Originally posted on IPKat.
The decision in T 439/22 takes us back to our old friend, the definition of “gathered”. Applying G 1/24, the Board of Appeal in the case is the second to find that a definition in the description can be used to broaden the scope of the claims (compare T 1849/23). The Board of Appeal in this case also goes one step further and, contrary to all previous EPO interpretations of G1/24, reasoned that description definitions can also narrow the claims. Even more significantly, the Board of Appeal also found that deleting the definition would unallowably extend protection under Article 123(3) EPC, pouring lighter fluid on the description amendment debate.
G1/24 and claim interpretation case catch-up
The appeal in T 439/22 concerned the Philip Morris patent EP 3076804, relating to a heat-not-burn device. The “aerosol-forming substrate” (e.g. tobacco) in the device was defined as comprising a “gathered” sheet of aerosol-forming material. The Opposition Division (OD) rejected the opposition, finding the invention novel over the cited prior art. The cited prior art disclosed a tobacco sheet that was spirally wound. The OD found that a gathered sheet would normally be understood as folded and convoluted and specifically disregarded a broader definition found in the patent description. This definition stated that the term “gathered” denoted that the sheet is “convoluted, folded, or otherwise compressed or constricted substantially transversely to the cylindrical axis of the rod”. Under this definition, the term would have encompassed the prior art.
On appeal, the Board of Appeal thus had to determine if the spirally wound tobacco sheet in the prior art anticipated the gathered sheet of claim 1. The Opponent argued that the broad definition in the description could not be ignored and clearly encompassed the wound sheet of the prior art. The Patentee submitted that the wording of the claims should have primacy and that the term gathered should be interpreted according to its common technical meaning in the tobacco industry, which excludes spirally wound sheets.
The subsequent referral G 1/24 aimed to resolve the question of claim interpretation in view of the description. The EBA ordered that the description should always be consulted. However, as subsequent interpretations of G1/24 from the Boards of Appeal have found, “consulting” definitions in the description does not require the definitions to be actually “used” to interpret the claims. Indeed, up until the present case, the Boards of Appeal have universally found that the G 1/24 order to “always consult” the description does not require adopting a restrictive definition that narrows otherwise clear claim language (Evolve Insights). Notably however, the Board of Appeal in T 1849/23 found that the description can be used to broaden the meaning of a claim beyond its literal reading. The present case is a second test of what G1/24 means for broadening as opposed to narrowing definitions.
Interpretation of the claims (G 1/24 and Article 69 EPC)
The Board of Appeal in T 439/22 found that the solely claim-based interpretation adopted by the Opposition Division was incorrect in light of G 1/24. The Board of Appeal particularly emphasised that claim interpretation is a unitary process involving both the claims and the description. In its reasoning, the Board of Appeal stated:
“in interpreting the language used in a claim, ‘consulting’, ‘referring to’, ‘using’ and ‘taking into account’ the description and figures are synonyms for the act of deriving the necessary information from the patent as a whole to understand what meaning a person skilled in the art would attribute to the terms used in the claim“.
Interestingly, the Board of Appeal also explicitly disagrees with the reasoning in all of the Board of Appeal decisions relating to narrowing definitions that found that “consulting” does not equate to use:
“The Board sees no reason to assume that the expression “to consult” used in the order of the Enlarged Board should be given a meaning different from the expression “to use” found in Article 69 EPC. The term “consulted” is used by the referring Board itself in the second question referred to the Enlarged Board and was also previously widely used in the relevant case law (see e.g. T 400/94, Reasons 3.3.2; T 860/08, Reasons 1.2; T 2284/09, Reasons 2.3; T 1964/10, Reasons 3.2; T 2758/18, Reasons 3.9; T 1735/19, Reasons 2.3)” (r. 2.3)
Compare, for example, the following Board of Appeal decisions:
- T 1561/23: “G 1/24 does not even explicitly require that the definition of a term from the description must be used for the interpretation of a claim” (r. 2.10, machine translation from the German) (Evolve Insights)
- T 2027/23: “a claim should not be interpreted, based on features set out in embodiments of an invention, as having a meaning narrower than the wording of the claim as understood by the person skilled in the art” (r. 3.5.6)
- T 412/24: “a sensible claim construction cannot be reinterpreted on account of the description being ‘consulted’ or ‘referred to'” (r. 3.1.1)
- T 2034/23: “consultation of the description does not, however, mean that claimed features must always be construed as narrowly as any specific embodiments of the invention found in the description” (r. 3.6.2).
In the present case, the Board of Appeal, by contrast, found no reason to disregard the explicit definition provided by the Patentee in the specification. The Board of Appeal was therefore convinced that the spirally wound tobacco sheet of the cited prior art equated to the gathered sheet of claim 1 when interpreted according to the description. The Board of Appeal thus concluded that the subject matter of claim 1 as granted lacked novelty over the prior art.
Broadening, narrowing or contradictory?
We therefore have a second clear interpretation of G 1/24 from the Boards of Appeal that broadening definitions in the specification can be used to broaden the scope of the claim language. We also have divergence amongst the Boards of Appeal as to the correct interpretation of “consult”. Instead, the Board of Appeal in the present case makes a conscious effort to align with the UPC (r. 2.3). However, significantly, the Board of Appeal in this case also moved away from the language of contradictory definitions, reasoning that “the definition of “gathered” given in paragraph [0035] does not contradict but rather encompasses the commonly accepted meaning of the term “gathered sheet”, namely a sheet that is folded and convoluted to occupy a three-dimensional space” (r. 3.5.2). In other words, for the Board of Appeal, the description definition just added to the interpretative milieu in which the skilled person would understand the claims in view of the disclosure as a whole. The question therefore remains as to the effect of a clearly contradictory definition. Interestingly, a recent Board of Appeal decision found that contradictory definitions can both lead to a lack of clarity and sufficiency (T 878/23, Evolve Insights).
Practical consequences
To be safe, therefore, the best way to broaden or narrow a claim has always been through use of the claim language itself, and not via the backdoor of broad description definitions (Evolve Insights). This principle holds true for other jurisdictions outside of Europe, including the US, where narrowing definitions may also be read into the claims (Evolve Insights). Why the patentee in the present case chose to include the definition of “gathered” is lost to the mists of time, as it doesn’t appear to serve much purpose in the case and appears quite academic as a linguistic dispute. The Board of Appeal interestingly notes that “the fact that the patent defines this term in the description is a clear indication that, at least for the patent proprietor when drafting the application, ‘gathered sheet’ did not have a meaning that is so commonly accepted and well established that each further explanation would be superfluous” (r.3.5.1). More reasons, if any were needed, to strike out unnecessary definitions. It also saves you on excess page fees.
Description amendments extending protection
The issue of claim interpretation is of course highly related to the controversial topic of description amendments, now subject to its own referral in G 1/25 (Evolve Insights). The present case adds an interesting flavour to the debate.
Faced with the possibility of revocation of the main request, the Patentee filed an auxiliary request where the paragraph containing the offending definition was deleted from the description. The deleted paragraph read as follows:
“As used herein, the term ‘gathered’ denotes that the sheet of tobacco material is convoluted, folded, or otherwise compressed or constricted substantially transversely to the cylindrical axis of the rod.”
The Opponent argued that this amendment altered the interpretation of the claims and extended the scope of protection by removing language that narrowed the meaning of the claims. The Board of Appeal was not persuaded by the Patentee’s argument in response that the rod-shaped geometry specified in the paragraph was implicit in the claims. The Board of Appeal particularly found that “Claim 1 contains neither explicit nor implicit features that necessarily limited the claimed aerosol-forming article to a rod-shaped configuration“. Without the definition, the Board of Appeal reasoned, the claim no longer required the tobacco sheet to be “compressed or constricted substantially transversely to the cylindrical axis of the rod”. Consequently, the claim could encompass articles that are not rod-shaped or sheets folded not transversely but along the axis, like a bellows. In other words, the Board of Appeal also considered it acceptable to use the description to narrow the meaning of the claims, contrary to all other Board of Appeal decisions to interpret G 1/24 thus far.
In its reasoning, the Board of Appeal further explained that the “skilled person will read terms in the claim in the sense of the definition, taking into account both the broadening and limiting aspects“. By deleting the definition, the Board of Appeal was of the view that Patentee thus improperly sought to consider only the broadening aspects while disregarding the limiting ones. As such, the Board of Appeal reasoned, this removal of geometric constraints resulted in a scope of protection wider than that conferred by the patent as granted. The auxiliary request was therefore found to violate Article 123(3) EPC.
Analysis
The present decision therefore makes the first clear link (of which we are aware) in EPO case law between description amendments and added matter (other than the suggestion in T 471/20 regarding prior art summaries). Had the Patentee amended the description before grant to remove the offending definition on the basis that it was not aligned with the granted claims, the patent would have been at risk of invalidity for added matter. Worse, the Patentee would have been stuck in the added matter inescapable trap, with no possible amendments available to rescue the patent.
The Board of Appeal decision in this case is, however, in our view, out of step with almost all of the Board of Appeal decisions to interpret G 1/24 so far. The Board of Appeal in this case considered the language in the description highly influential for claim interpretation, and having both a narrowing and broadening effect on the claim scope (which admittedly takes some getting your head around). Such an interpretation of G 1/24 has radical and unwelcome consequences for the potential impact of description amendments on claim interpretation post-grant.
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).
