It is all crystal clear by definition...
(and don’t blame us if it isn’t)
Casual observations on claim interpretation in
the European Patent Office
Tamás Bokor
Member of the Boards of Appeal of the
European Patent Office
Talk held at the Bundespatentgericht, 07.04.2016
Tamás Bokor
EPO DG3
7th April 2016
... can you spot the difference?...
 Article 69 (1) EPC: ”The extent of the protection conferred ... shall be
determined by the claims. Nevertheless, the description and drawings shall
be used to interpret the claims.”
 Article 84 EPC:
”The claims shall define the matter for which protection is sought. They shall
be clear and concise and be supported by the description.”
 Article 92 EPC: ”The EPO shall ... draw up ... [the] search report ... on the
basis of the claims, with due regard to the description and any drawings”
 Rules 42(1) and 43(1) EPC: ”The description shall ... disclose the invention,
as claimed, in such terms that the technical problem ... and its solution can
be understood. ... The claims shall define the matter for which protection is
sought in terms of the technical features of the invention.”
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The harsh reality:
Application/patent read
by the competent organ
Application/patent read
by the competent organ
Claim scope determined
(according to common
principles/criteria?)
Action taken:
prior art identified, claim
examined or compared with
prior art / alleged infringement
Output: relevant prior art,
claim granted/refused,
decision on infringement
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Determination of claim scope
influenced by the
expected action/output
conflicting subject-matter
procedural possibilities or
restraints of the expected action
interpretation by another organ?
Claim
amended
The (presumed) legislative intent?
Action taken
Output: relevant prior art,
claim granted/refused,
decision on infringement
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The (more or less undisputed) general principles of
claim interpretation
 Guidelines: Each claim should be read giving the words the meaning and
scope which they normally have in the relevant art, (unless in particular
cases the description gives the words a special meaning, by explicit
definition or otherwise).
Read: the claim is read by the [specialist] skilled person
 CLBA: The skilled person, when considering a claim, should rule out
interpretations which are illogical or which do not make technical sense. He
should try ... to arrive at an interpretation of the claim which is technically
sensible and takes into account the whole disclosure of the patent. The
patent must be construed by a mind willing to understand, not a mind
desirous of misunderstanding.
Read: Be reasonable and positive, look also at the description
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...claims seem important to the legislator.
Are they equally important to us?...
 Of course examiners in the EPO know that claims are important.
 More precisely, examiners know when claims really become important: at the
very moment when a patent is granted (or upheld)
 this may be far away: until then, a lot of work is to be done on and around
the application  Perhaps the claim interpretation can wait a little?
All claims are important, but some are more important than others:
 Claims are not completely useless (when doing the search)
 Claims are actually quite useful (when doing the examination for grant)
 Claims are quite important (whenever arguing with the applicant)
 Nothing else matters but the claims (when examining an opposition).
 a serious interpretation exercise may not be worth the trouble
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I. Claims need no interpretation (as a distinct and
systematic action) at any stage, because...
 the examiner is a „skilled person”. He understands the claim immediately.
 exact claim wording is (for the time being) not that important (e.g. search)
 it is simpler to invite the applicant to amend the claim than coming up with
a tedious interpretation....
 ... and the Examiner may have more important things to do: perhaps the
distinguishing features are not heavily disputed. The main battlefield may
be the inventive step. Or added subject-matter under Article 123(2) EPC.
 Neither searches nor grant decisions need to be reasoned.
 and Article 69 EPC is a taboo, I am told.
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A promising start: see Guidelines on search (Part B) :
At this stage, we are still fully Article 69 compatible (remember the Protocol?):
 ”The search should on the one hand not be restricted to the literal
wording of the claims, but on the other hand should not be broadened to
include everything that might be derived by a person skilled in the art
from a consideration of the description and drawings”.
... strict, literal meaning
of the wording used in
the claims, the
description and
drawings being
employed only for the
purpose of resolving an
ambiguity found in the
claims...
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The „extremes”
of the Protocol
on the
interpretation of
Article 69
... claims serve only as a
guideline and ...the ...
protection conferred may
extend to what, from a
consideration of the
description and drawings
by a person skilled in the
art, the patent proprietor
has contemplated.
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II. Shifting the focus in examinaton:
the legal source for claim interpretation is no longer
Article 69, but Article 84 EPC
... and many beautiful minds apply the law:
The Examiner, to a certain extent, is a skilled person: he is an engineer, not a
patent attorney, and even less a lawyer.  inclined to treat claim scope as
something which can be defined (and therefore examined) with
scientific accuracy. He is less inclined to weigh up various factors in
order to determine claim scope and thereby merely to arrive at an
„equitable” (but not necessarily exact) result.
It is perceived that clarity in the sense of Article 84 EPC not only
should, but indeed CAN be achieved. However, once a claim becomes
clear, there seems to be no further need to interpret it. 
Examination of clarity under Article 84 EPC may convey the perception that
interpretation is more or less superfluous at later stages.
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Article 84 EPC in practice: The obsession with clarity
Article 84 EPC on paper: ”The claims shall define the matter for which
protection is sought. They shall be clear and concise and be supported by the
description”. And in practice?
define
The claims (and nothing else) shall
the matter for which protection is sought
(forget the German ”angeben”, this is far too vague).They shall be
(clearly)
clear (!!!) and
concise (please...)
and be supported by the description (or
otherwise we
might raise an objection under Article 83).
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Perception of claim scope interpretation
pursuant to Article 69 EPC
Claim scope as
interpreted by Court X
Claim
scope as
granted by
the EPO
Claim
scope
Claim scope
as interpreted
by Court Y
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Claim
Scope
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Perception of the ”clear” claim under Article 84 EPC:
Whether it is narrow or broad: the boundaries
must be as exact as possible
Claim
scope
Claim
scope
Claim
scope
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Effect of „clarifying” amendments on claim scope
Claim scope before
amendment
Delimitation through
interpretation under
Article 69 EPC?
Claim scope as
amended after
clarity (or other)
objection
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Prior
art
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III. Article 69 EPC and the EPO – a lost perspective?
 The early years (1980-1990): Of course we apply Article 69 EPC: we will
happily look at description and drawings in order to interpret a claim.
 The years of growing suspicion (1990-2000): There is something fishy
about Article 69 EPC. What is all this nonsense about infringements?
 Fall and expulsion from Eden (from 2000 onwards): Do not even try to
mention Article 69 to us. The EPC tells us clearly that this is a no-go area
for the EPO.  A perceived legal barrier between Article 69 and the EPO
is born. The principles of claim interpretation need not follow those of
Article 69 EPC. (...G 2/88 was too long ago...)
 Any chance of rehabilitating Article 69? There is still hope, but chances are
slim.
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How did this come about?
An instructive example: T 1208/97 of 3 November 2000
(among several similar decisions)
 Case: Biotechnology, DNA sequence
 Patentee argues: known naturally occurring, i.e. non-modified DNA
sequences would not infringe the claim through correct application of
Article 69 EPC, hence these cannot be novelty destroying.
 Board holds: Claim is a product claim (albeit with some reference to
process features). Novelty of the product is not necessarily established
merely through new process. (There is no inverse application of Article 64(2) EPC.)
 The final finding seems in essence correct: It is normally not permissible to
conclude from a legal effect that certain requirements of a legal provision
possibly leading (directly or indirectly) to this legal effect are thereby
inherently satisfied.
 The Board further reflected on the infringement argument....
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Après moi le déluge ?
 and said: Article 69 EPC and its Protocol are primarily for the judicial
instances dealing with infringements.
The message getting through:
Article 69 EPC is not our business.
 This interesting notion did not go unnoticed. It certainly fitted to the idea
that the quest for clarity is the right approach:
 See T 1279/04 of 25 September 2007, dismissing a novelty argument,
where a claim interpretation was proffered by reference to Article 69 EPC:
”.. There is no case for anything other than a strict definitional approach,
given that in [examination and opposition proceedings] the claim could and
should be amended to ensure legally certain patentability, in particular novelty
and inventive step over any known prior art. Amendment rather than
protracted argument should be the answer to genuine difficulties of
interpretation in all aspects of the examination and opposition procedure ...”
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Summing up:
We have no time for claim interpretation in the
European Patent Office.
We are just too busy making sure that you should
not spend your time with it either.
... and remember that the road to hell is paved with good intentions ...
Thank you for your attention.
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