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| The Angora cat is angry. |
"The claims are the starting point and the basis for assessing the patentability of an invention under Articles 52 to 57 EPC. The description and drawings shall always be consulted to interpret the claims when assessing the patentability of an invention under Articles 52 to 57 EPC, and not only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation."
This seems to be fairly clear, at least in the context of the opposition case that led to the referral. This was all about whether a clear term in a claim should be interpreted more broadly than a normal reading would suggest if the description provided a broader definition. The EB's decision indicates that it should. Most would agree that this is a good thing, since patent proprietors should not be permitted to defend their patent with a narrow interpretation and then have the option open afterwards to interpret the claim more broadly to cover infringers. This would most likely not happen in the case such as in G 1/24, since courts across Europe, including the UPC, all agree that the description and drawings should be used to interpret the claims. The Angora cat in cases such as this therefore seems to have been put down.
G 1/24 will already be having an effect on opposition cases now underway, where opposition divisions will be pointed towards the description and drawings where a particular term in a claim should be given a broader meaning. This should be good for opponents, who should now be able to argue more successfully for some claim features being broader and therefore more likely to be covered by the prior art. There are, however, always unintended consequences.
An example of potential unintended consequences arose very recently during opposition oral proceedings in a case for which I was the representative for the opponent. Claim 1 of the patent in question, which was very poorly drafted (at least by UK standards), had various terms that were broad or unclear and required interpretation. For the opponent, I interpreted the claim broadly so as to cover the prior art, which it did. The preliminary opinion of the opposition division agreed, finding claim 1 of the patent to lack novelty, along with various auxiliary versions the proprietor had submitted. Nothing then happened until the oral proceedings, with the proprietor not even submitting any written submissions in advance. At the hearing, however, the proprietor submitted a further request to add more features to claim 1 from the description and proceeded to argue on the basis of G 1/24 that the claim features should be interpreted narrowly to be clear, novel and inventive over the prior art. What concerned me, (other than the frustratingly late submissions and the OD's decision to admit them) was that G 1/24 is now being used by attorneys to argue for claim features to be interpreted narrowly based on the description in order to get around the prior art. What was more concerning though was that the OD appeared receptive to these arguments and ended up maintaining the patent as amended, even though claim 1 was still fundamentally flawed in various ways. Is this perhaps an early sign that G 1/24 is being used to bring back the Angora cat in another form, allowing unclear and badly drafted claims to be made allowable on the basis of the description filling in the gaps? One case is of course not representative, and this is only my immediate impression, but if the argument can be made then others will surely also try. I can see this kind of thing ending up in T decisions before too long.
I sympathise with your frustration at the admission of late-filed ARs. It sounds like there was some procedural unfairness in your case.
ReplyDeleteHowever, regarding the patent as amended, has an Angora cat really been born, or is there merely a hypothetical possibility that one MIGHT be created during litigation?
Whilst Angora cats are much discussed in commentary, they are surprisingly difficult to spot "in the wild". I believe that the reason for this is that the national courts have hunted them to near extinction. Whilst patentees might (infrequently) claim to have found a living specimen, such claims never stand up in court.
Personally, I believe that there is only one way to interpret a claim, namely through the eyes of a person of ordinary skill in the art, in the light of the disclosures of the patent document as a whole and bearing in mind both common general knowledge and the object and purpose of the invention. The Enlarged Board of Appeal has (finally!) cottoned on that there might be something to this kind of approach. It remains to be seen whether the rest of the EPO takes note. However, if it helps to reassure you, the national courts (and now the UPC) routinely adopt that approach. This means that there should be no Angora cat in your case, as if the EPO is convinced that the context provided by the description mandates a narrow interpretation of the claims, then the courts ought to reach the same conclusion.
Although I was certainly frustrated with the apparent unfairness, I doubt whether the resulting amended patent is a threat to anyone (for reasons I don't need to go into here). The possibility that concerns me more after this case is that opposition divisions may take G 1/24 to mean that they can interpret claim features more narrowly than they should by taking into account the description and drawings. This is, in my view, the wrong way to look at it. Patents always have claims that define the invention more broadly than the specific embodiments in the description and drawings. This should not necessarily mean that the claims should be interpreted narrowly. Purposive construction is, of course, the way to do it.
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