Zusammenfassung von EPC2000 Art 069 für die Entscheidung T0367/20 vom 04.10.2023

In T 367/20 the board held that to assess whether an amended patent claim contains added subject-matter under Art. 123(2) EPC, the claimed subject-matter must first be determined by interpreting the claim (i.e. establishing the meaning of the claimed features) from the perspective of the person skilled in the art. In a second step, it must be assessed whether that subject-matter is disclosed in the application as filed. Regarding claim interpretation, the board stressed that a claim feature must not be interpreted in isolation but in the context of the whole document it forms part of. The context to be considered for the interpretation of a feature in a claim therefore did not include only the other features in that claim and other claims but also the description and the drawings. According to the board, the general principle that the claims of a patent, being a part of a document as a whole, need to be construed in their context was recognised early in the case law and had also been understood to underlie Art. 69 EPC (see T 556/02 and T 3097/19). Moreover, the established principle that patent claims must be interpreted through the eyes of the person skilled in the art, who should try with synthetical propensity to arrive at an interpretation of the claim which is technically sensible and takes into account the whole disclosure of the patent, was formulated for the first time with reference to Art. 69 EPC (see T 190/99, T 396/99). The limitation on the weight which can be given to the description in relation to the claims was also in earlier case law derived from Art. 69(1), first sentence, EPC (see T 1018/02). This had been taken up recently and referred to as the primacy of the claims (see T 1473/19, T 450/20, T 73/19), which in particular prohibits reading features into the claims which are only present in the description or the drawings. The board endorsed decision T 1473/19, which stated that the first step in determining the extent of protection in accordance with Art. 69 EPC consisted in determining the claimed subject-matter under the "general principles" of claim interpretation in Art. 1 of the Protocol on its interpretation. The interpretation and determination of the subject-matter of the same claim in the same opposition (appeal) proceedings before the EPO should be uniform and consistent, including for the purpose of Art. 123(2) and (3) EPC. Moreover, the board in T 1473/19 had stated that the EPO in opposition (appeal) proceedings, and the national courts and the UPC in revocation proceedings, had concurrent jurisdiction on (post-grant) patent validity and that national courts applied the rules for the interpretation of claims in Art. 69 EPC also in revocation proceedings. The board in the case in hand noted that the grounds for opposition under Art. 100(a) to (c) EPC corresponded literally - including in their reference to the "subject-matter" of the patent - to the grounds for revocation under Art. 138(1)(a) to (c) EPC (see also Art. 65(2) UPCA), and that Art. 68 EPC regulated the effect of the revocation or limitation of a European patent in an identical manner for both opposition and revocation proceedings. The board cited decisions of courts in several contracting states (AT, CH, DE, ES, FR, GB, NL) as examples of national case law on claim interpretation according to Art. 69 EPC in respect of revocation proceedings. In the case in hand the board, taking account of feature M11 and the description, concluded that feature M5.1 ("a first switching pipe (62) which is connected to the fluid flows in parallel with the third heat exchanger (53)") should be understood as requiring that the first switching pipe (not the fluid flows) be in parallel with the third heat exchanger. Hence, feature M5.1 could be deduced directly and unambiguously from the application as filed. On the respondent's argument that feature M5.1 allowed both interpretations as to which parallelism was required, the board held that only the subject-matter which is actually claimed - as opposed to subject-matter merely hypothetically claimed - must be disclosed in the application as filed. The deciding body must not adopt two mutually exclusive claim interpretations simultaneously and must - if decisive for the outcome of the case - not leave the interpretation in that regard open either. For completeness, the board distinguished the present case, concerning two mutually exclusive interpretations of a certain claim feature, from situations where a claim feature could be interpreted in a broad manner to encompass "a multitude of possibilities" (T 1408/04), i.e. different embodiments of the same, broad subject-matter.