Claim interpretation by the Boards of Appeal of the EPO

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1 Claim interpretation by the Boards of Appeal of the EPO UNION Round Table: How to Cope with Patent Scope - Literal Interpretation of Claims throughout Europe Munich, 26 February 2010 Dr. Rainer Moufang (Legal Member of the Boards of Appeal of the EPO)

2 OVERVIEW Claim interpretation at the EPO Examination procedure Opposition procedure General principles of claim interpretation - Relevance of Article 69 EPC - "Patent to be construed by a mind willing to understand" - Broadest reasonable interpretation? - Patent documents as its own dictionary Illustrative cases Specific issues Claim features relating to a use or purpose Limitation by implicit features

3 CLAIM INTERPRETATION IN THE EXAMINATION PROCEDURE Patent claims to be granted should satisfy requirement of legal certainty Relevance of Article 84 EPC - Claims shall define matter for which protection is sought - Claims must enable third parties to determine the protection conferred (see G 2/88, OJ EPO 1990, 93) Relevance of Article 83 EPC Undefined parameters Absence of information on measuring method Nevertheless claim interpretation issues also arise in grant procedure Correct technical understanding is essential Legal issues (e.g. with respect to product-by-process claims or use/purpose features)

4 CLAIM INTERPRETATION IN THE OPPOSITION PROCEDURE Situation similar to claim interpretation in national nullity proceedings Limited relevance of Article 84 EPC Article 84 EPC is no opposition ground However, amendments have to satisfy clarity requirement Article 83 EPC remains relevant Undefined parameters Absence of information on measuring method Need for construing claims when examining grounds of opposition Last stage of central proceedings with respect to European patent

5 GENERAL PRINCIPLES OF CLAIM INTERPRETATION Relevance of Article 69 EPC? Provision is concerned with extent of protection conferred by European patent Scope of protection normally not an issue for EPO organs (see T 442/91, T 740/96 and T 417/04)

6 GENERAL PRINCIPLES OF CLAIM INTERPRETATION Relevance of Article 69 in context of Article 123(3) EPC G 2/88 determination of extent of protection to be carried out in accordance with Article 69 EPC and its Protocol Need for "abstract" determination of scope of protection Task sometimes more complex than determining scope of protection in infringement suits "Slightest doubt" case law T 113/86 (voluntary amendments) T 1293/03 (in context of Article 123(2) EPC)

7 GENERAL PRINCIPLES OF CLAIM INTERPRETATION Relevance of Article 69 EPC outside Article 123(3) EPC Many decisions rely on Article 69 EPC T 23/86 (OJ EPO 1987, 316): Description and drawings used to interpret claim e.g. when objective assessment of content of claim has to be made to judge whether its subject-matter is novel and inventive T 374/08 of 22 October 2009: "Normal reading skills fail to provide full understanding and, invoking Article 69(1) EPC, description and figures are called upon for assistance"

8 GENERAL PRINCIPLES OF CLAIM INTERPRETATION Claim interpretation has to be reasonable Leading case: T 190/99 Patent to be construed by a mind willing to understand Skilled person should rule out interpretations which are illogical or which do not make technical sense Skilled person should try, with synthetical propensity, i.e. building up rather than tearing down, to arrive at interpretation of claim which is technically sensible and takes into account whole disclosure of patent

9 GENERAL PRINCIPLES OF CLAIM INTERPRETATION Claim interpretation has to be reasonable Statements made in T 190/99 frequently quoted in boards of appeal case law T 841/04 Skilled person would not give interpretation to claim which would contradict overall technical teaching of patent

10 GENERAL PRINCIPLES OF CLAIM INTERPRETATION Broadest reasonable claim interpretation? T 151/05 of 22 November 2007 Unclear claims to be interpreted broadly in opposition proceedings since "any ambiguous text must be construed against the interest of the person responsible for drafting it" T 1886/06 of 23 October 2009 If an undefined term is used in the claims, all the prior art has to be taken into account which may be of relevance for any possible technically meaningful interpretation of the undefined term

11 GENERAL PRINCIPLES OF CLAIM INTERPRETATION Broadest reasonable claim interpretation? T 567/08 of 28 September 2009: Legal certainty of claim which, by introduction of undisclosed ambiguous term, is amended to have multiple reasonable interpretations, is compromised when one of those interpretations relate to added subject-matter

12 GENERAL PRINCIPLES OF CLAIM INTERPRETATION Patent document as its own dictionary Terms in patent documents should be given their normal meaning in relevant art, unless description gives them a special meaning (see e.g. T 311/93 and T 1321/04)

13 ILLUSTRATIVE CASES T 857/06 (3.3.04) of 5 June 2008 "TNF binding protein II/YEDA" Claim 1, first alternative: "A Tumor Necrosis Factor (TNF) Binding Protein II (TBP II) in substantially purified form having the following features: (a) it inhibits the cytotoxic effect of TNF; and (b) it contains the following amino acid sequence... [= specific 11 amino acid sequence] " Term TBP II does not merely refer to any protein in general and must be given technical meaning in light of description TBP II = protein isolated from human urine having a molecular weight of about 30 kda and containing an amino acid sequence much longer than the 11 amino acid sequence of claim 1

14 ILLUSTRATIVE CASES T 1844/06 (3.3.04) of 24 April 2008 "Phosphatidylserines/CHEMI" Claim 1: A process for the preparation of phosphatidylserines of formula (I) comprising the reaction of phospatides of general formula (II) with serine, characterized in that the reaction medium is an aqueous dispersion and in that the reaction is carried out in the presence of one or more surfactants at a concentration lower than 0.4 g per gram of phospatide.

15 ILLUSTRATIVE CASES T 1844/06 (3.3.04) of 24 April 2008 "Phosphatidylserines/CHEMI" Expression aqueous dispersion means that the phospholipids do not undergo complete solubilization but are under the form of small particles held in water by agitation, the particles being the dispersed phase, while water, i.e. the suspending medium, is the continuous phase Technical claim interpretation of Board of Appeal differed from interpretation underlying national infringement/revocation proceedings in IT and was decisive for issues under Articles 54, 56 and 83 EPC

16 CLAIM INTERPRETATION SPECIFIC ISSUES Claim features relating to use or purpose Guidelines for the Examination in the EPO, C-III 4.13: If a claim commences with such words as: "Apparatus for carrying out the process etc..." this must be construed as meaning merely apparatus suitable for carrying out the process. Apparatus which otherwise possesses all of the features specified in the claims but which would be unsuitable for the stated purpose or would require modification to enable it to be so used, should normally not be considered as anticipating the claim.

17 CLAIM INTERPRETATION SPECIFIC ISSUES Guidelines for the Examination in the EPO, C-III 4.13 (continued): Similar considerations apply to a claim for a product for a particular use For example, if a claim refers to a "mold for molten steel", this implies certain limitations for the mold. Therefore, a plastic ice cube tray with a melting point much lower than that of steel would not come within the claim.

18 CLAIM INTERPRETATION SPECIFIC ISSUES Guidelines for the Examination in the EPO, C-III 4.13 (continued): Similarly, a claim to a substance or composition for a particular use should be construed as meaning a substance or composition which is in fact suitable for the stated use; a known product which prima facie is the same as the substance or composition defined in the claim, but which is in a form which would render it unsuitable for the stated use, would not deprive the claim of novelty. However, if the known product is in a form in which it is in fact suitable for the stated use, though it has never been described for that use, it would deprive the claim of novelty.

19 CLAIM INTERPRETATION SPECIFIC ISSUES T 352/94 Characteristics implied by the particular use of a device should be taken into account when deciding the novelty of the device Example: "hook for a crane" as compared with a known "fish hook" of similar shape, the differences in size being implied by the difference in use. Exception in Article 54(4) and (5) EPC Known substance or composition for use in a surgical, therapeutic or diagnostic method G 2/08 of 19 February 2010 (Dosage regime/abbott RESPIRATORY)

20 Limitation by implicit features? CLAIM INTERPRETATION SPECIFIC ISSUES T 1404/05 of 24 May 2007 Article 69 EPC and Protocol intended to assist patent proprietor in contending for a broader interpretation of a claim than perhaps its wording warranted, not for cutting down the scope of a claim In order to avoid objection under Article 100(b) EPC against vague claim which possibly reads on non-enabled constructions, claim needs to be explicitly restricted to an enabled construction

21 Limitation by implicit features? CLAIM INTERPRETATION SPECIFIC ISSUES T 1404/05 of 24 May 2007 (continued) To consider giving narrower protection than literal meaning of claim is matter for national court If in proceedings before EPO proprietor argues for narrower scope, this should be done on the basis of the wording of claim, not on the basis of something appearing only in description Proprietor has possibility to restrict the wording of claim to the meaning he is contending for

22 Limitation by implicit features? CLAIM INTERPRETATION SPECIFIC ISSUES T 1010/05 of 18 June 2008 Yoghurt (prior art) = protein hydrolysate (claim)? Since patent relates to making protein hydrolysate formulae for patients suffering from food allergy, term "hydrolysate" implies certain level of hydrolysis. No evidence that degree of hydrolysis in yoghurt reaches this threshold

23 Homepage of European Patent Office: epo.org Thank you for your attention!

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