty on interpreting claims throughout and after the patent granting process. Although the President claims that he protects the interest of third parties by his support the current practice of the EPO of requiring adaption of the description, an advocate of an affirmative answer to the first question would argue that such a decision would facilitate certainty for third parties, enabling the President better to protect the interests of third parties that he now so assiduously claims to protect.
There is a third possible outcome: that the Enlarged Board refrains from considering the impact on the practice of amendment of the description, which some may consider as extending the scope of the referral questions. In that scenario, the chances of a future referral on the practice of amendment of the description would seem to be inevitable. To suppress the risk of uncertainty the Boards of Appeal may seek to identify a suitable case for a new referral on this question in the near future.
Of course the Enlarged Board may choose to take a different approach.
Summary
What is no doubt clear from the proceedings in G1/24 is that all parties ultimately seek certainty from the answers of the Enlarged Board to the referral questions. It is in the Enlarged Board’s hands whether, when answering the referral question, they account for the practice of adapting the description to the claims as requested by the President. The Enlarged Board will hear oral representations on 28 March 2025; the decision is currently expected mid-2025.”
Further reading
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