EPO case confirms how patentability of inventions should be assessed

The decision of the Enlarged Board of Appeal of the European Patent Office (EPO) – which it said addressed “a point of law of fundamental importance” and would have wide relevance – is “a win for the patent system” and provides for harmonisation and clarity on an area of patent law that had been uncertain, said patent law expert Kristina Cornish of Pinsent Masons.

How patent claims are worded is important because they determine whether the invention is considered to meet the legal tests for obtaining patent protection – including whether it is new, not obvious, sufficiently described and has an industrial application.

In patent applications, patent claims are supplemented by patent descriptions, which provide more detailed information about the invention, how it works, and the problem it is supposed to solve. Often, patent claims and patent descriptions are accompanied by drawings that are designed to offer a visual aid to those seeking to understand the invention.

The Enlarged Board of Appeal considered the extent to which each of those three elements – patent claims, descriptions and drawings – are to be factored into assessments of an invention’s patentability under the European Patent Convention (EPC). The Board considered the matter in a case involving a dispute over the patentability of an item that forms part of a vaping device. It was asked to rule on the matter by a Technical Board of Appeal of the EPO, amidst its uncertainty over which rules and case law should guide how patentability is assessed.

In the case of European patents, the rules relating to patentability are set out in articles 52 to 57 of the EPC. However, the Technical Board of Appeal was unsure what other rules are relevant to how those articles should be interpreted, highlighting “diverging case law” on the issue. It said some case law suggested the relevant rules are set out in article 69 of the EPC, which concerns the extent of protection, and an associated protocol that provides for the interpretation of article 69(1), but that other case law suggested it is article 84 of the EPC that provides the relevant guidance for the purposes of applying articles 52 to 57.

Article 69(1) of the EPC states: “the extent of the protection conferred by a European patent or a European patent application shall be determined by the claims”. It further states, however, that: “nevertheless, the description and drawings shall be used to interpret the claims”.

The protocol that provides for the interpretation of article 69(1) states: “Article 69  should not be interpreted as meaning that the extent of the protection conferred by a European patent is to be understood as that defined by the 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. Nor should it be taken to mean that the claims serve only as a guideline and that the actual 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. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties.”

Article 84 of the EPC states: “the claims shall define the matter for which protection is sought” and that “they shall be clear and concise and be supported by the description”.

In its decision (12-page / 388KB PDF), the Enlarged Board of Appeal said that “there is no clear legal basis, in terms of an article of the EPC, for claim interpretation when assessing patentability”.

The Enlarged Board of Appeal considered it a settled point as part of the case law that the patent claims were “the starting point and the basis for assessing the patentability of an invention under Articles 52 to 57 [of the] EPC”. However, it rejected the notion that the patent description and drawings were only relevant to that assessment “if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation”, holding that the “description and drawings shall always be consulted to interpret the claims when assessing the patentability of an invention”.

Cornish said: “The Enlarged Board of Appeal rejected the case law of the Technical Boards of Appeal that sees no need to refer to the descriptions and drawings when interpreting a claim, unless the claim is unclear or ambiguous. This case law was found to be contrary to the wording and principles of article 69 of the EPC. It was also found contrary to the practice of the national courts of EPC states and to the practice of the Unified Patent Court.”

“It was interesting and progressive of the Enlarged Board of Appeal to refer to the harmonisation philosophy behind the EPC and it noted that the case law of the UPC Court of Appeal on claim interpretation appeared to be consistent with its conclusions,” she said.