http://ipkitten.blogspot.com/2023/03/epo-tries-to-have-its-cake-and-eat-it.html
The recent decision in T 0169/20 draws together two threads of Boards of Appeal case law on the relationship between the claims and description of a patent. The decision directly addresses the question of the role of the description in interpreting the language of the claims. The answer to this question has practical consequences, as it is critical to both the question of claim interpretation for patentability and added matter analysis (IPKat) and to the ongoing controversy of description amendments (IPKat).
| Eating cake |
The EPO’s hardline stance on claim interpretation for both added matter and description amendments arguably harbours an underlying legal contradiction at its heart. Either the recourse to the description is necessary for interpreting the claims or it is not, the EPO can not have it both ways. The recent decision in T 0169/20 explicitly addresses this contradiction, but in this Kat’s view, is unable to satisfactorily square the circle.
Claim interpretation and description amendments
The legal basis for description amendments is reliant on an interpretation of the EPC that requires the claims to be necessarily read in view of the description. According to this interpretation, even if the claims are themselves clear, the description of the invention in the specification should be taken into account. If there is a contradiction between how the invention is described in the claims and the rest of the specification, it is argued that a skilled person reading the patent would be confused as to what the invention actually is (see T 1024/18, IPKat).
The Boards of Appeal on the other side of the “description amendment” debate argue that it is the claims that define the invention. Accordingly, if the claims are clear in-and-of themselves, language relating to the invention in the description can and should be ignored. Consequently, if the description defines a term used in the claims in an unusual way, this does not change the normal, clear meaning of the term in the claims. According to this view, language in the description that contradicts the claims can therefore be ignored (see T1989/18, IPKat).
Claim interpretation and catastrophic comma loss
In both of the cases cases of “catastrophic comma loss” (T 1473/19, T 1127/16), the patentee fell into the inescapable added matter trap following the loss of a single comma in the claims (IPKat). The matter defined by the claims was irreparably broadened by the loss of a comma that changed the meaning of the claims to cover subject matter that did not appear anywhere in the description and thus lacked basis (Article 123(2) EPC). The question on appeal in both cases of catastrophic comma loss was whether the description could be used to interpret the claims to avoid an interpretation of the claims that added matter. The patentees in both cases argued that a skilled person reading the patent would have read the claims in view of the description and interpreted the claims accordingly. The Boards of Appeal in both cases rejected this argument, finding that “[o]nly the claims determine the extent of protection” (T 1473/19, r. 3.16).
Squaring the circle of claim interpretation (T 0169/20)
T 0169/20 directly addresses the issue of claim interpretation. The patent EP2892992 related to a detergent container, and was opposed on the grounds of lack of novelty and inventive step. Claim 1 of the Main Request on appeal related to a “container for a detergent comprising a detergent composition …the detergent composition having a fluid phase and containing a second container…“. The interpretation of this phase was critical to whether the claims could be considered inventive.
The Patentee argued that the claim could only be interpreted as meaning that the second container specified in the claims was contained within the fluid phase of the detergent composition. The Board of Appeal disagreed, and found that there could be another interpretation. The claim did not explicitly specify that the second container had to be contained within the fluid phase. As such, for the Board of Appeal, the claim could therefore be read as including embodiments whereby the second container was contained in a different phase (e.g. solid powder phase) of the detergent.
The question became whether the description could be used to support the patentee’s interpretation of the claims, or whether the description should be ignored in view of the clear interpretation of the claims absent any recourse to the description.
The two provisions cited as relevant to interpretation of the claims are Article 84 EPC and Article 69 EPC. Article 84 EPC stipulates that the claims “shall define the matter for which protection is sought, and shall be clear, concise and supported by the description“. Article 69 EPC states that “the extent of the protection conferred by [a patent] shall be determined by the claims, but that nevertheless, that the description and drawings shall be used to interpret the claims“.
In the present case, the Board of Appeal first resoundly rejected any role of Article 69(1) EPC in claim interpretation for the purposes of evaluating patentability. The Board of Appeal drew the familiar distinction between the “scope of protection” conferred by the claims (Article 69 EPC), and delimitation of the invention by the claim language (Article 84 EPC) (r.1.2.3).
Turning to Article 84 EPC, the Board of Appeal also rejected the argument that Article 84 EPC (or any of the pertinent Rules) provides legal basis for consulting the description if the claims are already clear: “when the wording of a claim is clear for the skilled person, the supporting role from the description is neither necessary nor justified […]The support of the description should be resorted to only in case of need, since it is the wording of the claims which defines the matter for which protection is sought (i.e. the invention) and it would not be justified to seek help in understanding a subject-matter which is in itself clear.
In the case in question, the Board of Appeal concluded that the language of the claim was clear without recourse to the description, and thus rejected the patentee’s construction of the claim language. The claims of the Main Request were therefore found to lack inventive step.
However, it was also the Board of Appeal view that the requirement in Article 84 EPC for the claims to be “supported by the description”, also provided basis for the function of the description as “a support for understanding the subject-matter of the claims”. Furthermore, for the Board of Appeal, the supporting role of the description “is only possible to the extent that there is a correspondence between the description and the subject matter of the claimed invention, so that the technical explanations in the description can serve to illustrate the meaning of the claimed features and not to limit or modify their scope with respect to what a person skilled in the art would understand when reading them.” The Board of Appeal concluded from the supporting role of the description with respect to the claims thus required “the description be adapted to disclose the same invention as the claims […] as an aid for understanding the claims“.
The Board of Appeal was therefore clearly at pains to point out that its rejection of any role for the description in the interpretation of otherwise clear claim language, did not mean that the description should not be amended in line with the claims.
Final thoughts
The decision in T 0169/20 makes an admirable attempt, but in this Kat’s view ultimately fails, at reconciling the EPO’s description amendment requirement and the recent decisions disallowing recourse to the description claim interpretation in added matter and patentability analysis. The flaw in the EPO’s reasoning is crystalised if one considers the case of an unusual definition provided in the description of a common word used in the claims. In such a case, does the definition in the description change how the claims should be interpreted?
According to one line of reasoning in T 0169/20, a definition in the description should have no role in interpreting the claims: “when the wording of a claim is clear for the skilled person, the supporting role from the description is neither necessary nor justified“. However, according to the second line of reasoning in T 0169/20, definitions in the description should be amended so as to not contradict the claims. The concern is that the description should be amended so that these contradictory statements do not “modify [the scope of the claims] with respect to what a skilled person in the art would understand when reading them“. To this Kat, these two positions appear directly contradictory. Either the language in the description can influence how a skilled person would interpret the meaning of clear language in the claims, or it can not. The EPO can not have its cake and eat it.
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