While the legislative work on the unified EU patent system has not
progressed recently, and there has been no sensational news from the
EPO, there have been a few recent decisions of the boards of appeal
dealing with the interpretation of claims in EPO proceedings. More
specifically, the question of whether and to what extent the description
may be used to interpret the claims.
The chemical boards of appeal have developed a consistent practice
over the years, according to which it is not legitimate to read into the
claims features appearing only in the description and then relying on
such features to provide a distinction over prior art. Relying on
features not appearing in the claims would, in the words of T 881/01,
not be to interpret claims but to rewrite them. A rather recent
decision, which has received a bit of attention, is T 197/10, according
to which the description is not to be used for interpreting the terms of
the claims, if the claims are concise and unambiguous. The decision
leaves open the question of what to do when the claims are ambiguous.
Another line of reasoning has been developed by some mechanical and
electrical boards of appeal, according to which terms used in patent
documents should be given their normal meaning in the relevant art,
unless the description gives the terms a special meaning. According to T
1321/04 the patent document may be its own dictionary, and if a special
meaning can be derived from the patent document, only this meaning is
decisive. In a rather recent decision, T 443/11, the board of appeal
notes that "it is established case law...that claims should be
interpreted in the manner that they would be understood by a person
skilled in the art" and comes to the conclusion that a literal
interpretation is not appropriate in the case at stake.
In summary, there seems to be a need for future decisions to
elucidate under which circumstances – if any – it would be legitimate to
rely on the description for arriving at a limited interpretation of the
terms of the claims. Meanwhile, applicants and patentees remain
well-advised drafting clear, concise and unambiguous claims.
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| Jakob Pade Frederiksen |
Inspicos A/S
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