http://ipkitten.blogspot.com/2024/04/imminent-eba-referral-confirmed-on.html
It is now confirmed that there will be a referral to the Enlarged Board of Appeal (EBA) on the correct approach to claim interpretation. The Board of Appeal in T 0439/22 had previously indicated that they were minded to refer a question to the EBA on how much the description should be used to interpret the claims (IPKat). The published minutes of oral proceedings from a hearing in the case last week confirm that the Board of Appeal intends to follow through on this intention.
Case background: Spiralled or gathered?
T 0439/22 relates to an appeal of the opposition decision to maintain the Philip Morris patent EP3076804. In the Board of Appeal’s view, the case hinges on the question of whether the description should be taken into account when interpreting otherwise clear claim language. Interpretation of the claims in line with the description favours the Opponent’s case, whilst ignoring the description favours the Patentee.
The patent EP3076804 claims a cartridge for a smoking device comprising “gathered” smoking material (e.g. tobacco). The prior art cited for novelty described a cartridge comprising smoking material that is “spirally wound”. The description of the patent provided a definition of gathered that the Board of Appeal viewed as broader than the industry norm. Included in this definition were materials that were “convoluted, folded, or otherwise compressed or constricted”. The Board of Appeal found that if the non-standard definition of gathered provided in the description was used to interpret the claims, the claims would lack novelty.
| Did someone say a new referral? |
Referral to the Enlarged Board of Appeal confirmed
Questions may be referred to the EBA by Boards of Appeal “in order to ensure uniform application of the law, or if a point of law of fundamental importance arises” (Article 112 EPC). In their preliminary opinion, the Board of Appeal in this case noted contradictory case law, both on whether the description can be used to interpret prima facie clear claim language and on the broader question of whether the description as a whole can be used to construe the claims in view of Article 69 EPC and/or Article 84 EPC. In T 1924/20, for example, the Board of Appeal found that “a skilled reader of a patent claim would, for many reasons, interpret the claims based essentially on their own merits […] This is because the ‘subject-matter of the European patent’ […] is defined by the claims and only by them”. By contrast, in T 1473/19, the Board of Appeal found that the claims of a patent should be interpreted holistically, taking into account the drawings and description, pursuant to Article 69 EPC.
The Opponent in the case did not agree that a referral was necessary, and the question of the referral was discussed at ViCo oral proceedings last week. According to the minutes “after deliberation by the Board the Chairman indicated that a referral to the EBA appeared necessary to allow for the Board to come to a conclusion on the decisive question of the case.” The Board of Appeal will therefore issue an interlocutory decision on 10 June 2024, including its referral to the EBA.
Final Thoughts
There is of course no guarantee that the EBA will accept the referral once it is issued. The EBA may not, for example, be convinced that the case law is sufficiently divergent to justify a referral. This Kat is sceptical that the case law on the particular question of using the description to interpret prima facie clear claim language is as divergent as presented by the Board of Appeal in their preliminary opinion (IPKat). Boards of Appeal generally find that definitions in the description cannot change the meaning of otherwise clear claim language (IPKat). Furthermore, the broader question of whether the description as a whole should be consulted to interpret the claims appears less relevant to the facts of the case. The EBA may also, as it so often does, choose to amend the questions set to it. We now await the written decision from the Board of Appeal and confirmation of the referred questions. In the meantime, we are also still waiting for confirmation of the referral on the related question of description amendments in T 0056/21 (IPKat).
Further Reading
- 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)
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