A Win for Functional Claim Drafting - Openfield

Defining an invention solely in terms of a result to be achieved (colloquially termed "free beer" claiming) is a risky business and something that tends to prompt objections both at the EPO and UK IPO. When training to become a UK patent attorney, in my experience it is quite usual to practice drafting claim 1 using a combination of a few relevant structural features, something to define their relationship, and ending with some functional wording that defines what the purpose or result is. The functional type wording should ideally reveal or define the 'clever bit', i.e. the feature that would distinguish the claimed invention from whatever prior art turns out to be the closest. This doesn't always work though, because an examiner can find a closer piece of prior art than was known to the inventor at the time. However, when it does work it can result in a broader and potentially more useful patent claim. 

Because functional claiming can raise objections, it is always a good idea to provide clear fallback positions to more definite features so that the result to be achieved can instead be defined in terms of how the result is achieved if this becomes needed during prosecution. Examiners will often insist on this, particularly at the EPO (see e.g. F-IV 4.10 of the Guidelines for Examination). In the UK, functional claiming tends to be slightly more acceptable, being allowable so long as the specification provides "enough instruction for the skilled person to be able to achieve the desired result without embarking on a research programme" (MPP 14.72). It is therefore fairly common for UK drafted patent applications to have more free beer than applications drafted from a more continental perspective . However, given that the EPO is now considered the usual standard to aim for, it may be less common than it used to be. Examiners at the UK IPO, being more aware of practice emanating from the EPO, may also tend to look upon functional claiming less favourably than they might have done in the past. The practice remains common, particularly among the older elements of the UK patent profession. 

All that is an introduction to a recent decision (BL O/0369/26: Openfield) from the UK IPO regarding a UK patent application (GB2306083.3) defining an invention claimed partly in functional terms, and in which the functional part was the supposedly clever bit that distinguished it over the prior art. The latest version of claim 1 of the application reads as follows:

The claim defined a well logging tool of the type illustrated below (Figure 1 of the application), in which an articulated twin arm deployment arrangement would deploy by the arms hinging and extending away from the cylindrical body of the tool so that they then spanned the horizontal well bore. This enabled capacitive sensors along one of the arms to be positioned along the diameter of the bore to sense a level of water within the bore. The clever bit of the invention was to keep the capacitive sensors vertical as the arms were deployed, all other components of the claimed invention being already known. This bit, as shown in the highlighted part of claim 1 above, was defined purely in functional terms,  i.e. without actually defining how the capacitance sensors were kept vertically aligned. 

The examiner objected that the way the invention was claimed was unclear because it was defined by a result to be achieved and there was only one way the description showed how this would be done, which was by way of a pantographic mechanism (basically two hinged parallel bars). The claimed invention, in the examiner's view, was therefore not enabled across its whole scope (Biogen insufficiency, referring also to Novartis). The applicant's representative argued against this but didn't  manage to win the examiner over, resulting in the case coming before a hearing officer. 

The applicant's representative then argued before the hearing officer that there were other mechanisms discussed in the patent application, referring to the use of accelerometers, counterweights and pivots that could be used to keep the sensor elements vertical. While these were not actually disclosed in the application itself, the representative showed how such alternative mechanisms could work, referring to other patents and prior art documents. This appeared to persuade the hearing officer, who found that, while the specification defined only a single embodiment, the skilled person would be aware of various ways of implementing a mechanism to do the same thing. The skilled person would therefore be able to perform the invention over the whole scope of the claim without undue burden or effort, using their common general knowledge. The claims did not therefore need to be restricted to only the use of a pantographic mechanism. 

The lesson from this appears to be that, at least before the UK IPO, it is possible to impart common general knowledge to the skilled person by referencing material outside of the patent application itself. This does, however, appear to be a risky move because the more the skilled person is deemed to know, the less likely the claimed invention will be considered to be inventive. Indeed, the application has now been remitted to the examiner to consider the question of inventive step. Perhaps the applicant will manage to carefully tread the line between sufficiency on the one side and inventive step on the other but it looks to me like it could now go either way on inventive step.

Some Thoughts on G 1/24

A few months ago I attended an online seminar hosted by the EPO in which the question of interpretation of claim features was discussed. What was interesting about this was the clear difference between how the EPO Boards of Appeal interpret claim features compared to national courts. The difference was about whether the description of a patent should be used to interpret how broad a particular claim feature should be. If the views of an English judge, a Dutch judge and a member of the Enlarged Board of Appeal are anything to go by, the view from the EPO is that a broad claim feature should not be given a narrower interpretation based on what the description states, while national courts will tend to interpret a broad claim feature narrowly based on the description. 

Grok's idea of an Angora cat
(see Jacob LJ's comments here)

This difference in interpretation, while on the face of it perhaps surprising, make some sense when considering that the EPO Boards of Appeal can only determine questions of validity, while national courts determine infringement as well, although this does not fully explain it. If a broadly interpreted claim before the Boards of Appeal is found to be invalid, e.g. for lacking novelty or inventive step, it doesn't make any difference if a particular feature in the description provides a narrow interpretation that could make it valid unless that feature is put in the claim. This is similar to practice before the Examining Division or Opposition Division, where an explanation of what a claim feature means will usually result in that needing to be included in the claim wording. 

If the same claim is put before a national court, the judge will usually be assessing the claim features for infringement as well as for validity, so if the feature is instead interpreted narrowly this may still result in effectively the same outcome, i.e. the claim is only valid if interpreted narrowly as if the narrow interpretation were included in the claim itself. Infringement can then be assessed based on the narrow interpretation, which may result in a claim that is valid but not infringed. The question is whether this difference in interpretation matters. Should interpretation of claims be aligned between the EPO and national courts, or is a difference something that can be allowed to continue given that their roles are different? 

The seminar I mentioned only covered the question of interpretation of broad claim features, but it's also worth considering what would happen if a claim feature is instead interpreted narrowly on the face of the claim language alone but could (or perhaps should) be given a broader interpretation based on the description. The EPO's current way of dealing with this difficulty is to require applicants to ensure that the language of the description is in conformity with that of the claims, using Article 84 EPC as a (possibly flawed) justification for this. This approach is much contested, with applicants often finding it difficult to comply with EPO practice without introducing problematic amendments, which may themselves fall foul of other provisions such as added matter under Article 123(2) EPC. The Boards of Appeal have also disagreed over the past few years on whether such amendments are even required, with the latest contribution in T 56/21 coming down firmly on the side of no amendments being necessary at all. Practice at the EPO has nevertheless been evolving towards a more strict view of making the description be entirely consistent with the claims. The practice itself is, however, not always strictly enforced and there will be many granted patents that contain inconsistencies between what the claims state compared with what is stated in the description. 

The issue of claim interpretation is now one that is sufficiently important for questions to be raised to the Enlarged Board of Appeal, which was done in decision T 439/22. The issue in the decision under appeal relates to whether the term "gathered sheet" in claim 1 of the opposed patent should be interpreted narrowly according to how the skilled person would view it or if it should be given a broader meaning based on what the description stated. The Opposition Division rejected the opposition based on the term having a narrow meaning, while the opponent argued that it should be interpreted more broadly, which would result in it encompassing the prior art. The patent in question therefore stood or fell based on whether the description should be used to impart a broader meaning to an otherwise clear claim feature.

The questions now being raised to the Enlarged Board are the following:

1. Is Article 69(1), second sentence EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC to be applied to the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC?

2. May the description and figures be consulted when interpreting the claims to assess patentability and, if so, may this be done generally or only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation?

3. May a definition or similar information on a term used in the claims which is explicitly given in the description be disregarded when interpreting the claims to assess patentability and, if so, under what conditions?

On question 1, the issue of whether Article 69 EPC should be used by the EPO at all, or if this is just a guide for national courts, may be key to resolving any inconsistency in approach. Since courts across Europe, and now including the UPC, need to be aligned as far as possible with how they interpret granted patents for infringement as well as validity, even though Article 69 EPC is primarily concerned with interpretation for infringement, interpretation for validity at the EPO should ideally be in line with this. In general therefore, the principles in Article 69 may be relevant to patentability, but should not be a primary concern during examination when assessing patentability of an invention under Articles 52 to 57 EPC. As it turns out, T 56/21 has already decided on this specific point and concluded that Article 69 EPC should not be relevant when considering patentability during examination. Instead, Article 84 EPC should be the key requirement during examination, while Article 69 EPC should only be of concern when considering infringement. Following this approach, the answer to question 1 should be a clear no, because Article 84 should instead apply during examination. Personally I would have considered an answer that was more like a yes but with the proviso that Article 69 should not be a primary concern during examination (which appears to be what happens in practice anyway).

Question 2, which does relate to Article 84 rather than Article 69, may be answered by way of a hypothetical example. If, for example, a claim has wording that on the face of it would appear to be clear to the skilled person but the supporting description provides a broadening interpretation by way of a range of examples intended to be covered by the claim wording, it does not seems to me to be correct to take only the narrow wording of the claim and ignore the broader interpretation from the description because this would enable the applicant/proprietor to argue for a narrow interpretation to obtain grant or maintenance of the patent, following which they could argue for a broader interpretation for infringement (known as the 'Angora cat' problem). File wrapper estoppel would not be an appropriate counter to this, because this is not uniformly applied across Europe. The converse, however, should not be a problem because, if a term in a claim is broad and would clearly be understood as such by the skilled person but the description imparts an unambiguously narrower interpretation on the term, granting such a claim would not adversely affect third parties because any infringement issue is for the national (or UPC) courts to decide, i.e. whether such courts interpret the term for infringement broadly or narrowly. The answer to question 2 should therefore be that the description and figures should always be consulted when interpreting features in claims to assess patentability, particularly if these impart a broader scope to any features than would be apparent to the skilled person from the claim wording alone. Article 84 could be used to resolve this, because a narrow claim term that is given a broader meaning in the description could be seen as unclear due to the narrow meaning not being supported, which would require an amendment to be made either to the claims or to the description. 

On question 3, the answer could be found by considering what purpose the definition provides. Article 84 is often used to require that unclear terms in a claim for which there is a clarifying feature in the description need to be amended before grant to make them clear because the general view during examination is that the claim wording needs to be clear by itself. The claim wording may therefore need to be amended during examination to incorporate a definition from the description if it would be unclear otherwise. However, if the claim features are clear in themselves, a definition explicitly given in the description for a particular term used in the claims can only result in a narrower definition of the term so, following from the answer to question 2, can be disregarded for assessing patentability if the term, interpreted more broadly without the definition, is still patentable. If the claims are not patentable without the explicit definition, the definition (or something else) should be incorporated into the claims. The answer should therefore be that such a definition could be disregarded if the claim is clear by itself and still patentable, otherwise the definition may need to be incorporated into the claim. How this is done will depend on whether the situation is for an application undergoing examination, in which case a clarity objection can be raised and an amendment made as a result, or if the situation is for a patent during opposition, in which case clarity cannot be raised on the claims as granted. Instead, during opposition the claims should be interpreted in a way that can make sense to the skilled person and patentability assessed based on that, preferably without imparting a narrow definition from the description because this would again raise the Angora cat problem. If it turns out that the patent is invalid based on this assessment, it will then be up to the patentee to decide what amendments may be needed to make it patentable. 

The above are only a preliminary few thoughts from me on the questions, which could quite reasonably be answered differently. My mind is not yet set on the matter, so it would be interesting to see if anyone has any thoughts to contribute. 

The Invention is Defined by the Claims?

Every European Patent Attorney knows that EPO examiners have become more strict over the past few years in enforcing the requirement for the description of a patent application to be consistent with the claims. In previous years it was usually enough just to ensure that the summary section said something along the lines of "In accordance with the invention there is provided a widget according to the appended claims". This has gradually progressed to requiring any use of the words "invention" and "embodiment" throughout the entire description to be related to features that are actually within the scope of the claims. For some applications, particularly those coming from US priority applications, such objections can be very time consuming to deal with, typically requiring a detailed search through the description to see what example or embodiment actually falls within the claimed invention. It is  also often difficult to work out with any certainty whether particular examples do in fact fall within the scope of the claims.

The current version of the Guidelines for Examination, at section F-IV, 4.3, requires any inconsistency between the description and the claims to be avoided "if it may throw doubt on the extent of protection and therefore render the claim unclear or unsupported under Article 84, second sentence or, alternatively, render the claim objectionable under Article 84, first sentence". This section, which has been amended a few times over the past years, outlines various ways in which such inconsistencies may arise. 

As a reminder, Article 84 EPC states, "The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description". The first sentence simply defines that the invention is defined by the claims, which is uncontroversial, while the second sentence requires that there be some support from the description. How, though, does this translate into requiring that everything in the description is completely consistent with the claims?  The only decision cited in the Guidelines in support of this is T 1808/06, which states:

"Any disclosure in the description and/or drawings inconsistent with the amended subject-matter should normally be excised. Reference to embodiments no longer covered by amended claims must be deleted, unless these embodiments can reasonably be considered to be useful for highlighting specific aspects of the amended subject-matter. In such a case, the fact that an embodiment is not covered by the claims must be prominently stated" (point 2 of the reasons).

The Board in that case provided no reasoning as to why such amendments were required by Article 84. This single paragraph has nonetheless apparently caused practice at the EPO to become ever more strict. This has led to much frustration among attorneys, who are having to spend more of their time (and consequently their client's money) on combing through specifications to try to comply with the latest strict interpretation of the Guidelines. It does not help that how strict the Guidelines are interpreted tends to vary considerably from examiner to examiner. Complying has now become a game of seeing how far it is necessary to go to persuade a particular examiner that the amendments to the description will get the application over the line to be allowed. 

In 2018, all this clearly became a bit too much for one applicant, who decided to push back and allow their application to be refused by maintaining the words "one embodiment of the invention" in the description relating to features that, in the examiners' view, did not actually fall within the scope of the claims, which were otherwise allowable. The applicant appealed the decision and the Board of Appeal in T 1989/18 has recently decided in their favour. The reasons for the decision are brief and very much to the point, the key parts being points 4 to 7:

4. First and foremost, Article 84 EPC requires that the claims are clear, i.e. that they properly define and delimit the subject-matter for which protection is sought in understandable and unambiguous terms. Claims must be clear in themselves when being read with the normal skills including the knowledge about the prior art, but not including any knowledge derived from the description of the patent application or the amended patent (see e.g. decision T 454/89, Reasons, point 4.1 (vii)).

5. Article 84 EPC only mentions the description in the context of the additional requirement that it must support the claims. Under this requirement, the subject-matter of the claim must be taken from the description, it being inadmissible to claim any subject-matter which is not described. However, when assessing clarity, the description cannot be relied upon to resolve a clarity issue in a claim, nor can it give rise to any such issue if the definition of the subject-matter in a claim is clear per se. In particular, if the claims are clear in themselves and supported by the description, their clarity is not affected if the description contains subject-matter which is not claimed. (emphasis added)

6. When assessing clarity, Article 69 EPC is of no relevance since it is only concerned with the extent of protection conferred as one of the effects of an application or patent (chapter III of the EPC) whenever that extent is to be determined by whoever is competent to do so. Article 69 EPC is not by itself concerned with a requirement of the Convention to be met by an application or patent - in particular, unlike Article 84 EPC it is not concerned with the definition proper of the subject-matter sought to be protected by a claim. Moreover, even if it were possible, for the purpose of Article 84 EPC, to interpret the claims in the light of the description and drawings as provided for in Article 69 EPC in order to establish whether the conditions governing clarity have been satisfied, the board fails to see how that approach could lead to a lack of clarity of the claims (as opposed to a lack of clarity of the description) if the clear terms of the claims did not encompass subject-matter disclosed in the application or patent.

7. Thus, Article 84 EPC cannot serve as a legal basis for the refusal. 

It should be evident that this reasoning is in direct contradiction with the assertion in T 1808/06 (which is not referenced in the decision) regarding what is required to meet the requirements of Article 84 EPC. If the Guidelines were to follow the new decision instead, section F-IV 4.3 would clearly need to be deleted, because there is actually no requirement for any inconsistencies between the description and the claims to be avoided. This would of course be very good news for applicants and their attorneys, who would be able to get granted applications through the EPO system with less hassle and expense. 

Some may say that this could result in European patents being granted with more doubtful claim scope. Personally, however, I cannot see any realistic downside to this. Any arguments over what the claims actually cover can, if necessary, be resolved if they become relevant during post-grant proceedings, in the event a patent becomes important enough to be contested. I would therefore hope that the EPO will take the reasoning in T 1989/18 on board and change the Guidelines, particularly given that the decision the Guidelines currently rely on has no reasoning at all. Failing that, I can see the issue going up to the Enlarged Board fairly soon on a question from the President, which I am sure some will be lobbying for already, or perhaps another Board will want to follow T 1808/06 instead and refer questions that way. Either way, I think we should see some clarity emerging at last within the next year or two.

Free beer and covert viewing

When an invention is defined in a claim in terms of a result to be achieved, it is often termed a 'free beer' claim, in the sense that the invention would be a good thing but the claim does not define how it is actually achieved.  When the patent specification as a whole does describe at least one way of achieving the result, the problem is one of a lack of clarity, rather than sufficiency, and can be resolved by amending the claims so that they define something the applicant has contributed to the art rather than a mere wish list of features.  At the European patent office, any free beer is typically objected to (even during Oktoberfest), and examiners will tend to require more technical features to be imported.  At the UK patent office, however, at least small amounts of free beer are more typically allowable, usually as part of a functional statement at the end of a claim, although in some cases more extensive functional language can be allowed.  Too much, however, and a UK examiner will object on grounds of lack of clarity. This was the case for application GB0904563.4 (previously published as WO 2008/035107), which has led to to the recent decision BL O/243/11, the applicant being The Secretary of State for Defence. Claim 1 of the application as-published read as follows:

1. A lens arrangement, suitable for looking through pinholes comprising a converging eyepiece type lens apparatus used without a conventional objective lens and arranged such that the lens arrangement projects a "virtual" aperture to a point in object space beyond a first end of the lens arrangement, said first end being the end of the lens arrangement closest to the subject being viewed, such that the virtual aperture limits the pencil of rays passing into the lens arrangement, wherein the lens arrangement contains no integral physical lens stop.

There are a number of obvious problems with this claim, one of which is clarity.  Following rounds of correspondence with the examiner, the claim was amended to read:

1. A lens arrangement, adapted for looking through a remote pinhole comprising a plurality of lens elements designed and configured to operate without the presence of an integral physical lens stop, such that in use the lens arrangement defines a “virtual aperture” in a pre-determined plane in object space remote from a first end of the lens arrangement, said first end being the end of the lens arrangement closest to the subject being viewed, wherein the virtual aperture acts as a remote entrance pupil in object space beyond the first end of the lens arrangement and defines a pencil of rays that passes through the lens arrangement.

The examiner considered that, even after amendment, there was too much free beer in the claims. He maintained objections that the claimed invention was unclear and was not supported by the description because the claims defined the invention in terms of the result to be achieved (i.e. a stopless lens) rather than the technical features of the lens arrangement that achieved the result, and the embodiments described did not support such a broad claim. The applicant did not manage to overcome the objections, and the matter went before a hearing officer at the IPO.

Before the hearing officer the applicant argued that, following the decision in No-Fume v Frank Pitchford & Co. Ltd. 52 RPC 231, there were many ways the invention could be implemented and the claims should not need to be limited to only one set of specific parameters. According to the applicant, conventional thinking was that a physical lens stop would be required. The lens arrangement of the invention made this redundant through the creation of a virtual aperture in the object space of the arrangement. The hearing officer accepted that the meaning of the term "virtual aperture" was sufficiently clear, but then went on to point out that the application outlined the features of the invention as being equivalent to using a conventional converging telescope eyepiece in reverse (as for example in the above figure).

As a result, the apparatus claims did not define the invention sufficiently to avoid reading directly on to an already known telescope eyepiece. The fact that the claims indicated that the lens arrangement was adapted for looking through a remote pinhole only specified how the lens arrangement could be used in practice, but did not distinguish the arrangement over a conventional telescope eyepiece. Specifying that the arrangement was designed and configured to provide the desired effect would, following Kirin-Amgen, only be allowable if the product itself was novel and inventive. The claimed invention did not therefore meet the requirements of section 14(5)(a) and (b) in that it did not define the invention and was not clear.

Although the claims in the form discussed were not allowable, the hearing officer allowed the applicant another opportunity to submit further amendments by extending the compliance period. As of today, it looks (thanks to the IPO's Ipsum file inspection service) like the application is still not quite finished.

As far as I can see, the lesson to be learned is to be careful with relying on functional definitions unless you have plenty of backup definitions that are more grounded in technical features of the invention.  It is probably not enough to have a myriad differently defined specific embodiments unless you have some overarching technical definitions to tie at least some of them together because the only option you might end up with could be a single narrow one. It is easy with hindsight to see this being a problem; the clever trick is to spot it in advance.