Cloudy with a chance of patents: Vaping device prompts Enlarged Board of Appeal referral on using description to interpret claims

In oral proceedings held on 10 April 2024, the EPO Technical Board of Appeal 3.2.01 in T 0439/22 confirmed it will ask the Enlarged Board of Appeal whether the content in the description can be used to interpret the claims.

The appeal concerns a decision by the opposition division to maintain European Patent No. 3076804 owned by Philip Morris related to a cartridge for a smoking device. The key issue in the pending appeal proceedings is whether a “spirally wound” material in the prior art anticipates the “gathered” material of the claim. 

The description provided a very broad definition of “gathered” encompassing any way of bringing together the material, such as by spirally winding in the prior art. The opponent argued for a broad interpretation of the term based on this definition. According to the proprietor, the term “gathered” has a well-established, and narrower meaning in the tobacco industry and therefore, the description should not be consulted for interpreting the claim.

The Opposition Division took the approach that the description should only be consulted for interpreting subject-matter in the claims that is otherwise unclear and accordingly based its decision on the narrower interpretation. 

The Board of Appeal noted divergent case law on whether the description can be used to interpret prima facie clear claim language and on the broader question of whether the description should be consulted in EPO proceedings pursuant to Article 69 EPC and/or Article 84 EPC. On the one hand, there is a line of case law, exemplified by T 0169/20, according to which the description should only be taken into account in case of ambiguity, whereas if the skilled person considers the wording of a claim to be clear at face value, then consulting the description for interpretation is deemed unnecessary and unjustified. This aligns with the EPO’s classical approach based on the first sentence of Article 84 EPC that the claims shall define the matter for which protection is sought. Conversely, in other decisions, such as T 1473/19 the Board of Appeal found that in proceedings before the EPO the claims of a patent should be interpreted taking into account the drawings and the description, pursuant to Article 69 EPC, even if the claims themselves are deemed clear. 

According to the minutes of the oral proceedings in T 0439/22, the interlocutory decision, including the referred questions, was expected on June 10, 2024, but its despatch has been postponed to July 1, 2024. It will then have to be seen whether the Enlarged Board of Appeal will accept the referral, which would most likely be given case number G1/24.

For sure, a decision on this issue could have far-reaching consequences for patent drafting, examination, opposition and appeal proceedings before the EPO.

Notably, the question of interpretation of the claims in view of the description may bear relevance to the ongoing controversy whether the EPO’s strict approach of requiring amendments of the description to align with the allowed claims prior to grant is necessary and justified.  In connection with this discussion on description amendments, we are currently awaiting confirmation from the Board of Appeal regarding a further referral to the Enlarged Board in T 0056/21 pending before Board 3.3.04 (see also our previous reports on description amendments: “Description Amendments: From a lenient approach to a heavy burden for applicants and their representatives” and “Potential Referral to Enlarged Board of Appeal on the Requirement of Description Amendments: Is there a legal basis?”).

The present referral on claim interpretation also has the potential to align patent law practices across Europe. Presently, the EPO’s classical approach stands in sharp contrast to the approach taken by national courts, particularly in infringement cases, and the Unified Patent Court (UPC). Notably, the Court of Appeal of the UPC emphasised in one of its first rulings (UPC_CoA_335/2023) that the supporting role of the description and the drawings is essential for the interpretation of the claims when assessing both infringement and validity. It stressed that the description should not be used only in exceptional cases. We hope that the EPO and the UPC converge on a uniform approach to claim interpretation to avoid conflicting decisions on validity from these two prominent European authorities.

We continue to watch these referrals with great interest. If you have any questions, we would be happy to help. Feel free to reach out to our European Patent Attorneys via email on  info@dcp-ip.com.