Originally posted on IPKat.
Following the decision of the EBA that the description should always be “consulted” for claim interpretation, the Boards of Appeal have struggled to find a uniform approach regarding what “consulted” actually means. Now the EBA is being asked to clarify whether description definitions can save a claim from an added matter attack.
Legal background: Claim interpretation and added matter
Under Article 123(2) EPC a European patent application or patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed. The assessment of added matter relies on the very strict test of whether the amendment is directly and unambiguously derivable from the original application (the gold-standard test). This assessment first requires interpreting the claims, which is where G1/24 comes in. In G1/24 the EBA established that the description and drawings shall always be consulted to interpret the claims. The question then becomes whether consulting the description can save you and/or put in an added matter trap.
The relevance of G1/24 to added matter has been clear from the start, given much of the Board of Appeal case law cited in G1/24 concerned added matter, not least the infamous catastrophic comma loss cases (Evolve Insights). In these cases, the loss of a single comma from the claims was considered to add matter, despite the claims consequently being out of step with the entirety of the rest of the disclosure.
Case background
The case concerned an appeal against the decision of the Opposition Division to maintain ArcelorMittal’s European patent EP3587104 B1 (Coated Steel Strips) in amended form. The patent related to a pre-coated steel strip. Both the Patentee and the Opponent POSCO appealed the decision. The key issue in dispute was whether claim 1 added matter. Claim 1 specified that the base steel comprised various components by weight and further required that the ratio of titanium to nitrogen was in excess of 3.42.
The Opponent argued that because the claim did not specify the units for this ratio it encompassed other ratios such as a molar ratio which were not disclosed in the application as filed. The Patentee submitted that the skilled person reading the claim in context and consulting the description would understand that the ratio referred exclusively to a weight ratio. The central conflict was therefore whether the description could be used to restrict the interpretation of the claim to a weight ratio and thereby avoid an added matter objection under Article 123(2) EPC.
Three approaches to claim interpretation (Article 123(2) EPC)
The Opponent argued on appeal that the ratio feature was not limited to a weight ratio but was generalised by the omission of units. The Patentee submitted that the use of weight percent was implicit and supported by the description. In its review of the issue the Board of Appeal identified three divergent approaches in recent case law regarding the application of G1/24 to added matter.
Under the first approach the description is consulted only to define the skilled person and their common general knowledge. The Board of Appeal noted that under this approach “the person skilled in the art is not able to determine from the wording of claim 1 which kind of ratio is referred to and would assume that a molar ratio could also be meant. According to this first approach, this possibility also needs to be assessed but has no basis in the original application(s)” (r. 3.1). This interpretation would lead to a finding of added matter.
The second approach holds that the patent specification cannot be used to broaden or limit the claims. Under this view it is unwarranted to interpret a feature in a purposely restricted manner in view of the description. The Board of Appeal reasoned that interpreting the open ratio as a weight ratio would constitute a restriction. Because the broader unitless ratio was not disclosed in the application as filed this approach would also result in the claim violating Article 123(2) EPC.
The third approach adopts a holistic view permitting the broadening or narrowing of the interpretation based on the patent specification as a whole. This appears to be the approach adopted by the UPC. Following this approach the Board of Appeal found that the ratio was only mentioned in the context of a weight ratio in the patent. Therefore it would be reasonable to conclude that the claim relates exclusively to a weight ratio. This interpretation would satisfy the requirements of Article 123(2) EPC. Given these divergent outcomes the Board of Appeal concluded that a referral to the EBA was necessary.
Admissibility of the referral (Article 112(1) EPC)
In its interlocutory decision, the Board of Appeal then considered whether the referral was procedurally admissible. Previous case law has established a strict test requiring that a referral is only admissible if the Board of Appeal has concluded that the patent would be maintained despite all other grounds for opposition (T0116/18). The Board of Appeal in the present case departed from this strict approach finding it impractical and inefficient. The Board of Appeal stated that “An excessively formalistic approach could otherwise lead Boards to structure their proceedings in an impractical and inefficient manner examining every other issue before addressing the most straightforward one” (r. 4.4.2). The Board of Appeal preferred a less stringent test concluding that it is sufficient to demonstrate that the questions originate in the context of the case and that answering them is required when dealing with the case in a procedurally reasonable way. The Board of Appeal therefore also referred a question regarding the admissibility criteria to the EBA.
However, when a Board of Appeal has to devote so much of their referral to arguing for its admissibility, there is clearly a risk that the EBA will reject it outright.
The referred questions
The questions referred to the Enlarged Board of Appeal are therefore as follows:
1. May a decision be considered to be “required” for the purposes of Article 112(1) EPC, if the referring Board demonstrates that the point of law in question arises out of the context of the case pending before it and, in the circumstances of the proceedings, it is reasonable for the Board to examine it and decide on it next?
2 (a) Does the fact that the claims are the starting point and the basis for assessing the patentability of an invention generally preclude a feature which is only disclosed in the description or the drawings of a patent from being read into the meaning of a granted claim, in particular if this leads to a restrictive reading of terms used in the claim?
2 (b) If the answer to question 2(a) is no: is claim interpretation the result of both reading the claims and consulting the description and drawings as a unitary process and does the claim being the starting point and the basis for assessing the patentability rule out only those interpretations which can be derived from the patent as a whole but would clearly contradict the general technical understanding of the terms used in the claim?
3(a) When assessing compliance with Article 123 (2) EPC, must a term used in a claim be assessed against all interpretations that make technical sense to the skilled reader on the basis of the claim alone?
3 (b) If the answer to question 3(a) is no: is it sufficient that only the interpretations of the subject-matter of the claim established against the background of the patent specification as a whole are directly and unambiguously derivable from the application as filed?
Analysis
It now remains to be seen whether the EBA will accept this referral. Will this new referral join G1/25 (description amendments) as a G1/24 spin-off? By accepting this referral the EBA would be implicitly accepting that its reasoning in G1/24, ironically, left much to interpretation. Arguably, this new referral is a consequence of the Board of Appeal’s unwillingness to follow what many commentators initially thought was a clear direction from the EBA in G1/24 to use the description to interpret the claims (not merely consult and ignore). Further thoughts and analysis to follow.
Author: Rose Hughes
Rose is a biotech and pharmaceutical patent specialist with over a decade of experience in intellectual property. Rose is a patent attorney at Evolve, where she leverages our unique fractional in-house model to provide clients with deep patent law expertise combined with the strategic commercial oversight typically associated with senior in-house counsel.
With a PhD in Immunology from UCL, Rose applies her technical background to complex innovations in biologics, cell and gene therapies, and the rapidly emerging field of AI-assisted drug development. Previously, Rose held the role of Director. Patents at AstraZeneca, where she was responsible for global IP portfolios and IP strategy at every stage of the pharmaceutical pipeline, from platform development and on-market commercialization to SPCs and patent term extensions.
A recognized thought leader in the field, Rose has been a regular contributor to IPKat since 2018, offering practical insights into European patent law developments. She is also a frequent speaker on the epi podcast, a guest lecturer for the Brunel University IP law Postgrad Certificate, and a contributing author to published books A User’s Guide to Intellectual Property in Life Sciences (2021) and Developments and Directions in Intellectual Property Law (2023).
