It is all crystal clear by definition... (and don t blame us if it isn t) Casual observations on claim interpretation in the European Patent Office Tamás Bokor Member of the Boards of Appeal of the European Patent Office Talk held at the Bundespatentgericht, 07.04.2016 Tamás Bokor EPO DG3 7th April 2016
... can you spot the difference?... Article 69 (1) EPC: The extent of the protection conferred... shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims. Article 84 EPC: The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description. Article 92 EPC: The EPO shall... draw up... [the] search report... on the basis of the claims, with due regard to the description and any drawings Rules 42(1) and 43(1) EPC: The description shall... disclose the invention, as claimed, in such terms that the technical problem... and its solution can be understood.... The claims shall define the matter for which protection is sought in terms of the technical features of the invention. 2
The (presumed) legislative intent? Application/patent read by the competent organ Claim scope determined (according to common principles/criteria?) Action taken: prior art identified, claim examined or compared with prior art / alleged infringement The harsh reality: Application/patent read by the competent organ Determination of claim scope influenced by the - expected action/output - conflicting subject-matter - procedural possibilities or restraints of the expected action - interpretation by another organ? Action taken Claim amended Output: relevant prior art, claim granted/refused, decision on infringement Output: relevant prior art, claim granted/refused, decision on infringement 3
The (more or less undisputed) general principles of claim interpretation Guidelines: Each claim should be read giving the words the meaning and scope which they normally have in the relevant art, (unless in particular cases the description gives the words a special meaning, by explicit definition or otherwise). Read: the claim is read by the [specialist] skilled person CLBA: The skilled person, when considering a claim, should rule out interpretations which are illogical or which do not make technical sense. He should try... to arrive at an interpretation of the claim which is technically sensible and takes into account the whole disclosure of the patent. The patent must be construed by a mind willing to understand, not a mind desirous of misunderstanding. Read: Be reasonable and positive, look also at the description 4
...claims seem important to the legislator. Are they equally important to us?... Of course examiners in the EPO know that claims are important. More precisely, examiners know when claims really become important: at the very moment when a patent is granted (or upheld) this may be far away: until then, a lot of work is to be done on and around the application Perhaps the claim interpretation can wait a little? All claims are important, but some are more important than others: Claims are not completely useless (when doing the search) Claims are actually quite useful (when doing the examination for grant) Claims are quite important (whenever arguing with the applicant) Nothing else matters but the claims (when examining an opposition). a serious interpretation exercise may not be worth the trouble 5
I. Claims need no interpretation (as a distinct and systematic action) at any stage, because... the examiner is a skilled person. He understands the claim immediately. exact claim wording is (for the time being) not that important (e.g. search) it is simpler to invite the applicant to amend the claim than coming up with a tedious interpretation...... and the Examiner may have more important things to do: perhaps the distinguishing features are not heavily disputed. The main battlefield may be the inventive step. Or added subject-matter under Article 123(2) EPC. Neither searches nor grant decisions need to be reasoned. and Article 69 EPC is a taboo, I am told. 6
A promising start: see Guidelines on search (Part B) : At this stage, we are still fully Article 69 compatible (remember the Protocol?): The search should on the one hand not be restricted to the literal wording of the claims, but on the other hand should not be broadened to include everything that might be derived by a person skilled in the art from a consideration of the description and drawings.... strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims... The extremes of the Protocol on the interpretation of Article 69... claims serve only as a guideline and...the... protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patent proprietor has contemplated. 7
II. Shifting the focus in examinaton: the legal source for claim interpretation is no longer Article 69, but Article 84 EPC... and many beautiful minds apply the law: The Examiner, to a certain extent, is a skilled person: he is an engineer, not a patent attorney, and even less a lawyer. inclined to treat claim scope as something which can be defined (and therefore examined) with scientific accuracy. He is less inclined to weigh up various factors in order to determine claim scope and thereby merely to arrive at an equitable (but not necessarily exact) result. It is perceived that clarity in the sense of Article 84 EPC not only should, but indeed CAN be achieved. However, once a claim becomes clear, there seems to be no further need to interpret it. Examination of clarity under Article 84 EPC may convey the perception that interpretation is more or less superfluous at later stages. 8
Article 84 EPC in practice: The obsession with clarity Article 84 EPC on paper: The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description. And in practice? The claims (and nothing else) shall define the matter for which protection is sought (forget the German angeben, this is far too vague).they shall be (clearly) clear (!!!) and concise (please...) and be supported by the description (or otherwise we might raise an objection under Article 83). 9
Perception of claim scope interpretation pursuant to Article 69 EPC Claim scope as granted by the EPO Claim scope as interpreted by Court X Claim scope Claim scope as interpreted by Court Y Claim Scope 10
Perception of the clear claim under Article 84 EPC: Whether it is narrow or broad: the boundaries must be as exact as possible Claim scope Claim scope Claim scope 11
Effect of clarifying amendments on claim scope Claim scope before amendment Delimitation through interpretation under Article 69 EPC? Prior Claim scope as amended after clarity (or other) objection art 12
III. Article 69 EPC and the EPO a lost perspective? The early years (1980-1990): Of course we apply Article 69 EPC: we will happily look at description and drawings in order to interpret a claim. The years of growing suspicion (1990-2000): There is something fishy about Article 69 EPC. What is all this nonsense about infringements? Fall and expulsion from Eden (from 2000 onwards): Do not even try to mention Article 69 to us. The EPC tells us clearly that this is a no-go area for the EPO. A perceived legal barrier between Article 69 and the EPO is born. The principles of claim interpretation need not follow those of Article 69 EPC. (...G 2/88 was too long ago...) Any chance of rehabilitating Article 69? There is still hope, but chances are slim. 13
How did this come about? An instructive example: T 1208/97 of 3 November 2000 (among several similar decisions) Case: Biotechnology, DNA sequence Patentee argues: known naturally occurring, i.e. non-modified DNA sequences would not infringe the claim through correct application of Article 69 EPC, hence these cannot be novelty destroying. Board holds: Claim is a product claim (albeit with some reference to process features). Novelty of the product is not necessarily established merely through new process. (There is no inverse application of Article 64(2) EPC.) The final finding seems in essence correct: It is normally not permissible to conclude from a legal effect that certain requirements of a legal provision possibly leading (directly or indirectly) to this legal effect are thereby inherently satisfied. The Board further reflected on the infringement argument... 14
Après moi le déluge? and said: Article 69 EPC and its Protocol are primarily for the judicial instances dealing with infringements. The message getting through: Article 69 EPC is not our business. This interesting notion did not go unnoticed. It certainly fitted to the idea that the quest for clarity is the right approach: See T 1279/04 of 25 September 2007, dismissing a novelty argument, where a claim interpretation was proffered by reference to Article 69 EPC:.. There is no case for anything other than a strict definitional approach, given that in [examination and opposition proceedings] the claim could and should be amended to ensure legally certain patentability, in particular novelty and inventive step over any known prior art. Amendment rather than protracted argument should be the answer to genuine difficulties of interpretation in all aspects of the examination and opposition procedure... 15
Summing up: We have no time for claim interpretation in the European Patent Office. We are just too busy making sure that you should not spend your time with it either.... and remember that the road to hell is paved with good intentions... Thank you for your attention. 16