6.3. Using description and drawings to interpret the claims
6.3.4 Reading additional features and limitations into the claims
For the purposes of judging novelty and inventive step, the description cannot be relied on to read into the claim an implicit restrictive feature not suggested by the explicit wording of the claim (T 1208/97, T 945/99, T 681/01, T 881/01, T 1105/04, T 223/05, T 1736/06, T 299/09, T 58/13, T 617/18, T 1648/18, T 1266/19, T 530/20, T 1208/21, T 1628/21, T 447/22). In proceedings before the EPO, where the patentee has the opportunity of cutting down the claims to accord with stricter limits given in the description, the scope of a claim should not be cut down by implying into it features which appear only in the description, as this would deprive claims of their intended function (T 881/01).
In T 121/89 the board used the description to interpret an ambiguous term ("loose ignition charge"), but at the same time stressed that only features recited in or deducible from the claims could be set forth to distinguish the invention from the state of the art. The examples cited in the description did not limit the scope of the claims unless they were explicitly mentioned in them. See also T 544/89.
In T 932/99 claim 1 was directed to a product per se. The claim defined only the structure of a membrane as such, independently from its installation in an apparatus for gas separation. The board pointed out that, for this reason, the indication in the claim "capable of separating oxygen from oxygen-containing gaseous mixture" merely served the purpose of defining a capability of the claimed membrane, without imparting any limitations on any actual use of the structure claimed. The respondents had argued that, if claim 1 was interpreted in the light of the description, those limitations would be apparent. However, the board held that a distinction had to be drawn between, on the one hand, the fact that it might be necessary to take into account any explicit definition as given in the description for interpreting a claim's term and, on the other hand, the attempt to use Art. 69 EPC 1973 as a basis for reading limitations derived from the description into claims in order to avoid objections based on lack of novelty or inventive step. The latter approach to interpretation, whereby features mentioned only in the description were read into claim 1 as necessary limitations, was incompatible with the EPC (referring to T 1208/97). See also T 2049/07.
According to the board in T 939/22, the limiting definition of the recombinant non-pathogenic Marek's Disease Virus (rMDVnp) in the description could not change the common understanding of the terms of art recombinant nonpathogenic Marek's Disease Virus (rMDVnp) and recombinant herpesvirus of turkeys (rHVT) as used in the claim. The skilled person would understand the terms rMDVnp and rHVT to refer to the genome of a viral vector stemming from a non-pathogenic strain of an MDV serotype. No further limitations were implied by those terms.
In T 1018/02 the board emphasised that, although a claim must not be interpreted in a way which was illogical or did not make sense, the description could not be used to give a different meaning to a claim feature which in itself imparted a clear, credible technical teaching to the skilled reader. This also applied if the feature had not been initially disclosed in the form appearing in the claim. Otherwise, third parties could not rely on what a claim actually states and Art. 123(2) EPC would become meaningless in respect of amendments to the claims. See also T 373/01, T 396/01, T 821/20, T 42/22.
In T 1404/05 the board stated that Art. 69 EPC and its Protocol were intended to assist a patent proprietor in contending for a broader interpretation of a claim, not for cutting down the scope of a claim. In proceedings before the EPO, if a proprietor wishes to argue for a narrow scope of the claim this should be on the basis of the wording of the claim, and not on the basis of something appearing only in the description, as in such EPO proceedings the proprietor has the possibility, subject to meeting the requirements of Art. 123(2) EPC, of restricting the wording of the claim.
In T 416/87 (OJ 1990, 415), on the other hand, the board was confronted with the situation where a feature was not included in the claims which the description on its proper interpretation specified to be an overriding requirement of the invention. The board held that, following Art. 69(1) EPC 1973 and its Protocol, the claims might be interpreted as requiring this as an essential feature, even though the wording of the claims when read in isolation did not specifically require such feature (confirmed in an obiter dictum in T 717/98). See also T 2525/11.
In T 1473/19 the board held that although Art. 69(1), second sentence, EPC requires that generally account be taken of the description and the drawings when interpreting a claim, the primacy of the claims according to Art. 69(1), first sentence, EPC limits the extent to which the meaning of a certain claim feature may be affected by the description and the drawings. The board pointed out that this view is fully compatible with the established case law that limiting features which are only present in the description but not in the claim cannot be read into a patent claim. The primacy of the claims also limits the extent to which the description may serve as a dictionary for the terms used in the claims.
According to the board in T 169/20, Art. 84, second sentence, EPC implicitly limits the support given by the description for interpreting the claims to the exceptional cases where such support is both necessary and possible. This support should only be resorted to in cases where the subject-matter of the invention needs to be clarified. Moreover, this support is only possible to the extent that there is a correspondence between the description and the subject-matter of the claimed invention. The support of the description should not be used to limit or modify the scope of the claimed features with respect to what a person skilled in the art would understand when reading them.
Such limitations due to the primacy of the claims were confirmed in T 73/19, T 2968/19, T 367/20, T 450/20, T 1494/21, T 1628/21 and T 111/22.
In T 450/20 and T 1494/21 the board emphasised that under Art. 69(1) EPC the description and the drawings can only be used for interpreting features which are already present in the claims, but not for adding further – positive or negative – claim features or for replacing existing claim features by others. The board also pointed out that the application as filed usually cannot provide guidance for interpreting the claims of the patent as granted.
In T 111/22 the board held that the primacy of the claims in claim interpretation meant that in case of a clear conflict between the claims and the description, the claims took precedence. If a person skilled in the art understood a claim in a certain manner without doubt, taking into account the rules of grammar, the ordinary meaning of the terms used and common general knowledge, this understanding usually took precedence over an incidental and conflicting statement in the description, in particular if that statement was only made in the context of an alleged embodiment. The board concluded that the disputed feature could only be understood so that it was component (ii) – and not the entire amount of carbohydrate in the composition – which comprised 10-45 wt.% of palatinose. Hence, the granted claim 1 contained added subject-matter, contrary to the requirements of Art. 123(2) EPC. To overcome this objection, the appellant had replaced the disputed feature with "15-45 wt.% of component (ii), based on the available carbohydrate composition, consists of palatinose". In the appellant's view, Art. 123(3) EPC was not infringed, since the description had to be taken into account to determine the scope of protection of the granted patent by virtue of Art. 69 EPC. The board disagreed and pointed out that Art. 69(1), second sentence, EPC could not be relied upon to replace a claim feature with a different one which could only be found in the description. Reading the relevant passage of the description into the clear wording of claim 1 as granted to establish compliance with Art. 123(3) EPC would have the consequence that the wording of this claim merely served as an empty shell. This would undermine the principle stipulated in the first sentence of Art. 69(1) EPC and reiterated in decision T 1473/19 that the claims have primacy for determining the extent of protection conferred by the European patent. See also II.E.2.3.1c).
- T 0873/23
In T 873/23 claim 1 as granted was amended with respect to claim 1 as originally filed inter alia by Feature 1.5x, specifying that, for an electric coil cooktop and an electric glass ceramic cooktop, the control device was configured to control the power level of the cooktop "by turning the heating element continuously on and off". It was common ground that there was no literal basis for "continuously" in the context of "turning the heating element on and off" in the application as filed. However, the board observed that there were other occurrences of the term "continuously" in the description (both as filed and as granted) and in claim 1 as granted in the context of monitoring/sensing the temperature and calculating a rate of change of the sensed temperature. The parties agreed that, according to the patent, in these occurrences "continuously" meant "periodically", albeit with different time periods for monitoring and calculating.
The board agreed in principle with the "two-step approach" for the assessment of added matter set out in the Catchword of T 367/20. The patent claims first had to be interpreted in order to determine the subject-matter they contained after the amendment. They were interpreted in line with G 1/24, which states, in the context of assessing the "patentability of an invention under Articles 52 to 57", that the claims are the starting point and the basis for the assessment, and the description and drawings are always to be consulted to interpret the claims. The board considered this to be true not only for the question of "patentability of an invention under Articles 52 to 57" but also for the issue of Art. 123(2) EPC. In a second step, it had to be assessed whether the subject-matter of the amended claim contained subject-matter which extended beyond the content of the application as filed. In this regard, in accordance with G 2/10, the decisive factor was whether the skilled person was presented with new technical information after the amendment..
The board disagreed with the two interpretations of Feature 1.5x submitted by the appellant (patent proprietor). The board considered that the only convincing interpretation of the expression "by turning the heating element continuously on and off" was that of periodically turning the heating element on and off (at fixed intervals) as submitted by the respondent, which included pulse-width modulation of the heating element in accordance with a predetermined duty cycle. In reply to the appellant’s argument that this interpretation "was not in line with the disclosure in the patent", the board explained that, according to T 367/20, a claim feature had to be interpreted not in isolation but in the context of the whole document it formed part of. This was, however, to be done by taking due account of the primacy of the claims (see also T 1473/19). This was also in line with G 1/24, which states that the "claims are the starting point and the basis" (see also UPC_CoA_335/2023, second Headnote, according to which the claims were the "decisive basis").
The board observed that the application as filed disclosed embodiments in which the heating element was controlled on the basis of a duty cycle and was thus "continuously" turned on and off. However, even in the algorithm using duty cycles, different duty cycles and phases of keeping the heating element "on" for a specific period of time were employed. The heating element was thus not always "periodically" turned on and off, and the "continuity" of the duty cycle was interrupted under certain conditions. As claim 1 as granted did not include these more specific aspects of the power control for the electric glass ceramic cooktop of the application as filed, and as the application as filed did not disclose a periodicity throughout the algorithm, the amendment in Feature 1.5x was at least an unallowable intermediate generalisation of the original disclosure. Moreover, the application as originally filed did not contain a corresponding disclosure (power control algorithm based on a duty cycle) for the electric coil cooktop (Feature 1.5a). Accordingly, the combination of Feature 1.5x with Feature 1.5a extended beyond the content of the application as filed..
The maintenance of the patent as granted according to the main request was thus prejudiced by the ground of opposition under Art. 100(c) EPC. Since none of the claim requests was allowable, the appeal was dismissed.
- T 1999/23
In T 1999/23 stellte die Kammer fest, dass die Fachperson unter dem Begriff "Anregungsfläche" (in Merkmal M1.7) für sich genommen die Querschnittsfläche des Anregungslichts auf der Probe verstehen würde – unabhängig von der Entfernung zwischen Probe und fotothermischem Gerät. Allerdings wurde dieser für die Fachperson klare Begriff in Absatz [0008] der Beschreibung des Streitpatents in einschränkender Weise definiert: "Der Begriff 'Anregungsfläche' meint die Querschnittsfläche des Anregungslichts im Fokus..
Die Kammer erläuterte, dass die Große Beschwerdekammer in G 1/24 klargestellt habe, dass bei der Auslegung von Patentansprüchen die Beschreibung heranzuziehen sei, im Übrigen aber auf die durch die Rechtsprechung entwickelten Grundsätze verwiesen habe. Einer dieser Grundsätze laute, dass eine einschränkende Begriffsdefinition in der Beschreibung nicht dazu verwendet werden dürfe, den ansonsten für die Fachperson eindeutig breiteren Anspruchsgegenstand einzuschränken (siehe Rechtsprechung der Beschwerdekammern, 10. Aufl. 2022, II.A.6.3.4). Dieser Grundsatz behalte auch nach der Entscheidung G 1/24 Gültigkeit, da die Große Beschwerdekammer betont habe, dass die Auslegung bei den Patentansprüchen beginnt und auf ihnen beruht.
Im vorliegenden Fall habe die Patentinhaberin durch die inkonsistente Verwendung des Begriffs "Anregungsfläche" – einerseits im Anspruch ohne Einschränkung, andererseits in der Beschreibung mit fachunüblicher Einschränkung – eine Zweideutigkeit geschaffen..
Die Kammer sah keinen sachlichen Grund, weshalb es einem Patentinhaber gestattet sein sollte, bei der Formulierung des Gegenstands, von dessen Nutzung Dritte ausgeschlossen werden sollen, von der fachlich etablierten Terminologie ohne erkennbare Rechtfertigung abzuweichen und hierauf nur in der Beschreibung hinzuweisen. Ein uneingeschränktes Recht hierzu würde die Rechtssicherheit untergraben. Zwar möge es im Einzelfall rechtfertigende sachliche Gründe geben. Im vorliegenden Fall sei ein solcher Grund für die Kammer jedoch nicht ersichtlich.
Im Ergebnis zeige der Blick in die Beschreibung lediglich, dass in der Beschreibung eine begriffliche Abweichung von der fachüblichen Terminologie bestehe, die sich im Anspruch nicht widerspiegele. Diese Zweideutigkeit zulasten desjenigen aufzulösen, der sie ohne sachliche Notwendigkeit geschaffen habe, entspreche dem Prinzip der Rechtssicherheit sowie dem in der Entscheidung G 1/24 bekräftigten Vorrang der Patentansprüche.
Daher sei der Begriff "Anregungsfläche" im Anspruch im Sinne seiner fachüblichen Bedeutung als "Querschnittsfläche des Anregungslichtes unabhängig vom Abstand" und nicht eingeschränkt als "Querschnittsfläche des Anregungslichts im Fokus" zu verstehen.
- T 2027/23
In T 2027/23 the board identified three major takeaways from G 1/24.
First, the wording of the claims forms the "basis" for their interpretation and the description and the drawings should always be "consulted" or "referred to". However, G 1/24 is silent as to the very purpose of such "consultation" or "reference". In particular, it cannot be inferred from G 1/24 whether the description and the drawings should be "consulted" for the purpose of, for example, deriving "explanatory aids" to claim interpretation (see e.g. UPC_CoA_335/2023, second headnote), confirming the ordinary meaning of a claim feature, determining the function or the purpose of a claim feature, or simply defining the technically skilled reader of a claim (see e.g. T 1924/20).
Second, discrepancies in claim interpretation practice between national courts, the UPC and the Boards of Appeal are undesirable and should thus be avoided.
Third, it is up to a patentee to remedy discrepancies between the description and the claims. In other words, patentees are the masters of their fate.
Moreover, the board stated that it found no authority for interpreting a claim more narrowly than the wording of the claim as understood by the person skilled in the art would allow, and that this was for several reasons.
(a) First, because "consulting the description" did not imply any specific result of such consultation: A consultation of two conflicting authorities did not a priori determine who is master. Decision G 1/24 did not require the boards to give the description preference over the wording of the claim. To the contrary, according to the Order of G 1/24, "the claims are the starting point and the basis for assessing the patentability of an invention", and as the present board added, in line with UPC_CoA_335/2023, second headnote, the claims are the "decisive basis".
(b) Second, such interpretation would contradict the well-established jurisprudence of the Boards of Appeal, which was essentially confirmed in decision G 1/24 (see e.g. also T 1999/23).
(c) Third, such an interpretation would directly contradict the second takeaway from decision G 1/24, namely a harmonised claim interpretation between national courts or the UPC and the Boards of Appeal..
The board referred to decisions from the UPC and the German Federal Court of Justice and concluded that to align the judicial practice of the Boards of Appeal with that of the national courts and the UPC, a claim should not be interpreted, based on features set out in embodiments of an invention, as having a meaning narrower than the wording of the claim as understood by the person skilled in the art. In cases of discrepancy between the claim language and the description, it falls upon the patentee to remedy this incongruence by amending the claim. It is not the task of the Boards of Appeal to reach such alignment by way of interpretative somersaults.
In the present case, the board "consulted" the description and drawings to define the technically skilled reader from whose perspective the claim features (d) to (f) were to be interpreted.
- T 2651/22
In T 2651/22 the patent related to impedance matched microwave quantum circuit systems, in particular to a system comprising a parametric amplifier for amplifying a qubit readout. The interpretation of the feature "impedance matching circuit" in claim 1 was relevant to assess inventive step.
The respondent (patent proprietor) submitted that the claim could not be interpreted as covering a single integrated circuit. Feature 1.3 defined a quantum circuit device. Feature 1.4 defined an impedance matching circuit coupled to the quantum device. For the person skilled in the art it was clear that these were two different circuits. The scope of protection did not extend to one integrated circuit with double functionality as that of D8. Had the patentee desired to cover such a circuit it would have worded the claim differently, for instance to define an impedance matched circuit, not an impedance matching circuit. The specification was also consistent in describing two different circuits (figures 5, 6, 8A and 8B), one of which being placed in front of the amplifier and providing only impedance matching functionality and no amplification.
The appellant (opponent) argued that the patentee's intention when drafting the claim was irrelevant. If the claimed technical features could be mapped to the prior art then that was sufficient for the features to be disclosed. In order to establish a difference vis-à-vis D8 the claim should have been limited by inserting features from the specification into the claim, instead of relying on the specification for interpretation.
The board found the position of both parties to be reasoned and reasonable. The problem lay in the inherent difficulty of defining whether and when circuitry which is part of a larger circuitry can be identified as one circuit separate from the rest, or as fulfilling only one function. In the present case for instance, the presence of an impedance matching circuit as described in the specification also influenced the amplifying function; it improved it by reducing losses.
Considering this context, the board was of the opinion that the claim had to be interpreted in the light of the description. On that basis the board concluded that the claimed impedance matching circuit was to be interpreted as a circuit designed specifically for the (sole) purpose of impedance matching of a preexisting quantum device circuit to external circuitry.
It was undisputed that D8 did not disclose such a circuit. Further, the appellant did not argue that under this interpretation the claimed matter was obvious. Accordingly, the board came to the conclusion that claim 1 of the patent as maintained was inventive over D8.
- T 2116/22
In T 2116/22 the interpretation of the terms "coating" and "coated" in claim 1 of the main request was relevant to assess novelty.
The appellants-patent proprietors argued that these terms had to be interpreted taking into account the whole patent. The skilled person would have understood the coating step and the thrombin-coated gelatin granules defined in the claims as being limited respectively to a process as specified in paragraph [0014] of the patent and to thrombin coated gelatin granules prepared thereby.
The board observed that the wording of the claim did not restrict the coating step to the specific coating conditions mentioned in paragraph [0014] of the patent. While the limitation of the final product being a "dry and stable" hemostatic composition may imply some limitations on the process steps, these encompassed any process features resulting in a dry and stable product such as indeed the ones described in paragraph [0014] of the patent but also any other process features providing a dry and stable product. The board further noted that the term "coating" or "coated" had a clear meaning in the field of pharmaceutical preparations and corresponded to the application of a material to the surface of a pharmaceutical solid product. This was usually done by applying the coating material as a solution or suspension to the pharmaceutical solid product and evaporating the vehicle. Paragraph [0014] of the patent did not provide a different definition of the term "coating" or "coated" than the one commonly accepted in the art. The description provided first a description of the process in broad terms as in claim 1 before describing more specific embodiments and preferred features, such as in paragraph [0014]. Whether read alone or in the light of the entire description, the meaning of the coating step or the coated product remained the same.
In the context of the discussion regarding the interpretation of the terms "coating" and "coated", the appellants-patent proprietors had requested that the board stay the proceedings in view of the pending referral G 1/24.
The board stated that the provisions in the EPC concerning a stay of proceedings following a referral to the Enlarged Board only concerned the referring board (Art. 112(3) EPC). There was, however, no legal basis in the EPC nor in the Rules of Procedure of the Boards of Appeal requiring that any other board stay its proceedings to await the outcome of the proceedings before the Enlarged Board. The decision whether or not to stay the proceedings in such cases was thus a discretionary one.
According to the board, the strict approach taken in T 166/84, namely to stay the proceedings whenever the outcome of the proceedings depended entirely on the outcome of the referral, had been applied by some boards (e.g. T 426/00, T 1875/07 and T 1044/07). However, it had also been put into question for lack of a legal basis, and considered not to apply to proceedings before the Boards of Appeal (e.g. T 1473/13 and T 1870/16). The board was of the view that a strict application of the approach taken in T 166/84 would in effect deny a board its discretion as to whether to stay the proceedings. The discretion was however the inevitable consequence of the fact that there was no legal basis for requiring a board that had not referred the relevant questions to the Enlarged Board to stay the proceedings. Moreover, the outcome of the referral G 1/24 was not decisive for the decision in the case at hand.
The board decided not to stay the proceedings in view of the pending referral G 1/24 and concluded that claim 1 of the main request was not novel. During the course of the oral proceedings, the appellants-patent proprietors filed an objection under R. 106 EPC. The board reiterated that the decision to stay the proceedings remained a discretionary one. The appellants-patent proprietors had had ample opportunities to present their comments on the issue of a stay of the proceedings, so that no violation of their right to be heard occurred (Art. 113(1) EPC). Moreover, the outcome of the referral G 1/24 was not decisive for the decision in the present case, including on novelty of the main request. Therefore, the board dismissed the objection under R. 106 EPC.