On 19 July 2024, the Court of Appeal under Lord Justice Birss handed down its judgement on the case of Comptroller – General of Patents, Designs and Trade Marks v Emotional Perception AI Limited [2024] EWCA Civ 825. The Court of Appeal judgement overturns the first instance decision of the High Court and upholds the decision of the UKIPO Hearing Officer.

The judgement held that:

The full Court of Appeal decision can be found here.

In response to the issuance of the decision, the UKIPO has suspended its guidance on the examination of patent applications relating to artificial intelligence.  It remains to be seen whether the UKIPO’s practice will now revert to that before the first instance decision was issued last November, whereby ANNs are treated no differently to any other form of computer implemented invention.

The EPO Board of Appeal in decision T 0439/22 of 24 June 2024 referred new questions to the Enlarged Board of Appeal on whether and to what extent the description and drawings can be taken into account when interpreting claims for the purposes of assessing patentability. The referral G 1/24 (“Heated Aerosol”) seeks to resolve a long-standing conflict between Articles 69(1) and 84 EPC relating to how claims are to be interpreted before the EPO.

At the EPO, the extent of protection conferred by a patent is governed by Article 69(1) EPC and the requirements for the form and content of patent claims are governed by Article 84 EPC. Article 69(1) EPC states that “The extent of the protection conferred by a European patent or a European patent application shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims”. The use of the description and drawings to help understand and construe the true meaning and scope of a patent claim is a fundamental principle of claim interpretation applied in infringement proceedings in the national courts throughout Europe (and most if not all other patent jurisdictions) and underpins the “purposive construction” approach applied by the UK courts. At the same time, according to Article 84 EPC the subject matter of the invention for which protection is sought is defined by the claims (and only the claims). The question thus arises whether the claims should be interpreted in the light of the description and drawings as provided for in the second sentence of Article 69(1) EPC merely in order to determine the extent of protection, e.g. for infringement proceedings in the national courts, or whether it is also possible to do so in order to establish whether the requirements of patentability and clarity have been satisfied. EPO case law is divided on this fundamental point, and the referral G 1/24 (“Heated Aerosol”) seeks to clarify the situation.

The EPO’s current practice

In contrast to practice at the UKIPO where claims can be interpreted in light of the description and drawings when assessing patentability and clarity, EPO examining and opposition divisions have long followed the practice set out in the EPO Guidelines for Examination (see GL F-IV 4.1-4.2) whereby the claims of a European patent application must be clear in themselves without reference to description and drawings, because it is only the claims of the European patent, not the description, which are published in all the official languages of the EPO. As such, under current EPO practice before the examining and opposition divisions, the claims are generally read in isolation, giving the words the meaning and scope which they normally have in the relevant art, and only in particular cases where the description gives the words in a claim a special meaning by explicit definition or otherwise, or where the claim wording is particularly ambiguous, will the EPO look to the description to interpret the claims. In this regard, the patent document may be ‘its own dictionary’. However, during prosecution, the EPO will in any case typically require the claim to be amended such that its meaning is clear from the wording of the claim alone.

This practice is supported by a long line of case law in which the EPO Boards of Appeal generally rely on Article 84 EPC as the legal basis for focusing on the claim wording alone to ensure future legal certainty, and often express the view that Article 69(1) EPC concerns only the extent of protection, which in turn is relevant only for the purposes of Article 123(3) EPC and national court infringement proceedings (see e.g. T 1279/04 and T 169/20). On the other hand, there is also another line of case law where the Boards of Appeal have endorsed the opposite view, based on the second sentence of Article 69(1) EPC, that the claims should be interpreted in light of the description and drawings to identify their subject-matter for the purposes of assessing patentability (see e.g., T 1473/19, T 450/20T 1494/21 and T 367/20). Further, even in the body of case law that generally supports the “claims only” approach, there are decisions which hold that the description, including any definitions therein, should be ignored if the claims are clear on their own merits (see e.g. T 197/10, T 1266/19), and others that go as far as to suggest the claims should always be interpreted on their own merits without consulting the description (see, e.g. T 675/22, T 1924/20). There is thus a clear divergence in the case law on how claims should be interpreted in proceedings before the EPO.

The referral

In the referred case T 0439/22, claim 1 included the term “gathered sheet”, which if given its usual meaning in the art confers novelty to claim 1 in light of prior art which disclosed a spirally wound sheet, whereas if read in a broader but still technically meaningful manner in view of the description, the Board held that claim 1 lacks novelty. Specifically, the description included a broad definition stating that “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“, wherein the Board held that the dictionary definition of at least the term “convoluted” includes “coiled”, such that claim 1, when interpreted in light of the definition set out in the description, encompasses the spirally wound arrangement of the prior art. Thus, the question arose of how to interpret the term and whether the description should be used to interpret what is otherwise considered to be a clear claim.

The exact referral questions in G 1/24 (“Heated Aerosol”) are:

1. Is Article 69 (1), second sentence EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC to be applied on 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?

Comments

The case for referral put forward by the referring Board in T 0439/22 is compelling and shines the spotlight on an large body of conflicting EPO case law on claim interpretation. Indeed, from an outside observer’s point of view, it may seem surprising that after 50 years the EPO is apparently still wrestling with how to handle such fundamental issues of claim interpretation. The Enlarged Board of Appeal (EBA) will now have to decide whether and to what extent the referral questions are admissible. Meanwhile the EPO has issued a press release stating that practice at the EPO will continue as set out in the current guidelines while the referral is pending, highlighting the significance of the case.

Claim interpretation is clearly a point of law of fundamental importance and, based on the divergent case law on the matter, an EBA decision on the matter would be welcome to ensure uniform application of the law. However, it remains to be seen whether the facts of the case are deemed to warrant the specific referral questions – indeed, the EBA have a habit of dodging or narrowing tricky questions such as these (e.g. as they did in G 1/19). As an example in this regard, it might be queried whether answers to all of the referred questions are really required by the referring Board to reach a decision on the specifics of the case, or whether instead if an answer to question 3 (relating to the extent to which a patent can be its own dictionary) would suffice. The issue of whether the description affects the interpretation of what is otherwise considered to be a clear claim is also relevant to the EPO’s (often criticized) current strict guidelines to adapting the description to the granted claims, which also concerns Articles 84 and 69(1) EPC, and for which a referral to the EBA is hotly anticipated from the ongoing appeal case T 56/21.

Managing IP has released its 2024 guide of the IP STARS legal directory, which recognises the most outstanding practitioners covering several IP practice areas and more than 50 jurisdictions. Each year, the research analysts obtain information through firm submissions, client interviews, as well as online surveys, to identify the leading IP STARS.

We are delighted to announce that Partners Jane Clark, Hazel Ford and Paul Cozens have been named as ‘Patent Stars’ and Partners Gary Johnston, Rebecca Tew as well as Consultant Margaret Arnott have been recognised as ‘Trade Mark Stars.’ Additionally, Partners Philippa Griffin, Nicholas Fox, David Hobson, Martin MacLean and Andrew White have been featured as ‘Notable Practitioners’ in the latest guide. The 2024 Rising Star rankings are due to be released in September 2024.

The firm is also pleased to have maintained its rankings for ‘Patent prosecution’ and ‘Trade mark prosecution’ in the 2024 directory.

For more information, and to view the rankings in full, visit the IP STARS website here.