Résumé de EPC2000 Art 084 pour la décision T0169/20 du 23.01.2023

In T 169/20 the board disagreed with the findings in T 16/87 and more recent decision T 1473/19 and considered that the provisions of Art. 69(1) EPC did not apply to the interpretation of the claims for the purpose of assessing patentability. The board held that the provisions in Art. 84 EPC and R. 42 and 43 EPC provided an adequate legal basis for claim interpretation when assessing the patentability of an invention. In particular, the requirement that the claims shall be "supported by the description" in Art. 84 EPC, 2nd sentence, provided a direct and unambiguous indication of the description's function as an aid for understanding the subject-matter of the claims. According to the board, the wording of Art. 84 EPC, 2nd sentence, implicitly limits the support given by the description to interpreting the claims in exceptional cases where such support is both necessary and possible. If the wording of a claim is unclear for a person skilled in the art, the description could fulfil its supporting function by illustrating the meaning of the unclear feature/s. Conversely, when the wording of a claim is clear for the skilled person, the supporting role from the description is neither necessary nor justified. In particular, the support of the description should not be used for restricting or modifying the subject-matter of the invention beyond what a person skilled in the art would understand when reading the wording of the claims within the relevant technical context. Moreover, if the invention according to the description is narrower or different from that in the claim, the supporting role of the description under Art. 84 EPC could not be fulfilled, since an interpretation on this basis would not represent an illustration of the subject-matter of the claim with the aid or support of the description but a restriction or modification of the scope of the invention. The board thus considered that the condition "supported by the description" in Art. 84 EPC provided a legal basis for determining how and when claims should be interpreted in the light of the description. After reviewing the case law concerning claim interpretation, the board concluded that, despite the discrepancies regarding the relevant legal provisions to be applied for interpreting the claims, the established practices of the boards in deciding when and how the claims should be interpreted in the light of the specification were reasonably homogeneous. Hence, in a number of decisions the boards had concluded that the specification could be used to interpret ambiguous or unclear features or to confirm the most obvious interpretation of the claims. The specification had also been relied upon by the boards to determine the underlying technical context of the invention. On the other hand, there was also a broad consensus in the boards that the specification should not be used to read restrictive features not suggested by the wording of the claims, or to give a different meaning to a claim feature which in itself imparted a clear and credible technical teaching to the skilled reader. If a claim was ambiguous and could be interpreted in more than one technically reasonable way (none of them being more obvious or apparent than the rest), it would not be permissible to restrict its meaning in view of the description by discarding one of the technically reasonable interpretations. The board also addressed the following expressions: "the patent is its own dictionary" and "the terms used in patent documents should be given their normal meaning in the relevant art, unless the description gives the term a special meaning". In the present board's view, the above expressions had been a major source of confusion in the debate on claim interpretation, as they seemed to indicate that it would be permissible to rely on the definition of a feature given in the description to modify its meaning in the claim, even if the claim wording was as such clear and technically reasonable and/or if the meaning assigned in the description deviated from the conventional meaning of the feature within the relevant technical context. Such an approach would not only be contrary to the legal framework proposed by the present board (as well as that based on Art. 69(1) EPC) but would also be at odds with the well-established principle of the primacy of the claims. In the underlying case the board concluded that the wording of claim 1 of the main request was clear and technically meaningful taking into account the technical context of the invention presented in the description. Thus, there was no reason to interpret it in light of the description.