The Referring Decision T 439/22 is an appeal, by the opponent, against decision of rejection of an opposition against European patent EP3076804 relating to a heated aerosol generating article with thermal spreading wrap. The patent in suit indeed concerned an article for a vaping device, which contains an aerosol forming material (tobacco).
A key issue in the appeal was whether claim 1 of the patent as granted was novel. Claim 1 of the patent as granted contains the feature that the material is a "gathered sheet". The patent proprietor argued that if this term was assigned its usual meaning in the art, claim 1 was to be regarded as novel. The opponent argued that if "gathered sheet" was interpreted in the light of the description, then it would have a broader, although still technically sensible meaning. This interpretation of "gathered sheet" would lead to a lack of novelty.
The three questions referred to Enlarged Board of Appeal (EBA) following this appeal decision were:
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?
In this decision G 1/24, the EBA considers that neither Article 69 EPC and Article 1 of the Protocol, nor Article 84 EPC are entirely satisfactory as a basis for claim interpretation when assessing patentability, as Article 69 EPC is only concerned with infringement actions before national courts and the UPC, whereas Article 84 EPC is formal in nature, does not mention the invention and provides no guidance on how to interpret claims.
Yet, the EBA notes that from the case law that Boards of Appeal have applied the wording of these articles 69 and 84 EPC in an analogous way to the examination of patentability under Articles 52 to 57 EPC.
There is thus an existing body of case law, considered settled by EBA, from which the following applicable principles of claim interpretation can be extracted and which form the basis of this decision of the EBA:
1 - the claims are the starting point and the basis for assessing the patentability of an invention under Articles 52 to 57 EPC.
2 - the description and any drawings shall always be consulted to interpret the claims when assessing patentability, and not only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation.
Although there is no real change in EPO examining practice, it is therefore to be reminded that even if the claim is clear in itself, description and drawings can give the claim another interpretation.