1.3.9 Claim interpretation when assessing compliance with Article 123(2) EPC

In T 1946/10 the board held that according to established jurisprudence the skilled person interprets a claim with a mind willing to understand, so as to arrive at an interpretation which is technically sensible and takes into account the whole disclosure of the patent. Though he strives in principle to understand a claim within the wording and terms of the claim itself, he may, where he encounters ambiguities, need to consult the description and drawings to gain a better understanding. Based on the understanding of the added feature gained by this claim interpretation, the board arrived at the conclusion that adding the feature to claim 1 as originally filed in isolation from its structural and functional context presented a new teaching not originally disclosed.

The board in T 1018/02 stated that although a claim was not to 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. That also applied if the feature had not initially been disclosed in the form appearing in the claim (see also e.g. T 396/01, T 1195/01, T 1172/06, T 1202/07, T 369/10, T 474/15). In the case at issue the claim feature in question would have had to be deleted to achieve consistency with the original disclosure; however this was not possible under Art. 123(3) EPC 1973.

In T 1408/04 the board held that while the claims had to be interpreted by a "mind willing to understand" and not by "a mind desirous of misunderstanding", this was understood to mean only that technically illogical interpretations should be excluded (see T 190/99). The terms to be interpreted had a wider technical interpretation than envisaged by the appellant. A "mind willing to understand" did not require that a broad term needed to be interpreted more narrowly (even if the narrow interpretation referred to a structure which was very common, but not exclusive, in the technical field concerned), but instead that a broad term should be interpreted with regard to all technically logical interpretations thereof. Based on this understanding of the limiting terms introduced into the claim the board came to the conclusion that the amendment to claim 1 as granted resulted in an intermediate generalisation.

In T 241/13 the board held that the description did not give a precise definition of the meaning of the expression "minimum intensity level"; the patentee's interpretation of this expression was not clearly excluded. However, that such an ambiguous expression as filed might be interpreted in a particular way was not sufficient to ensure the compliance of an amendment, based on that interpretation, with Art. 100(c) EPC which required a direct and unambiguous disclosure in the application as filed. In the present case, no direct and unambiguous disclosure could be found for the patentee's interpretation.

In T 2002/13 the board referred to established case law, in particular T 190/99 (see chapter II.E.2.3.3 "General claim interpretation") according to which the claims must be read with a mind willing to understand and to make technical sense of them, thereby ruling out illogical or technically meaningless interpretations. The board recalled that the claims were directed to a person skilled in the art. However, the case law did not allow the reader to disregard an illogical or technically inaccurate feature of a claim and hence to interpret such a feature in a correct manner. Thus, if a claim included contradictory features, this contradiction could not be resolved by merely disregarding the technically inaccurate feature and considering only the convenient technically meaningful feature. All the less so when assessing the compliance of these two features with Art. 123(2) EPC. In the board's view, any other approach would provide an unwarranted advantage to the patentee/appellant. See also the abstract of T 81/13 in chapter II.E.1.4.7 "Elimination of contradictions and inconsistencies".

In T 916/15, the board took the view that the jurisprudence of the boards of appeal referring to "a mind willing to understand" did not apply for the purpose of assessing the allowability of amendments under Art. 123(2) EPC. It followed from T 190/99 that this concept applied only where it was necessary to interpret a claim of a granted patent for the purposes of Art. 123(3) EPC and Art. 69 EPC.

According to the board in T 1688/12, the mere fact that a dependent claim emcompassed a host of possible but undefined embodiments did not mean that the claim on which it depended had to be interpreted as compatible with all those embodiments.

Quick Navigation