6.3. Using description and drawings to interpret the claims
6.3.5 Use in the examination relating to the clarity requirement pursuant to Article 84 EPC
This section has been updated to reflect case law and legislative changes up to 31 December 2023. For the previous version of this section please refer to the "Case Law of the Boards of Appeal", 10th edition (PDF). |
In a large number of decisions (see in this chapter II.A.6.3.1) the boards interpreted the claims in the light of the description and drawings in order to establish whether they were clear and concise.
In T 456/91 the board was of the opinion, that the clarity of a claim was not diminished by the mere breadth of a term of art contained in it, if the meaning of such term was unambiguous for a person skilled in the art, either per se or in the light of the description. In this case an extremely large number of compounds could be used for carrying out the invention. It was clear from the claims, when read in the light of the description, which peptides were suitable for the invention.
Likewise, in T 860/93 (OJ 1995, 47) the board assumed that the description might be used to determine whether the claims were clear. In so doing it took its cue from the general legal principle whereby the best interpretation is that made from what precedes and what follows. It accepted the reasoning in T 454/89 (see below), namely that the description could only be used to determine the extent of the protection conferred and not to establish clarity, only in the case of claims which were self-contradictory, but not in general (see also T 884/93, T 287/97). In several decisions the boards stated that a patent may be its own dictionary (see in this chapter II.A.6.3.3).
However, a number of decisions emphasise the limits to the use of the description and drawings in the examination relating to the clarity requirement.
T 2/80 (OJ 1981, 431) pointed out that a claim did not comply with the requirement of clarity laid down in Art. 84 EPC 1973 if it was not, per se, free of contradiction. It had to be possible to understand the claims without reference to the description (see also T 412/03, T 129/13). In decision T 454/89 the board shared this view and explained that Art. 84 EPC 1973 requires that claims must be clear in themselves when read using normal skills, including knowledge of the prior art but not any knowledge derived from the description contained in the patent application or the amended patent. While it was true that Art. 69 EPC 1973 allowed the description to be used to interpret the claims, it was only concerned with the extent of protection conferred as one of the effects of an application or patent whenever that extent had to be determined, particularly for third parties. It was not concerned with a claim's definition of the matter for which protection was sought, as was Art. 84 EPC 1973. In the course of the examination of an application or of an opposition, therefore, the applicant or patentee could not rely on Art. 69 EPC 1973 as a substitute for an amendment which would be necessary to remedy a lack of clarity. The board took the same line in decision T 760/90.
In T 1129/97 (OJ 2001, 273), the board held that the mere fact that the precise meaning of an unclear term ("low alkyl") was expressly disclosed in the description but not in the claims did not mean that the latter met the clarity requirement. The clarity stipulation under Art. 84 EPC 1973 concerned only the claims, and therefore – according to the established case law of the EPO boards of appeal – required that they be clear in themselves, without there being any need for the skilled person to refer to the description. True, under Art. 69(1) EPC 1973 the description was to be used to interpret the claims. But Art. 69 EPC 1973 concerned only the extent of protection where this was at issue, e.g. with third parties, and not (as in Art. 84 EPC 1973) the definition of the matter to be protected by a claim. Confirmed in T 64/03, T 56/04, T 1265/13.
In T 49/99 the board held that since clarity was a claim requirement, a clarity deficiency in the claim wording was not rectified by the fact that the description and the drawings would help the reader to understand the technical subject-matter that the claim was intended to define. See also T 623/13.
In T 56/04 the board pointed out that a claim containing an unclear technical feature prevented its subject-matter from being identified beyond doubt. That was particularly the case if the unclear feature was meant to delimit the claimed subject-matter from the state of the art. The board therefore took the view that a vague or unclear term which was used in the claim and a precise definition which was to be found only in the description could be allowed only in exceptional cases to delimit the claimed subject-matter from the state of the art. Such an exception pursuant – mutatis mutandis – to R. 29(6) EPC 1973 (now R. 43(6) EPC) exists if the precise definition – for whatever reason – cannot be incorporated into the claim, and the precise definition of the vague or unclear term is unambiguously and directly identifiable by a skilled person from the description. In T 56/04 the board said that an exception was not involved. The specific value of "approximately 1 mm" disclosed in the description could have been incorporated into the claim itself instead of "slightly less than [...]". See also T 623/13.
On the extent to which it must be clear from the claim itself how parameters are to be determined when a product is characterised by parameters, see in this chapter II.A.3.5. In a number of decisions it is stressed that the claims must be clear in themselves when read with the normal skills but without any knowledge derived from the description (see e.g. T 412/02 and T 908/04). According to the board in T 992/02 however, the requirement of conciseness under Art. 84 EPC justified not including the procedure for measuring the parameter in the claim, as this was clearly identified in the description and did not give rise to any ambiguity.
In T 2968/19 the board stressed that in examination proceedings – in contrast to the interpretation of granted patent claims – the principle that the missing essential features should be incorporated into the claim and that the meaning of the features should be clear for the skilled person from the claim wording alone (see G 1/04, point 6.2 of the Reasons) must be satistied first. The appellant submitted that using the description as its own dictionary could be admissible to interpret patent claims in opposition proceedings if features could no longer be objected to under Art. 84 EPC but nevertheless have to be interpreted. However, according to the board, there were limits to the use of the description to interpret the claims (cf. "primacy of the claim" in T 1473/19, T 169/20), in particular in so far as features missing in the claim (and not implicitly established taking account of the technical understanding of the terms used in the claim) cannot be read into the claim.
- T 56/21
Abstract
In T 56/21 the board addressed the question whether Art. 84 EPC provides a legal basis for (i) objecting to an inconsistency between what is disclosed as the invention in the description (and/or drawings, if any) and the subject-matter of the claims, the inconsistency being that the description (or any drawing) contains subject-matter which is not claimed, and (ii) requiring removal of this inconsistency by way of amendment of the description (hereinafter: "adaptation of the description").
As the appeal concerned ex parte proceedings, the board dealt with the interpretation of Art. 84 EPC for the purpose of its application in examination proceedings. The board analysed the function and relationship of the claims and the description, the relationship between the assessment of patentability and the determination of the extent of protection as well as the requirements of support by the description and clarity in Art. 84 EPC.
On adaptation of the description, the board came to the following conclusions:
(a) Art. 84 and R. 43 EPC set forth requirements for the claims, not for the description.
(b) It is the purpose of the assessment of Art. 84 EPC as part of the examination of patentability to arrive at a definition of the patentable subject-matter in terms of distinctive technical features distinguishing it from the prior art.
(c) Art. 69(1) EPC and the Protocol on the Interpretation of Art. 69 EPC are not concerned with the definition of the subject-matter according to Art. 84, first sentence, EPC, or the assessment of patentability in examination before the EPO but with the extent of protection in the context of infringement proceedings in the contracting states. Art. 69 EPC and its Protocol are hence not applicable in grant proceedings before the EPO.
(d) The requirements of Art. 84 EPC and R. 43 EPC are to be assessed separately and independently of considerations of extent of protection when examining a patent application.
(e) In examination, future legal certainty is best served by a strict definitional approach which ensures that allowable claims per se provide an unambiguous definition of the subject-matter meeting the requirements for patentability.
(f) Adapting the description to match the more limited subject-matter claimed does not improve legal certainty but reduces the reservoir of technical information in the granted patent. This may have unwarranted consequences in post-grant proceedings and may encroach on the competence of national courts and legislators.
(g) R. 48 EPC is not concerned with the adaptation of the description, but with the avoidance of expressions which are contrary to public morality or public order, or certain disparaging or irrelevant statements in the publication of an application.
The board held that in examination of a patent application, neither Art. 84 nor R. 42, 43 and 48 EPC provide a legal basis for requiring that the description be adapted to match allowable claims of more limited subject-matter. Within the limits of Art. 123 EPC, an applicant may, however, amend the description of its own volition.
In the case at hand the description included a passage entitled "SPECIFIC EMBODIMENTS", which contained claim-like clauses. Those clauses included subject-matter which was not claimed. The board set aside the (refusal) decision under appeal and the case was remitted to the examining division with the order to grant a patent based on the main request on file.
- T 1152/21
Abstract
In T 1152/21 the board concluded that claim 1 of auxiliary requests 9b and 10a did not meet the requirements of Art. 84 EPC.
Claim 1 of auxiliary request 9b included the term "cooling to an appropriate temperature". The board found that the skilled person could not assess whether a particular temperature was an "appropriate temperature", since the wording of the claim did not allow them to determine the conditions under which a temperature was an "appropriate temperature". Therefore, the claim was not clear.
The patent proprietor (appellant) had submitted that the skilled person was very familiar with heating and cooling steps, which were inherent to any (re)crystallisation process. It was a routine task for the skilled person to determine said appropriate temperature by reasonable trial-and-error experiments. Hence, the feature "appropriate temperature" was a functional feature related to a process step which could easily be performed in order to obtain the desired result. The board did not agree. It held that the patent proprietor's submission was relevant for sufficiency of disclosure rather than for the clarity of the claim. The relevant issue was what was covered by claim 1 of auxiliary request 9b, not whether the skilled person could reproduce the claimed method.
Auxiliary request 10a included in claim 1 the following terms: "heating to about 70°C", "heating at about 70°C", "heating the organic layer to about 120°C", "cooling to about 80°C", "maintaining the mixture at about 80°C for about 3 hours" and "gradually cooling to about 10°C".
The board noted that the term "about" in the context of said claim was associated with a specific temperature or a specific time. It could be that the term "about" was intended to cover measurement errors. However, measurement errors were covered for any value of any technical parameter to be measured and given in any claim (without the need for the term "about") since patents were in the field of technology, not mathematics, and a value could only be as precise as it could be measured according to the general technological convention. Thus, following this interpretation, the term "about" was superfluous and claim 1 was not concise, contrary to what was required by Art. 84 EPC. Alternatively, the term "about" could be intended to denote a range broader than the measurement error range. Following this second interpretation, it could not be determined how broad the range could be in claim 1 and what the exact limits of this range were. In this case, the term "about" in said claim was not clear, again contrary to what was required by Art. 84 EPC.
The patent proprietor had submitted that the term "about" was clear in light of the description of the patent since paragraph [0020] gave a clear definition of the term. According to the board, the claims have to be clear as such, i.e. without taking the description into account to interpret any unclear term. Even if it were accepted that the description could be consulted in the context of Art. 84 EPC, paragraph [0020] of the patent read as follows: "[...], the term "about" means within a statistically meaningful range of a value, such as a stated concentration range, time frame, molecular weight, particle size, temperature or pH. Such a range can be within an order of magnitude, typically within 20%, more typically within 10%, and even more typically within 5% of the indicated value or range". In the board's view, the term "statistically meaningful range" did not clearly define a range and for that reason was unclear. Even if it were accepted that, as submitted by the patent proprietor, the term "statistically meaningful range" was specified by relative variations in percent, said term would still be unclear since the following sentence contained various different percentages ("typically within 20%, more typically within 10%, and even more typically within 5% of the indicated value or range"). Contrary to the patent proprietor's submission that the skilled person would choose the broadest range, there was no teaching in this following sentence to choose the percentage within 20% of the indicated value, in view of the lower preference of the term "typically" compared with the two other terms "more typically" and "even more typically".
The patent proprietor further submitted that the term "about" was to be considered clear in light of the Guidelines F-IV, 4.7.1 – March 2021 version. The board pointed out that this chapter related to the interpretation of terms such as "about", not to the assessment of the clarity of such terms. Thus, the board found that the patent proprietor's submission was not convincing.