Tag: claim construction

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Claim construction in EPO proceedings

For several years, there has been divergence in the case law of the Boards of Appeal when it came to claim construction: Some Boards have taken the position that, when assessing patentability, the claims are to be construed in light of the description and drawings as a matter of principle. On the other hand, other Boards have taken the position that the description and drawings are to be considered for claim interpretation in EPO proceedings only in certain cases, namely when the claim wording is unclear or ambiguous.

The recent Boards of Appeal decision T 0439/22 has referred this matter to the Enlarged Board of Appeal. The referral questions are as follows:

1. Is Article 69 (1), second sentence EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC to be applied to the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC?

2. May the description and figures be consulted when interpreting the claims to assess patentability and, if so, may this be done generally or only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation?

3. May a definition or similar information on a term used in the claims which is explicitly given in the description be disregarded when interpreting the claims to assess patentability and, if so, under what conditions?

These questions also affect many pending proceedings.

The president of the EPO has decided that proceedings before the examining and opposition divisions should continue (Notice from the European Patent Office dated 1 July 2024). This serves the proper functioning of the EPO and for legal certainty.

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BGH “Variationsnut” – Claim Construction

In its decision X ZR 12/22 dated 12 March 2024 – Variationsnut (“varying groove”), the German Federal Supreme Court held that a term used in two different claim features of the same claim may have to be construed differently, if the technical functions of the two claim features indicate this to be necessary.

This decision is illustrative of the importance of technical considerations in the German patent court system: The courts strive to make technical sense of the claimed invention with a mind willing to understand, even if the claim wording may not be perfect.

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Claim construction at the UPC

In decision UPC_CFI_292/2023, the Local Division (LD) Munich of 20/12/2023, the UPC rejected a request for a preliminary injunction. According to the first headnote of the decision, claim amendments made during prosecution can aid the claim construction . In the decided case, the LD Munich was of the opinion that a claim amendment introduced during prosecution defined an original claim feature in greater specificity and, thus, had to be construed more narrowly than suggested by claimant.

In an article published on LinkedIn, a fellow German patent attorney remarked that he considers the first headnote of this decision to represent a significant change as compared to the national German claim construction practice. I don’t think that the decision of the LD Munich is a significant departure from German national practice. While German courts have traditionally not relied on file history estoppel, several decisions handed down by the German Federal Supreme Court (BGH) in recent years – such as BGH decision of 14/06/2016 – X ZR 29/15 – Pemetrexed and BGH decision of 10/05/2011 – X ZR 16/09 – Okklusionsvorrichtung (“occlusion device”) – held that claim amendments made during prosecution can be a useful tool for claim construction. The decision by the LD Munich appears to be in line with this German national case law (which in itself represents a shift towards the national practice of other EPC contracting states that apply the principles of file history estoppel).

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Claim construction in DE nullity proceedings

A recent decision of the German Federal Patent Court, 2 Ni 30/21 (EP), which relates to one of Signify’s LED technology patents, is illustrative for claim construction in DE nullity proceedings. Patentee wanted a claim feature (“clipped into”) to be understood broadly (which is unusual in nullity proceedings). The German Federal Patent Court interpreted the feature in question much more narrowly. The German Federal Patent Court held that the patent was to be maintained on the basis of a (significantly limited) independent claim of an auxiliary request.

It was due to the very narrow interpretation of the “clipped into” feature that the German Federal Patent Court held that this feature was not disclosed by some of the prior art document (see, e.g., sections II.7.5, 7.6, 7.7, and 7.8 of the reasons of the decision 2 Ni 30/21 (EP)).

This case illustrates that the German Federal Patent Court may give claims a much narrower meaning than the interpretation suggested by patentee. Signify’s LED technology patents continue to provide interesting case law (with German Federal Supreme Court decision of December 20, 2018 – X ZR 56/17 – Schaltungsanordnung III being a well-known example).