As we have previously reported, in last year's decision G 1/24, the Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) confirmed that the description and drawings of a patent specification should always be taken into consideration when determining the scope of the claims for the purposes of assessing patentability (novelty and inventive step).
(And, as also reported here, in pending referral G 1/25, the EBA is currently being asked to decide whether there is any legal basis in the European Patent Convention (EPC) for the EPO to require the description of a patent or patent application to be amended so as to be in line with amendments made to the claims. More on that later...)
The EPO Board of Appeal that referred the question in G 1/24 has now applied that EBA decision to the facts of the originating appeal case (T 0439/22), and issued its decision. This is an appeal from a decision of the Opposition Division regarding European patent number 3076804, relating to a vaping device.
In the Opposition, the validity of the patent essentially boiled down to the meaning of the term "gathered" in claim 1 of the patent. Thus, a requirement of claim 1 of the patent was that the claimed device comprises an "aerosol-forming substrate" which "comprises a gathered sheet of aerosol-forming material". The Opposition Division interpreted this term narrowly as meaning a sheet which is "folded and convoluted to occupy a tridimensional space", ignoring a definition of the term given in paragraph [0035] of the patent, which if applied to claim 1 would have covered a prior art device and invalidated the patent. The Opposition Division held that recourse to the description for claim interpretation was only justified in exceptional circumstances, namely where the claimed subject-matter and/or its technical context required clarification: where the wording of a claim was clear to the skilled person, as was the case for the term "gathered sheet" of claim 1, reliance on the description was neither necessary nor allowed. Thus, the narrower definition was the correct one, the prior art device fell outside claim 1, and the invention did not lack novelty.
The Opponent appealed the decision: in its view, the paragraph [0035] definition should be applied to claim 1, since it made technical sense, did not contradict any established meaning in the art and clearly encompassed the wound tobacco sheet disclosed in the prior art. The Board of Appeal referred the question to the EBA, who decided the matter in G 1/24.
Applying the EBA decision from G 1/24, the Board of Appeal in T 0439/22 has now reversed the finding of the Opposition Division, and found the patent invalid for a lack of novelty. The Board thus consulted the description of the patent as required, and applied the definition of paragraph [0035] to claim 1, which thus covered the prior art and lacked novelty.
The Board was not persuaded by the Proprietor's interpretation of G 1/24 as requiring a two-step approach to claim interpretation: a first step of assessing the meaning of the claim terms "per se", i.e. in isolation, and a second step of "consulting" or "considering" the description having already formed an initial construction of the claim meaning. The Proprietor argued that if paragraph [0035] was in any way inconsistent with the understanding of a skilled person from reading the claims, then the skilled person would stick with their initial understanding derived from the claims alone.
The Opponent argued that this approach is a clear misinterpretation of the G 1/24 decision, and that paragraph [0035] could not simply be disregarded. The Board agreed. Thus, the Board disagreed with the Proprietor that claim interpretation involves two separate, consecutive steps, taking instead a unitary, "holistic" approach. Critically, the Board found that a skilled person could not simply ignore the definition given in paragraph [0035] and interpret the claims differently.
Intriguingly, the Proprietor submitted an Auxiliary Request, the sole amendment of which was the deletion of paragraph [0035] from the description. The Opponent argued that the amendment was unallowable, because deletion of the definition provided in paragraph [0035] would extend the scope of the patent compared to that as granted, contrary to Article 123(3) EPC: with paragraph [0035] deleted, the term "gathered sheet" would cover arrangements which were not covered by the patent as granted. The Board agreed, and refused the Auxiliary Request. Patent revoked.
The refusal of the Auxiliary Request in this high-profile case is likely to add fuel to the fire surrounding referral G 1/25, and support the arguments of those practitioners who view amending the description in line with the claims to be not only unnecessary, but (as the Proprietor found in T 0439/22) perilous.
