G 1/24 - Referral: Can the description and figures be consulted when interpreting the claims to assess patentability?
Today, the Boards of Appeal published the following communication (no changes made, except for emphasis added and references to points in the referring decision added cf. the Order of the latter) on their website:
Referral to the Enlarged Board of Appeal – G 1/24 ("Heated aerosol")
Under Art. 112(1)(a) EPC, a Board of Appeal refers a question to the Enlarged Board of Appeal if it considers that a decision is required, in order to ensure uniform application of the law [see point 3] or if a point of law of fundamental importance [see point 4] arises.
Technical Board of Appeal 3.2.01 has by interlocutory decision T 439/22 referred the following questions to the Enlarged Board of Appeal (referral pending under G 1/24 - Heated aerosol):
- 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? [see points 3.2, 4.2 and 6.1]
- 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? [see points 3.3, 4.3 and 6.2]
- 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? [see points 3.4, 4.4 and 6.3]
Contact
Nikolaus Obrovski
Jeannine Hoppe
Spokespersons of the Boards of Appeal of the European Patent Office
boa-press@epo.org
Referring Board's decision: T 0439/22 (Gathered sheet) dd 24-06-2024
The EPO posted the following message today:
ReplyDeleteNotice from the European Patent Office dated 1 July 2024 concerning the continuation of examination and opposition proceedings in view of referral G 1/24
1. Referral G 1/24 ("Heated aerosol") is pending before the Enlarged Board of Appeal. The referring board seeks to clarify three questions.
(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 Article 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?, and
(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 questions referred to the Enlarged Board of Appeal can be found in decision T 439/22. (https://www.epo.org/en/boards-of-appeal/decisions/t220439eu1)
2. To ensure the proper functioning of the EPO and for legal certainty, the President of the EPO has decided that proceedings before the examining and opposition divisions should continue.
3. This notice applies with immediate effect.
See https://www.epo.org/en/legal/official-journal/notice-european-patent-office-dated-1-july-2024-concerning-continuation-examination-and-opposition
item 2 is interesting: how would the examining and opposition divisions act if a situation occurs of which the outcome depends on the answers from the Enlarged Board, while they are not allowed to wait but must continue? And how is "for legal certainty" than guaranteed, while it is not known whether the way they continue is legally correct? How does this match with the purpose of the referral: "The [following] questions are referred to the Enlarged Board of Appeal, both to ensure the uniform application of the law [see point 3] and because a point of law of fundamental importance arises [see point 4]" (citation from the Catchword of the referring decision).
Item 2 is indeed interesting. We can only speculate that the reasons for this decision of the president is to allow the EPO to continue with its work. If proceedings would be halted in view of this referral, this halt would pretty much apply to all pending proceedings in which novelty and/or inventive step is at stake.
ReplyDeleteQuestion (1) should be answered in the negative in my view. The reason is that there is a difference between the subject-matter (which is claimed) and the scope of protection (that is not claimed). The scope of protection is the result of an interpretation of the claimed subject-matter together with the content of the description and the figures. If a definition of a term is given a special meaning in the description, this special meaning relates to the claimed subject-matter and thus must be considered when assessing patentability thereof.
Usually, the scope of protection is wider than the claimed subject-matter because it encompasses equivalents (Protocol on the interpretation of Art. 69 EPC, Art. 2). However, the scope of protection (even with equivalents of the claimed subject-matter taken into account) cannot be so wide as to encompass subject-matter which is not patentable. In my opinion, this follows from logic.
Question (2) should be answered in the positive in my view. Naturally, the description and figures have to be considered because they principally can give a term recited in a claim a special meaning, i.e. a meaning different from a generally accepted meaning of said term. However, this does not relate to the scope of protection, but relates to the claimed subject-matter, which changes because of the different meaning of the term in question.
Question (3) should be answered in the negative in my opinion. A term given a different meaning in the description may not be disregarded when assessing patentability because it would result in the situation that a patent is granted on subject-matter which is not patentable if the meaning of the term which the applicant/patentee decided it to have is taken into account.
If the description is diregarded, this would also result in the odd situation that a patent can have a scope of protection which is different to the scope of protection which would result from an interpretation of the claims in isolation. For example, if the claim recites "pets" and the description contains the information that "lions" are encompassed by said term, the scope of protection would necessarily be different when the claims are interpreted in isolation (which is not to be done, see Protocol on the interpretation of Art. 69 EPC, Art. 1) compared to when the claims are interpreted in light of the description (which is to be done, Protocol on the interpretation of Art. 69 EPC, Art. 1).
Andreas
Hello Andreas, however, in my view a question arises: in case of freedom to operate and review of the claims, a third party is obliged to read the full description inn order to check if the proprietor has given a special meaning to a word. If you recite the feature "switch", "spring", "vassel" a third party should interprete as such. If you recite the feature "dark switch", "crazy springs", "green vassel", they are not common term so you are incentived to look into description. A think if you want to give a special meaning to a "common" word, you should put them into description. This is a good compromise
DeleteDear anonymous. As you said, a third party (and the public) will always look at the description. If the description defines a term in a claim different to common understanding, this means that the subject-matter of the claim is to be interpreted with said different term. The point is: The description can also give a common term (like: "spring") a different meaning. If an Examiner would not consider this different meaning, it could happen that a patent is granted on subject-matter which is not part of an application because it is granted to subject-matter which the applicant did not intend to be granted. This could also result in the odd situation that a patent is granted because of the common meaning of the term in the claim (e.g. spring), but would not have been granted in view of the different meaning of said term which the applicant intended. This poses problems in prosecution because the patentee could claim that the granted subject-matter and scope covers subject-matter related to the different meaning of the term, although said subject-matter would not have been patented (because it is not patentable). Naturally, these things can be smooted out by revocation proceedings, but this is time and cost intensive.
ReplyDeleteNaturally, this is just my view on this matter.
Andreas
Today, the message below (cited without amendments) was published kn the website of the Boards or Appeal (https://www.epo.org/en/law-and-practice/boards-of-appeal/communications/oral-proceedings-case-g124-heated-aerosol-enlarged):
ReplyDelete"Oral proceedings in case G1/24 ("Heated aerosol") before the Enlarged Board of Appeal
28.11.2024
The oral proceedings in case G 1/24 (“Heated aerosol”) before the EPO Enlarged Board of Appeal will be held on 28 March 2025. The public and members of the media will be able to follow the proceedings online via livestream.
The Enlarged Board of Appeal has summoned the parties in case G 1/24 (“Heated aerosol”) to oral proceedings, which will take place on 28 March 2025 at 10:00 hrs at the premises of the EPO at Bob-van-Benthem-Platz 1, Munich. The language of the proceedings is English.
Members of the public may follow the oral proceedings via livestream only.
The link for the livestream of the oral proceedings will be published here as of 21 March 2025."
(here = https://www.epo.org/en/law-and-practice/boards-of-appeal/communications/oral-proceedings-case-g124-heated-aerosol-enlarged)