In case G1/24, the European Patent Office’s (EPO) Enlarged Board of Appeal is asked to consider when description and figures can be consulted to interpret claims to assess patentability.
EPO case law on this point is divergent between different Board of Appeal decisions. Some decisions suggest that Article 69 EPC requires that the description and figures should always be considered when interpreting the claims. Other decisions suggest that support of the description for interpreting the claims should be restricted to exceptional cases where the claimed subject-matter needs to be clarified.
Opposition proceedings
Philip Morris’s product European patent number EP3076804 was granted on 31 July 2019 and relates to a “heated aerosol-generating article” (a smoking article). The technology described in this patent forms part of the “heat-not-burn” tobacco products which mimic smoking a traditional combustible cigarette by heating but not burning tobacco to release a nicotine-containing aerosol from an electronic device.
An opposition to the grant of this patent was filed on 30 April 2020 by Yunnan Tobacco International. The opponent raised both novelty and inventive step as grounds for opposition. After oral proceedings, the Opposition Division rejected the opposition and maintained the patent as granted.
One of the key considerations in the opposition proceedings was the interpretation of the feature of the “gathered sheet”. The patentee argued that this term has a well-established meaning in the art. The patentee then relied on this interpretation to argue that such a feature was not present in prior art documents D1 and D2.
The opponent however, believed a “gathered sheet” is not a term known from the art and that the skilled person would only be able to determine the meaning of this feature from paragraph [0035] of the application as filed. The opponent argued that if the term gathered sheet were to be given the meaning defined by the description, then there is a corresponding feature in D1 and D2.
The Opposition Division sided with the patentee’s interpretation of the term “gathered sheet” and turned to an example from the field of sewing to demonstrate that the skilled person would be aware of this term. The opposition was therefore rejected.
Appeal proceedings
T0439/22 is the appeal of the decision of the Opposition Division to maintain the patent as granted.
The definition of the term “gathered sheet” was discussed at length during both the written and oral proceedings for this case.
The Board informed the parties that the outcome of the case appeared to hinge on whether the description was to be considered even when interpreting a claim that contained an allegedly clear term.
At the oral proceedings, the appellant conceded that the term “gathered sheet” did not have a clear and agreed meaning as held by the Opposition Division.
The patentee was however of the opinion that the skilled person when reading the claim in isolation from the description of the patent would assume that a “gathered sheet” differed in arrangement from what was described in the prior art.
The importance of Article 69 EPC and the Protocol on the Interpretation of Article 69 EPC was discussed as well as when and how a patent application can be its own dictionary.
This posed some challenging issues for the Board to resolve, and the Board highlighted diverging lines of case law relating to when the description and figures should be consulted when interpreting the claims. Considering this, it was determined that a set of questions should be referred to the Enlarged Board of Appeal.
Questions referred to the Enlarged Board of Appeal
- Is Article 69 (1), second sentence EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC to be applied to the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC?
- 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?
- 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?
Relevance to practice
The answers from the Enlarged Board of Appeal could be very useful for future practice, particularly for contentious proceedings. For example, what is the correct balance when trying to interpret claims between a patent being its own dictionary and that claims should be clear in themselves when read by the person skilled in the art, without any reference to the content of the description?
Further, the answers from the Enlarged Board of Appeal may be revealing on what constitutes a “well-recognised meaning” and what the bar is for a term to be defined as unclear.
We will report further when the Enlarged Board of Appeal has provided a response to the referred questions.
