The European Patent Office’s Board of Appeal 3.3.05 has now made the anticipated referral to the Enlarged Board of Appeal (EBA) concerning the application of claim interpretation to the assessment of added subject matter. The referral is now pending as G1/26 – “Coated steel strips”.
Background
The referral (in T0873/24) follows the EBA’s decision in G1/24, which held that the description and drawings shall always be consulted when interpreting claims for the assessment of patentability. G1/24 did not explicitly address interpretation of the claims when assessing added subject matter (governed under Articles 123(2) and 76(1) EPC).
The referral
The questions referred by the Board are 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?
The case
In the case underlying the referral, claim 1 relates to a pre-coated steel strip and defines a titanium to nitrogen ratio, but without reciting whether the ratio is a weight ratio or a molar ratio (“wherein the ratio of titanium to nitrogen is in excess of 3.42”). The ratio could be interpreted as (i) a weight ratio, or (ii) a term encompassing either a molar ratio or weight ratio. If the ratio is interpreted as (i) a weight ratio, then the Board considers the subject matter to comply with Article 123(2) EPC and not contain added matter. However, if the ratio is interpreted as (ii) a term encompassing either a molar ratio or weight ratio, then the Board considers the subject matter to contain added matter contrary to Article 123(2) EPC.
The Board has taken the view that the extent to which the description is consulted will determine how claim 1 is interpreted (i.e. whether interpretation (i) or (ii) applies) and, therefore, the outcome of the added matter assessment. The Board discusses the different extents to which the description and drawings could be consulted, taking into account the G1/24 principle: “The claims are the starting point and the basis for assessing the patentability of an invention.” The Board considers two matters unresolved:
(I) The extent to which this principle from G1/24 limits the consideration of the content of the description and drawings when interpreting the claim.
(II) When considering added matter, which of the conceivable interpretations of a claim need to be disclosed in the application as filed.
In view of (I), the Board asks questions 2a and 2b (set out above). 2a asks whether generally a feature is precluded from being imported into the interpretation of the claim on the basis that the feature is only recited in the description and drawings (such as the weight ratio in the present case). If the answer to 2a is ‘no’, in question 2b the Board appears to be trying to establish whether the assessment of claim interpretation should take a more holistic approach, i.e. taking account of the claims and description/drawings as a unitary process and trying to derive from the patent as a whole what meaning should be given to the terms in the claims. The Board also asks whether possible interpretations can only be ruled out if they would clearly contradict the general technical understanding of the claim language.
Overall, the Board is trying to establish whether the weight ratio discussed in the description should be imported into the interpretation of claim 1.
In view of (II) above, the Board asks whether the assessment of added matter should take account of every technically reasonable meaning that could be attributed to the claim language (question 3a), or whether it is sufficient to assess only the interpretation of the claim established by taking the patent specification as a whole (question 3b).
Procedural point
Question 1 (set out above) does not concern claim interpretation and, instead, relates to a procedural point regarding when a Board is permitted to make referrals to the EBA. Under Article 112(1) EPC, a Board can refer questions to the EBA if the Board considers that a decision is required in order to ensure uniform application of the law, or if a point of law of fundamental importance arises. The Board in the present case is seeking clarity on what is meant by “required”.
In some previous case law, whether a decision was “required” was only considered met if it was known that the patent would be maintained after all the other matters raised in the proceedings (i.e. the matters other than those that are the subject of the referral) are dealt with. In other words, the fate of the patent would solely depend on the result of the referral.
However, the current Board disagrees with this approach. For the present case, the Board considers that the most procedurally reasonable way to proceed is to refer questions relating to added matter to the EBA as the next step. This is despite the Board currently being unable to rule out that, even if the decision of the EBA resulted in the claims not containing added matter, the case may yet fail in view of lack of inventive step.
Thus, question 1 asks whether the “required” criteria is met if the Board demonstrates that the particular point of law being referred arises in the context of the case and it is reasonable for the Board to examine and decide that particular point of law as the next step.
Final comments
It remains to be seen whether the EBA will accept the referral, especially in view of the extensive commentary regarding admissibility. If the EBA does accept the referral, then the questions may still be modified by the EBA before they are answered. We will continue to monitor for developments.
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