No claim interpretation summersaults for the EPO (T 2027/23)
Rose Hughes
No claim interpretation summersaults for the EPO (T 2027/23)
PatKat has been watching with keen interest as the first decisions applying the Enlarged Board of Appeal's recent ruling in G 1/24 have started to trickle in. The initial view from many commentators was that G1/24 "extinguished uncertainty" on the issue of claim interpretation. However, the Enlarged Board of Appeal (EBA)'s choice of wording in its G1/24 that the description "shall always be consulted to interpret the claims" (emphasis added) left some of us wondering, this Kat included, how much G1/24 actually allowed a patentee to rely on the description for the purposes of claim interpretation. After all, it is perfectly possible to "consult" someone for their opinion, and then entirely ignore their view when making a decision...
A new decision from the Boards of Appeal now addresses this question directly (T 2027/23) and finds once again for the primacy of the claims over the description. With a nod to the related controversy of description amendments (IPKat), the Board of Appeal warns that it is not the task of the EPO to perform "interpretative somersaults" to align claims with the description, and the burden of aligning the description with the claims falls to the Patentee. Interestingly, the decision in T 2027/23 has been given a "B" distribution status, meaning that it has been distributed to other Boards.
Legal background: after G 1/24, what does it mean to "consult"?
In G 1/24, the EBA sought to harmonise the EPO's approach to claim interpretation. In its decision, the EBA concluded that the description and drawings must always be consulted, not only when a claim is unclear. However, G 1/24 left open the crucial question of what "consulting" the description actually entails. Can a definition in the description be used to narrow a clear, but overly broad, claim term to rescue it from the prior art? If so, how generalisable does this definition need to be to the disclosure as a whole?
The present case, T 2027/23, related to the novelty of the patent in question (Article 54). The allowability of the claims hinged entirely on whether the claims could be interpreted narrowly in light of the description, as argued by the Patentee.
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| Firefighter Kat |
A turntable tale of claim construction
The case at the centre of this decision was an appeal by the Patentee, Iveco Magirus AG, against the Opposition Division's decision to revoke its patent for a control system. The Opponent was Rosenbauer International AG. The patent in question related to a control system for an aerial apparatus, such as a "turnable ladder of a firefighting vehicle". The invention involved a joystick-like input device where its deflection is converted into a speed signal to move the ladder. The system also determines a possible maximum speed and uses "restricting means" to counteract or limit the joystick's deflection accordingly.
The main issue on appeal was novelty in view of a public prior-use vehicle used by the fire brigade in Tauberbischofsheim. The Patentee argued that key claim terms such as "processing unit" and "speed signal" should be interpreted in light of the description to mean they were limited to electrical systems. This interpretation, it argued, would distinguish the invention from the prior-use vehicle, which used a mechanical control system.
The three major takeaways from G1/24
The Board of Appeal considered how the process of interpreting the claims in this case should be approached in view of G1/24. For the Board of Appeal, there were three major takeaways from G 1/24 (r. 3.5.2):
The claims are the "basis" for interpretation, and the description should always be "consulted". However, G 1/24 is silent on the purpose of such consultation. (emphasis added)
Discrepancies in claim interpretation practice between national courts, the UPC, and the Boards of Appeal should be avoided to foster harmonisation.
Patentees are the "masters of their fate" and it falls upon them to remedy any discrepancies between the description and the claims. (emphasis added)
Applying these principles, the Board of Appeal flatly rejected the Patentee's invitation to read limitations from the embodiments into the claims. The Board of Appeal reasoned that such an approach would contradict the established case law and G 1/24. Crucially for the Board of Appeal, adopting the Patentee's approach would also undermine legal certainty by allowing patentees to behave like Professor Franzosi's "Angora cat". As Jacob LJ famously observed, this is where a patentee, when challenged, presents their patent as small and cuddly, but on the attack, "the fur bristles, the cat is twice its size with teeth bared and eyes ablaze". The Board of Appeal found it highly undesirable for a patentee to argue for a narrow interpretation for validity, and then for a broader scope of protection when enforcing the patent.
To reinforce its point on harmonisation, the Board of Appeal referenced decisions from the UPC (DexCom vs. Abbott, UPC_CFI_230/2023 (IPKat)), the German Federal Court of Justice, the US Court of Appeals of the Federal Circuit (Renishaw PLC v Marpass, 158 F.3d 1243 (1998)), and the Japanese Supreme Court, which the Board of Appeal considered to all support the principle that an example embodiment does not generally permit a restrictive interpretation of a claim specifying the invention in general terms.
On the interpretation of the order from G1/24 that the description should be "consulted", the Board of Appeal found the following:
'"consulting the description" does not imply any specific result of such consultation: A consultation of two conflicting authorities does not a priori determine who is master. Decision G 1/24 does not, as the appellant seems to suggest, require the Boards to give the description preference over the wording of the claim. To the contrary, according to the Order of G 1/24, "the claims are the starting point and the basis for assessing the patentability of an invention"' (r.3.5.4)
The Board of Appeal concluded that "a claim should not be interpreted, based on features set out in embodiments of an invention, as having a meaning narrower than the wording of the claim as understood by the person skilled in the art" (r. 3.5.6). In a final note, the Board of Appeal added that "in cases of discrepancy between the claim language and the description, it falls upon the patentee to remedy this incongruence by amending the claim. It is not the task of the Boards of Appeal to reach such alignment by way of interpretative somersaults" (r. 3.5.8). The appeal was therefore dismissed and the patent revoked.
Final thoughts
The decision in T 2027/23 thus found that G1/24 is not an invitation for patentees to cherry-pick limiting features from the embodiments to save a claim from the prior art. It is notable that the Board of Appeal made explicit reference to the "Angora cat" problem and indicated that the EPO should seek alignment with practice at the UPC and in other major jurisdictions. However, as this Kat has recently observed, it remains open to question how much the UPC and EPO are in fact aligned on the issue of claim interpretation (IPKat). In the recent decision from the Hamburg Local Division in Agfa v Gucci (UPC_CFI_278/2023) the UPC found that, in contrast to recent Board of Appeal decisions, a narrowing description definition should be used to interpret the claims (IPKat). The Board of Appeal in this case also cited some divergence with the UPC (r. 3.5.5.).
However, the case of using narrowing definitions is subtly different to the case of importing narrowing language from specific embodiments in the description. Both the UPC and EPO appear to agree that patentees should not be allowed to use individual embodiments to narrow the claim language absent a more generalisable definition. The current divergence lies on the relevance of these more generalisable definitions (IPKat). Compare, for example, the interpretation of G1/24 in T 1999/23 (IPKat) and the approach of the UPC in Agfa v Gucci (UPC_CFI_278/2023) (IPKat)
The decision in T 2027/23 also has interesting implications for the now-pending referral G 1/25 on mandatory description amendments (IPKat). By stating that patentees themselves must fix inconsistencies, and that the Boards of Appeal will not perform "interpretative somersaults" to do it for them, T 2027/23 might be seen to indirectly support the case for requiring such amendments to ensure legal certainty. On the other hand, making it up to the patentee to align the description and the claims could be read as supporting the case that mandatory description amendments should not be forced on patentees, given that legal certainty is provided by an established approach to claim interpretation that focuses on the primacy of the claims and does not allow inconsistencies in the description to override the claim language. If this is how claims are to be interpreted, what need is there to amend the description? Notably, the other jurisdictions that the Board of Appeal in this case considers to be aligned with its approach of claim interpretation (US, Japan and Germany), do not consider mandatory description amendments to be necessary.
For this Kat, the message from this latest decision to apply G1/24 aligns with her view before even G1/24 was decided (IPKat). If you want the scope of the claims to be clear, the best place to ensure this is and has always been the claims, not the description.
Further reading