6.3.2 Relevance of Article 69 EPC

Several decisions refer to Art. 69(1) EPC 1973 (T 23/86, OJ 1987, 316; T 16/87, OJ 1992, 212; T 476/89, T 544/89, T 565/89, T 952/90, T 717/98). Other case law emphasises that Art. 69 EPC 1973 (Art. 69(1) EPC) and its Protocol are primarily for use by the judicial organs which deal with infringement cases (see e.g. T 1208/97, T 223/05; also T 1404/05). The board in T 556/02 made it clear that it applied solely the general principle of law applied throughout the EPC that a document had to be interpreted as a whole (see e.g. T 23/86, OJ 1987, 316; T 860/93, OJ 1995, 47). Art. 69 EPC 1973 was a specific application of this general principle.

In case T 1279/04 the board did not share the appellant/proprietor's view that, for the purposes of assessing novelty in opposition proceedings, claims should be interpreted in accordance with Art. 69(1) EPC 1973 and the Protocol on its interpretation. Art. 69(1) EPC 1973 and its Protocol related to the extent of protection conferred by the patent or patent application, which was primarily of concern in infringement proceedings. They served to determine a fair protection - inter alia by reference to the description and drawings - in the context of an actual alleged infringer in circumstances where the claim wording was set in stone. By contrast, in examination and opposition proceedings the value of future legal certainty was paramount. In this forum the function of the claims was to define the matter for which protection was sought (Art. 84 EPC 1973, first sentence - which also applied to opposition). There was no case for anything other than a strict definitional approach, given that in this procedural stage the claim could and should be amended to ensure legally certain patentability, in particular novelty and inventive step over any known prior art. Amendment rather than protracted argument should be the answer to genuine difficulties of interpretation in all aspects of the examination and opposition procedure, it being acknowledged that amendments to a patent as granted should be occasioned by grounds for opposition.

Likewise in T 1808/06 the board emphasised that, when the description has to be amended with regard to the requirement of Art. 84 EPC, it was only in situations where the removal of inconsistencies was not possible for procedural reasons (e.g. no amendment possible of the granted version) that - purely as an auxiliary construction - Art. 69(1) EPC could be invoked for an interpretation of the claimed subject-matter.

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