A. Revendications

In T 903/24 war die Auslegung des Merkmals M0106 entscheidend für die Neuheit des Gegenstands von Anspruch 1 des Hauptantrags. Dieses Merkmal verlangte, dass "das erste Verkleidungselement auf der Schmalseite wenigstens lokal mehrere übereinanderliegende Lagen des Flachmaterials aufweist".

Die Kammer stellte fest, dass der Ausdruck "übereinanderliegende Lagen" nach dem allgemeinen Sprachverständnis nicht bedeutet, dass die Lagen direkt miteinander in Kontakt stehen und sich berühren müssen. Dasselbe ergab sich bei Berücksichtigung der in der Beschreibung erläuterten funktionalen Bedeutung der "übereinanderliegenden Lagen" für die Versteifung und Formstabilität der wärmeisolierenden Wand sowie für die Wärmebrückenbildung durch diese Lagen.

Die Kammer merkte an, dass die drei "übereinanderliegenden" zwar als direkt miteinander in Kontakt stehende Lagen in den Figuren 2 und 3 des Streitpatents dargestellt waren, das Patent jedoch keine Erläuterung oder Definition dahingehend enthielt, dass "übereinanderliegende" Lagen sich stets berühren müssten. Vielmehr enthielten die Ausführungsformen der Figuren 5, 6 und 7 Hinweise, dass dies gerade nicht so zu verstehen war.

Die Kammer fügte hinzu, dass der erteilte Anspruch 7, der "mehrere übereinanderliegende Lagen (40, 41, 49)" definierte, sich auf die Ausführungsform in Figur 6 bezog. Aufgrund der Bezugszeichen war ersichtlich, dass die Lagen 40, 41 und 49 in Figur 6 im Sinne des Patents "übereinanderliegende Lagen" waren, auch wenn sich zwischen den Lagen 40 und 49 ein anderes Element befand und sich diese daher nicht berührten und nicht direkt miteinander in Kontakt standen.

Weiterhin stellte die Kammer fest, dass R. 43 (7) Satz 2 EPÜ besagt, dass Bezugszeichen nicht zu einer einschränkenden Auslegung des Patentanspruchs herangezogen werden dürfen. Dies bedeutet insbesondere, dass im Patentanspruch angeführte Bezugszeichen den Anspruchsgegenstand nicht auf Ausführungsbeispiele beschränken, die den Zeichnungen bzw. Figuren entsprechen, in denen diese Bezugszeichen verwendet werden. Dies war bei der oben dargelegten Begründung auch nicht der Fall. Gemäß R. 43 (7) EPÜ sollen Bezugszeichen das Verständnis des Patentanspruchs erleichtern. Dies war etwa dann der Fall, wenn durch Bezugszeichen erläutert wurde, in welchem Zusammenhang Merkmale des Patentanspruchs in einem im Patent genannten Ausführungsbeispiel zueinander standen.

Die Kammer wies darauf hin, dass Figur 6 Teil der bei der Anspruchsauslegung gemäß G 1/24 stets heranzuziehenden Beschreibung und Zeichnungen war. Laut Kammer erleichterten die Bezugszeichen in Anspruch 7 das Verständnis des Verhältnisses von dem in Figur 6 gezeigten Ausführungsbeispiel zu Anspruch 7. Die Berücksichtigung der Bezugszeichen dahingehend, dass jedes der Bezugszeichen auf eine der in Figur 6 gezeigten "übereinanderliegenden Lagen" verwies, stand insofern im Einklang mit R. 43 (7) EPÜ. Der Umstand, dass sich hieraus über Figur 6 indirekt eine erläuternde Rückwirkung der Bezugszeichen auf das Verständnis der im Anspruch verwendeten Begriffe ergab, entsprach der gemäß R. 43 (7) Satz 1 EPÜ erwünschten Funktion der Bezugszeichen, das Verständnis des Patentanspruchs zu erleichtern. Anspruch 7 war ein abhängiger Anspruch, der sich (mittelbar) auf Anspruch 1 bezog, in dem der Begriff "übereinanderliegend" ebenso wie in Anspruch 7 verwendet wurde. Der Begriff war in diesen beiden Ansprüchen daher einheitlich auszulegen.

Die Kammer kam zu dem Schluss, dass der Ausdruck "übereinanderliegende Lagen" in Anspruch 1 nicht auf Lagen beschränkt war, die in direktem Kontakt zueinander standen und sich berührten. Dieses Verständnis ergab sich nicht aus einer bloßen Betrachtung der Bezugszeichen, sondern aus der gemäß G 1/24 bei der Auslegung von Ansprüchen stets gebotenen Heranziehung der Beschreibung und Zeichnungen (einschließlich der Referenzzeichen) aus der Sicht der Fachperson, ggf. unter Einbeziehung der funktionalen und üblichen sprachlichen Bedeutung der im Anspruch verwendeten Begriffe.

Der Gegenstand von Anspruch 1 des Hauptantrags war daher nicht neu.

In T 873/24, in each of the originally filed sets of claims of the application, the parent and the grandparent application, the titanium to nitrogen ratio was explicitly defined by expressing their respective amounts in weight percent, as being in excess of 3.42, thus resulting in a weight ratio. In contrast, claim 1, feature F1.3 of the patent in suit did not specify that the amounts of titanium and nitrogen had to be expressed as weight percent in order to determine the ratio. Appellant 2 argued that subject-matter had been added since the application as filed (as well as the parent and grandparent applications) only disclosed a ratio based on weight but not a generalisation of the ratio by omission of the unit, as claimed.

According to the board, the case hinged on the extent to which the information found in the description might influence the interpretation of claim 1 and on what possible interpretations of the claim needed to be originally disclosed.

The board observed that most decisions acknowledged that the principles of G 1/24 as to the role of the description in claim interpretation also applied to the assessment under Art. 76(1) and 123(2) EPC. Generally, most decisions adopted a two-step approach, first interpreting the amended claim and then assessing whether the amended claim contained added subject-matter. The board identified three approaches regarding the extent to which the description was relied upon during this first step of interpreting the amended claims. Under the first approach, the description was consulted only to define the skilled person. Under the second, there was no broadening or limitation of claims based on the patent specification. The third was a holistic approach permitting broadening and/or narrowing the interpretation in view of the patent specification. The board noted that the three approaches led to a different outcome when applied to the case in hand. Under the first and second approaches, the amendment to claim 1 would be deemed to add subject-matter. The third approach would lead to the conclusion that feature F1.3 fulfilled the requirements of Art. 123(2) EPC..

After addressing the admissibility of the referral (see abstract under Art. 112(1) EPC), the board referred the following questions to the Enlarged Board (referral pending under G 1/26 – "Coated steel strips").

"1. May a decision be considered to be "required" for the purposes of Article 112(1) EPC, if the referring Board demonstrates that the point of law in question arises out of the context of the case pending before it and, in the circumstances of the proceedings, it is reasonable for the Board to examine it and decide on it next.

2. (a) Does the fact that the claims are the starting point and the basis for assessing the patentability of an invention generally preclude a feature which is only disclosed in the description or the drawings of a patent from being read into the meaning of a granted claim, in particular if this leads to a restrictive reading of terms used in the claim.

2. (b) If the answer to question 2.a) is no: is claim interpretation the result of both reading the claims and consulting the description and drawings as a unitary process and does the claim being the starting point and the basis for assessing the patentability rule out only those interpretations which can be derived from the patent as a whole but would clearly contradict the general technical understanding of the terms used in the claim.

3. (a) When assessing compliance with Article 123(2) EPC, must a term used in a claim be assessed against all interpretations that make technical sense to the skilled reader on the basis of the claim alone.

3. (b) If the answer to question 3.a) is no: is it sufficient that only the interpretations of the subject-matter of the claim established against the background of the patent specification as a whole are directly and unambiguously derivable from the application as filed?"

In T 847/24 the board addressed the principles of claim interpretation endorsed by the Enlarged Board in G 1/24. The first principle was that the claims were the starting point and the basis for assessing the patentability of an invention. The board understood this as a recognition that the claims defined the claimed subject-matter and that it was the claims themselves which were being interpreted. Accordingly, the claims, on the one hand, and the description and the drawings, on the other, were not on the same footing. This understanding of the significance to be given to the claims aligned with Art. 69 EPC (see T 1473/19), the wording and principles of which the Enlarged Board appeared to consider applicable by analogy. It was also consistent with the Enlarged Board's statement that this first principle of claim interpretation was a settled point in the case law of the boards.

The second principle endorsed by the Enlarged Board was that the description and drawings had to always be consulted to interpret the claims, and not only if the person skilled in the art found a claim to be unclear or ambiguous when read in isolation. According to the board, it followed from this that, without prejudice to the requirement under Art. 84 EPC that claims had to be clear in themselves, a claim should not be read in isolation. In other words, the meaning of a claim and its features was not to be determined in the abstract or on the basis of the skilled person's common general knowledge alone, but in the specific context in which it was used, which included the description and the drawings (as well as other claims). Such consultation could have an impact on the result of the interpretation. This impact was not limited to merely defining the person skilled in the art for the purposes of claim interpretation (see T 439/22).

The board noted that the above understanding of G 1/24 conformed with the Enlarged Board's reference to the harmonisation philosophy behind the EPC and its aim of preventing the EPO from adopting a practice of claim interpretation which would be contrary to the practice of the national courts of EPC contracting states and the UPC. It also fitted seamlessly with the direct applicability of Art. 69(1) EPC and the Protocol thereto in proceedings before the EPO when interpreting a claim to assess compliance with Art. 123(3) EPC.

The board pointed out that determining a patent claim's subject-matter, i.e. establishing the meaning of the claimed features, was not distinguishable from interpreting that claim and its features (see T 1473/19), and that the terms in a given patent claim had to be interpreted in a uniform, consistent and objective manner (see T 1345/23, T 177/22, and T 1473/19). It followed that the same claim interpretation step which, in accordance with G 1/24, had to be carried out when assessing e.g. novelty also had, for reasons of consistency, to be carried out when e.g. assessing added subject-matter, sufficiency of disclosure or extension of protection. This also aligned with the UPC Court of Appeal's statement in its order of 26 February 2024 in NanoString Technologies v. 10x Genomics, UPC_CoA_335/2023, according to which the "principles for the interpretation of a patent claim apply equally to the assessment of the infringement and the validity of a European patent", the term "validity" not being limited to "patentability" under Art. 52 to 57 EPC.

According to the board, the requirement "to interpret patent claims" pursuant to G 1/24 implied that the correct interpretation of a claim could not, if decisive for the outcome, be left open. As to a possible lack of clarity or ambiguity in a claim, this could, as such, only be addressed under Art. 84 EPC, which is not a ground for opposition. Such a deficiency could not be invoked indirectly under a different legal provision not concerned with this issue, such as Art. 123(2) or (3) EPC. A lack of clarity can have ramifications for how the deciding body interprets the claim under consideration and determines the claimed subject-matter, which may in turn have an impact on the outcome of the assessment of a ground for opposition under Art. 100 EPC. However, adopting e.g. a broad interpretation had to be distinguished from leaving the interpretation open or adopting two mutually exclusive claim interpretations simultaneously (see T 367/20).

In T 638/24, the appeal was filed by the patent proprietor against the opposition division's decision revoking the European patent.

Claim 1 of the granted patent (main request) read as follows: "A process for the production of a refined oil having a reduced 3-MCPD ester and/or glycidyl ester content characterized in that it comprises subjecting an oil to the following steps, in order: (a) a bleaching step, (b) a deodorization step, and (c) a final bleaching step with activated bleaching clay, and (d) a final deodorization step is carried out at least 40°C lower than deodorization step (b) and the final deodorization step (d) is carried out at a temperature less than 180°C..

The appellant contested the opposition division's finding that this process lacked novelty over D1. In particular, based on paragraph 0044] of the description of the opposed patent, the appellant argued that the wording "having reduced 3-MCPD ester and/or glycidyl ester content" required the process to result in a refined oil having a 3-MCPD ester and/or glycidyl ester content which was lower than that found in an oil subjected to standard refining processes.

The board did not find this argument persuasive. Claim 1 defined neither a "standard" refining process nor the amount of esters found in oils refined by these processes. Furthermore, there was no evidence that certain refining processes were considered "standard" according to common general knowledge at the filing date. Moreover, the ester content in a refined oil depended on the type of oil used, its origin, the extraction method and the conditions implemented during refinement. For these reasons, the board found that the purported reference to an undefined refined oil, allegedly obtained by an undefined "standard" process, was not suitable to distinguish the claimed invention from the prior art.

The board observed that the reference to "standard refining (i.e. standard degumming, bleaching and deodorization)" in paragraph [0044] of the description did not provide further guidance on how these refining methods should be carried out. There was no evidence that specific standardised methods and working conditions for carrying them out were part of the common general knowledge at the filing date either. Thus, this passage could not be relied upon to limit the scope of claim 1. G 1/24 could not be invoked to construe a claim relying on an unspecified and unqualified definition. The board concluded that, reading claim 1 and consulting the description, taking into account the skilled person's perspective, it was clear that what was claimed was a process which reduced the content of 3-MCPD and/or glycidyl esters in an oil which contained them. Furthermore, the process included the specified steps, in the given order.

On the basis of this claim construction, the board held that claim 1 of the main request lacked novelty over D1.

In T 420/24, the appellant (patent proprietor) contended that the prior art document D1 disclosed all features of claim 1 of the patent as granted (main request). Among other things, the appellant submitted that the opposition division had incorrectly interpreted the feature "to reduce a cantilevered beam length of the corrugated knife"..

To construe this feature in claim 1, the opposition division had used the definition of cantilevered beam length provided in paragraph [0026] of the contested patent, which reads as follows:.

"Alternatively or in addition, the fingers 148 may improve the stability of the leading edge of the knife 126 by reducing the cantilevered beam length of the knife 126, which as used herein refers to the length or distance between the cutting edge 127 of the knife 126 and the nearest adjacent extremity of the clamp 132A applying a clamping load to the knife 126. In this case, the nearest adjacent extremity of the clamp 132A is defined by the distal ends of the fingers 148....

The board recalled that, according to G 1/24, the description and drawings shall always be consulted to interpret the claims when assessing patentability of an invention under Art. 52 to 57 EPC. It disagreed with the appellant's view that the definition in the contested patent was only intended to be understood in relation to the specific embodiment referred to. According to the board, the use of the phrase "which as used herein refers to" indicated that the definition was a general definition.

The board therefore agreed with the opposition division that the skilled person, when interpreting the term "cantilevered beam length", would take into account the clear definition given in paragraph [0026] of the description of the contested patent.

The board concluded that the appellant had not convincingly demonstrated that the decision under appeal was incorrect with respect to the main request.

In T 1471/24 the appeal lay from the decision of the examining division refusing the European patent application. The examining division had found that D1 represented the closest prior art to the claimed invention and that the subject-matter of claim 1 was both novel and involved an inventive step over the cited art. Nonetheless, the requirements of R. 43(1) EPC were not fulfilled since claim 1 was not drafted in the two-part form, despite this being appropriate.

The board concurred with the examining division. It recalled that the purpose of the two-part form of claim is to allow the skilled person to see clearly which features necessary for the definition of the claimed subject-matter are, in combination, part of the prior art. The board noted that it is established practice before examining divisions not to insist on the two-part form if it is sufficiently clear from the indication of prior art made in the description which features of the claim under examination are known therefrom (see Guidelines F-IV, 2.3.2). However, this proviso regarding the features known from the prior art had not been satisfied in the present application. D1 was indeed acknowledged on page 1 of the description, but this acknowledgement failed to identify which specific features of claim 1 were known from D1. Fundamentally, therefore, in view of the two-part form not having been used in the independent claim, the requirement for the content of the description to include an indication of which features of claim 1 were known from the prior art was not fulfilled..

The board further clarified that the present case was different from T 181/95 and T 723/93, to which the appellant had referred. In the present case, claim 1 could reasonably be formulated in the two-part form with features known from D1 placed in the preamble, features not known therefrom being placed in the characterising portion; such formulation was indeed expedient.

The appellant had further argued that the text proposed by the examining division to draft claim 1 in the two-part form was incorrect insofar as D1 disclosed a set of various flat mirrors rather than, as proposed by the examining division for inclusion in the preamble of claim 1, merely a set of various mirrors. The board noted that this argument was based on a misunderstanding. The preamble of a claim drafted in the two-part form should include those features of the claim known in combination from the prior art (R. 43(1)(a) EPC). In the present case, a set of various mirrors was indeed known from D1, albeit in D1 the various mirrors of this set were flat. That the mirrors of D1 were flat was however irrelevant; D1 without doubt disclosed a set of various mirrors, such that this feature could be included in the preamble of a two-part form. According to the board, the examining division's proposal as to how claim 1 could be drafted in the two-part form seemed wholly reasonable and in line with section F-IV, 2.3 of the Guidelines.

Likewise, the board disagreed with the appellant's contention that drafting the claim in the two-part form made it unclear and lacking in conciseness. None of the appellant's further arguments convinced the board that the examining division was wrong to insist on claim 1 being drafted in the two-part form. Hence, the board concluded that the appellant's sole request was not allowable and dismissed the appeal.

In T 1096/23 opponent 1 (appellant) raised among other things a clarity objection against auxiliary request 2. In this request, features of granted claim 6, which had originally been disclosed only as a dependent method claim, had been included in the independent apparatus claim 11. Opponent 1 submitted that clarity of these features had to be assessed, since G 3/14 did not apply when the category of the (dependent) claim was changed. As there was no disclosure of an apparatus which was configured to carry out these method steps, it was unclear how the method steps were implemented in the apparatus. Therefore, the subject-matter of independent apparatus claim 11 did not meet the requirements of Art. 84 EPC.

The board agreed with the patent proprietor (appellant) that according to G 3/14, when "complete dependent claims" have been added to the corresponding independent claim, the patent must not be examined for compliance with the requirements of Art. 84 EPC. But the board agreed with the reasoning of opponent 1 that this did not apply in the present case to the implementation of the method of the dependent method claim in the apparatus defined in claim 11. However, when a complete granted dependent claim is incorporated into an independent claim of another category (here: method step -> method step carried out by an apparatus), then only the amendments related to the change of category can be examined for clarity under G 3/14.

The board held that in the case of a sub-step of a method, which was (implicitly) executed in a computer program, it made no difference for the purposes of clarity whether this method step was part of a (computer-implemented) method or was implemented in computational means in an apparatus claim, so that no ambiguity could arise. Consequently, adding the features of the original dependent method claim 6 to the wording of apparatus claim 11 did not result in any ambiguity for the skilled person. Claim 11 of auxiliary request 2 met the requirements of Art. 84 EPC.

In T 866/24, during the oral proceedings before the board, the opponent (respondent) submitted that the unclear features underlying the amendments made to claim 1, which were based on the patent description, were building up on corresponding unclear formulations taken from dependent claim 6 as granted. Raising an objection under Art. 84 EPC against unclear features stemming from granted dependent claims should, in the opponent’s view, be admissible under such circumstances.

The board agreed, in principle, with the opponent's concerns. According to the board’s perception, there was a recent tendency to examine dependent claims less and less with respect to clarity in examination proceedings despite the fact that their full examination under Art. 84 EPC was not considered "unrealistic" in G 3/14, point 32 of the Reasons. Such a full examination was even expressly encouraged by the Enlarged Board in G 1/24, point 20 of the Reasons (i.e. highlighting "the importance of the examining division carrying out a high quality examination of whether a claim fulfils the clarity requirements of Article 84 EPC"). The board noted that the justification for such leniency may be found in the assumption that the protection conferred by a granted patent is defined only by the independent claims. Where dependent claims are subsequently added to an independent claim in the course of opposition proceedings, opponents are ultimately faced with unclear claim features which, as in the present case, were deemed to have been examined for clarity, although de facto they had not been. Nonetheless, they could not be objected to under Art. 84 EPC due to the conclusions of G 3/14.

The board observed that this result was unsatisfactory, as an independent claim with unclear features leaves much to the readers' imagination. It added that unclear features tend to elude a sensible comparison with the prior art. Furthermore, since opponents may not anticipate with certainty which claim construction will be adopted by the board or a court in infringement proceedings, they may feel obliged to put forward different lines of argumentation for all of the different potential interpretations. In the board’s view, categorically barring opponents in such cases from raising clarity objections under Art. 84 EPC causes undue complexities in the discussion on novelty and inventive step, to the detriment not only of opponents but also of the opposition divisions and the boards of appeal.

In T 1065/23, claim 10 of the first auxiliary request, which became the main request, defined a pea protein extract obtainable by the method of claims 1 to 9..

The board noted that the method of claim 1 was characterised by a step in which a precipitated pea protein contained in a slurry having a pH of 4.0 to 5.8 was subjected to a specific heat treatment. As shown in Examples 2 and 3 of the opposed patent, pea protein extracts subjected to this step had a significantly lower nitrogen solubility index, gel strength and viscosity than those which were heated at a different pH or were kept at the claimed pH but were not subjected to the claimed heating step. Moreover, Examples 4 and 5 showed that protein extracts obtained by the claimed method, which had these physicochemical properties, had better wine-fining and baking properties. For example, they allowed a reduction of the water content in the dough used to prepare biscuits, while preserving or even improving sensory properties.

Opponent 2 argued among other things that claim 10 had to be rejected because its product-by-process format was, as such, not allowable. The claimed product could be described by specific features defining e.g. its properties. Citing decision T 150/82 and section F-IV, 4.12 of the Guidelines, opponent 2 submitted that the product-by-process format could only be used if it was impossible to claim/define the product other than in terms of a process of manufacture. It argued that, assuming that the product obtainable by the method of claim 1 had low solubility, gel strength and viscosity, these parameters could and should have been used to define that product. Hence, the criteria for drafting a product-by-process claim were not fulfilled, and claim 10 should not be allowed.

The board did not agree with these conclusions. It held that the mere fact that claim 10 was drafted as a product-by-process, despite the fact that the claimed product could be satisfactorily defined by reference to its composition, structure or other testable parameter, is not a ground for opposition set out in Art. 100 EPC. The issue could be, at most, one of a lack of clarity. Section F-IV, 4.12 of the Guidelines mentioned by opponent 2 indeed related to the requirement of clarity. Furthermore, decision T 150/82 related to an appeal against the refusal of a patent application and not to an appeal concerning an opposition filed against a granted patent. Consequently, this decision was not applicable.

For these reasons, the board held that considering that claim 10 was a granted claim, its format could not be objected to on the ground that it was drafted in the product-by-process format or that it lacked clarity (G 3/14).