Key points
- The Board in this decision departs from established case law and concludes that: "Article 69 EPC in conjunction with Article 1 of the Protocol thereto can and should be relied on when interpreting claims and determining the claimed subject-matter in proceedings before the EPO, including for the purpose of assessing compliance with Article 123(2) EPC"
- See e.g. T 1646/12, "The board stressed that Art. 69(1) EPC concerned only the extent of protection, which in turn was relevant only for the purposes of Art. 123(3) EPC and in national infringement proceedings. A general requirement that claims be interpreted with the help of the description could not be derived from Art. 69(1) EPC." (CLBA II.A.6.3.2)
- At the outset, it must be noted that the Protocol, as amended by the EPC 2000, includes Article 2 which states that "For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims." However, a disclosure in the prior art of an equivalent does not anticipate a claim (is not novelty-destroying), according to established case law. The headnote of the present decision accordingly refers to Article 1 of the Protocol only.
- The present Board: "There is, however, also a significant body of case law according to which the description and the drawings should only be used to interpret claim features which are ambiguous; unambiguous terms in the claims should be interpreted without taking the description and the drawings into account (see, for example, T 197/10, Reasons 2.3 and T 1514/14, Reasons 12). It has also been stated that, for the purposes of assessing compliance with Article 123(2) EPC, the description and the drawings should not even be consulted in the case of ambiguous claim features (see T 1127/16, to which the appellant referred, Reasons 2.6.1)."
- "There are different views in the case law of the technical boards of appeal on the extent to which Article 69 EPC and the Protocol on the Interpretation of Article 69 EPC ("the Protocol") should be applied when interpreting patent claims. While these provisions have in some decisions been considered to be generally applicable, other decisions restrict their application in proceedings before the EPO to determining the extent of protection under Article 123(3) EPC []. A leading decision in favour of the latter approach is T 1279/04."
- "In the present Board's view, Article 69 EPC and the Protocol are the only provisions in the EPC containing rules for the interpretation of patent claims. Article 84, first sentence, EPC does not contain any such rules. Rather, the rationale underlying both the specific requirements under Article 84, second sentence, EPC [] and the general requirement under Article 84, first sentence, EPC [] is to enable a clear delimitation of the extent of protection. In other words, claims must satisfy the requirements under Article 84 EPC so that they can fulfil their purpose of enabling the protection conferred by the patent to be determined under Article 69 EPC (cf. G 2/88, Reasons 2.5). Article 84 EPC, however, says nothing about how to interpret patent claims. At most, it defines the standard to be applied when assessing clarity."
- " the main rationale underlying T 1279/04, Reasons 3, seems to be that there is a difference between the subject-matter of a patent claim, which is determined in proceedings before the EPO and assessed under Articles 54(2), 56, 83 and 123(2) EPC, and its extent of protection, which is assessed under Article 123(3) EPC and in national infringement proceedings. While, as explained hereafter, the present Board acknowledges a difference, it does not consider this difference a convincing reason not to apply Article 69 EPC and the Protocol when determining the claimed subject-matter in proceedings before the EPO."
- "the Board notes that determining a patent claim's subject matter, i.e. establishing the meaning of the claimed features, is not distinguishable from interpreting that claim and its features. Understood this way, it is always necessary to interpret a patent claim in the proceedings before the EPO."
- This observation seems entirely correct.
- "The extent of protection of a patent claim can be understood as the (infinite) set of embodiments which infringe that claim. This set can conceptually be divided into two distinct subsets, the first formed by embodiments which infringe the claim by realising the elements specified in the claim (i.e. the claimed features), and the second formed by embodiments which infringe the claim by equivalent means (i.e., in the words of Article 2 of the Protocol, by an element equivalent to an element specified in the claims). The first subset of a patent claim's extent of protection is directly defined by its subject-matter."
- "When assessing whether an embodiment falls under the first subset of a patent claim's extent of protection, it is assessed whether that embodiment can be subsumed under the claimed features. To this end, the claimed features must be interpreted - and the claimed subject-matter thereby determined - in accordance with the rule on how "to interpret the claims" given in Article 69(1) EPC in conjunction with Article 1 of the Protocol. Interpreting the claimed features for the purposes of establishing the first part of a patent claim's extent of protection is thus not different from interpreting and determining the claimed subject-matter for the purposes of assessing compliance with Articles 54, 56, 83 and 123(2) EPC. Accordingly, national courts apply the rules for the interpretation of claims in Article 69 EPC and the Protocol [*] in both infringement and revocation proceedings as a matter of course."
- As a comment, it is not clear if the Board here -[*]- means to refer to Article 2 Protocol as well.
- " Assessing whether a certain embodiment falls under the second part of a patent claim's extent of protection, i.e. the part concerning equivalents under Article 69(1) EPC in conjunction with Article 2 of the Protocol, is a second step in the determination of the extent of protection which follows claim interpretation. It mainly consists in assessing whether a feature of an allegedly infringing embodiment is equivalent to an element specified in the claims, i.e. to one of the features defining the claimed subject-matter. As the "invention" in Articles 54, 56 and 83 EPC (see T 92/21, Reasons 3.2, last sentence) and, with regard to claim amendments, also the "subject-matter" under Article 123(2) EPC (see G 2/10, Reasons 4.5.2, last paragraph) refer to the claimed subject-matter only, equivalents are not to be taken into account when compliance with these provisions is assessed."
- " Under Article 123(3) EPC too, it is mainly "the technical subject-matter of the claims" before and after the amendment which is considered (see G 2/88, Reasons 4.1), although equivalents may theoretically play a role under this provision as it refers to the extent of protection (see T 1360/13, Reasons 4.13; see, however, also T 81/03, Reasons 3.7). In conclusion, equivalents are the part of the extent of protection which is indeed primarily relevant for infringement proceedings."
- The Board continues with some further explanations regarding the role of the description and drawings when interpreting the claims. I can recommend reading the entire reasoning of the Board.
- In the course of the appeal, "an expert linguistic opinion on the wording of claim 1 as granted" was filed. The Board: "[in] view of the parties' various submissions on linguistic matters in the present case, the Board further points out that claim interpretation is overall a question of law which must as such ultimately be answered by the deciding body, and not by linguistic or technical experts. It does, however, involve the appraisal of linguistic and technical facts (see T 1776/18, Reasons 4.5.5), which may be supported by evidence submitted by the parties."
- No role for translated claims
"In line with Article 70(1) EPC a patent claim must be interpreted in its authentic text, which is the text of the patent in the language of the proceedings. Moreover, the material which can and must be taken into account for claim interpretation under Article 69 EPC - in addition to the claims themselves (in their authentic text) - is limited to the description and the drawings. Therefore, in the present case the German and French translations of claim 1 cannot be relied upon for its interpretation. At most, it is possible to deduce from these translations how the translators responsible for them understood the English version of claim 1."
EPO
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.
source http://justpatentlaw.blogspot.com/2023/01/t-147319-ii-art-69-for-art-1233.html
