Claims under the European Patent Convention

Legal requirements applicable to European patent applications and patents
Note: The above list of legal requirements is not exhaustive.

Article 84 of the European Patent Convention (EPC)[1] defines the function of the claims under the European Patent Convention, the function being to define the matter, i.e. the invention, for which patent protection is sought. This legal provision also imposes that the claims must be clear, concise as well as supported by the description of the European patent application or patent.[1] The form and content of the claims are defined in Article 84, and supplemented by the Rule 43 EPC.[2][3]

The wording of Article 84 is as follows:

The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description.[1]

Rationale

The EPC requires that the claims must be clear (i.e., for instance the claim wording cannot be obscure) and must define the matter for which protection is sought in terms of the technical features of the invention.[4] The rationale behind this requirement is to ensure that the public is not left in any doubt as to which subject-matter is covered by a particular patent and which is not.[5] The clarity requirement therefore plays an important role in providing legal certainty for third parties to determine whether they are infringing or could infringe a patent or not, so as in turn to be able to make the most informed economic decisions as possible (such as taking a license, designing around, refraining from entering a market, etc.).

Clarity

According to the established case law of the EPO boards of appeal, the claims must be clear "in themselves when being read with the normal skills, but not including any knowledge derived from the description of the patent application ...".[6] In other words, the wording of a claim must be clear in itself.

As mentioned above, a claim must define the matter for which the protection is sought in terms of the technical features of the invention.[4] These technical features need not necessarily be structural however; they may also be functional. Structural features may for example consist in a nail, a screw or a rivet, whereas functional features define the suitability for performing certain functions, such as for example fastening means.[7][8]

The scope of the claims must also not be "broader than is justified by the extent of the description and also the contribution to the art".[9] "[T]his requirement reflects the general legal principle that the extent of the patent monopoly, as defined by the claims, should correspond to the technical contribution to the art in order for it to be supported, or justified."[10]

Implementing regulations

Rule 43(1) EPC

Rule 43(1) EPC notably imposes that an independent claim should be drafted in a two-part form, including a preamble and a characterizing part. The preamble, which is sometimes also called "pre-characterizing portion",[11] includes all the features of the claim that in combination are known in a prior art document, namely the closest prior art. The characterizing part includes the other features, i.e., those not known in the prior art document used to draft the claim in a two-part form. The two-part form required by Rule 43(1) should be complied with "wherever appropriate". This manner of claiming an invention is also prescribed, in a similar manner, in the Patent Cooperation Treaty, namely in Rule 6.3(b) PCT.

Rule 43(2) EPC

Pursuant to Rule 43(2) EPC, a plurality of independent claims in the same claim category are only allowable in exceptional circumstances, listed in Rule 43(2)(a), (b) and (c). Decision T 263/05 of the Boards of Appeal of the EPO held that Rule 43(2) was not applicable in opposition proceedings.[12]

New Rule 62a EPC, which entered into force on April 1, 2010,[13] provides the opportunity for the EPO to invite the applicant to comply with Rule 43(2) before the search is carried out. This was not foreseen under the former regulations.[14] Under the new rules, if the claims as filed in a European patent application contain a plurality of independent claims in the same claim category and if the EPO considers in that case that the claims therefore do not comply with Rule 43(2) EPC, the EPO may "invite the applicant to indicate, within a period of two months, the claims complying with Rule 43, paragraph 2, on the basis of which the search is to be carried out." "If the applicant fails to provide such an indication in due time, the search shall be carried out on the basis of the first claim in each category".[15] A Rule 62a EPC objection may however be contested by the applicant in its reply to the search division or, later, before the examining division.[16] If the search division finds that its initial objection was not justified in view of the applicant's arguments, the search will then be carried out on an unlimited basis.[16] The examining division may also override the assessment of the search division.[16] Otherwise, the claims will have to be restricted, during examination, to the subject-matter searched.[17]

This amendment to the Implementing Regulations of the EPC is part of the so-called "raising the bar" initiative, with the claimed aim "to improve the quality of incoming patent applications and streamline the grant procedure".[18]

Applicability in opposition and revocation proceedings

Article 84 is neither a ground of opposition under Article 100 EPC nor a ground for revocation under Article 138(1) EPC.[19] Article 84 may however play a role in opposition proceedings, by virtue of Article 101(3) EPC, if the patent proprietor makes amendments to the claims.[20] The Enlarged Board of Appeal has decided, in case G 3/14, that "the clarity of the amended claims of a patent may be examined in opposition proceedings only when, and then only to the extent that the amendment introduces non-compliance with Article 84 EPC."[21]

In opposition proceedings, if the claims of the opposed patent are sufficiently clear for a skilled person to understand them without difficulty, then there is no reason to consult the description to interpret the claims.[22] In other words, "the description can be used as the patent's "dictionary" to assess the correct meaning of ambiguous terms used in claims" but "if a term used in a claim has a clear technical meaning, the description cannot be used to interpret such a term in a different way."[23]

References and notes

  1. 1 2 3 Article 84 EPC
  2. ↑ Previously Rule 29 EPC 1973.
  3. ↑ Nicholas Fox, A Guide to the EPC 2000, CIPA, page 74, ISBN 0-903932-26-1.
  4. 1 2 Article 84 EPC, Rule 43(1) EPC
  5. ↑ See for instance:
    • "In order to ensure that the public is not left in any doubt as to which subject-matter is covered by a particular patent and which is not, Article 84 EPC in combination with Rule 43(1) EPC requires that the claims shall be clear and define the matter for which protection is sought in terms of the technical features of the invention. A claim does not, therefore, fulfil the requirement of clarity if there is doubt as to the subject-matter it may cover (see case Law of the Boards of Appeal, 5th edition 2006, II.B.)" in Decision T 0528/06 of 3 December 2008, Reasons 1.
    • "The purpose of claims under the EPC is to enable the protection conferred by the patent (or patent application) to be determined (...), and thus the rights of the patent owner within the designated Contracting States (...)." in G 2/88 (Friction reducing additive) of 11 December 1989, point 2.5.
  6. ↑ See for instance:
    • "On the one hand, Article 84 requires that the claims shall be clear. "This implies that the claims must be clear in themselves when being read with the normal skills, but not including any knowledge derived from the description of the patent application ..." (T 0908/04 of 15 February 2006, point 3.5 of the reasons). Therefore, a reference in the description can generally not render an otherwise unclear claim clear." in Decision T 1819/07 of 15 March 2011, Reasons 3.4.1;
    • "(...) the claims must be clear in themselves when read by the skilled person (not including knowledge derived from the description; see T 988/02, point 3.3.1 of the Reasons and T 1898/06, point 2.2 of the Reasons)" in Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (8th edition, July 2016), ii.a.3.5 ;
    • "In decision T 454/89 the board shared this view and explained that Art. 84 EPC 1973 requires that claims must be clear in themselves when read using normal skills, including knowledge of the prior art but not any knowledge derived from the description contained in the patent application or the amended patent." and "The clarity stipulation under Art. 84 EPC 1973 concerned only the claims, and therefore - according to the established case law of the EPO boards of appeal - required that they be clear in themselves, without there being any need for the skilled person to refer to the description." in Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (8th edition, July 2016), ii.a.6.3.5
  7. ↑ Guidelines for Examination in the EPO, section f-iv, 2.1 : "Technical features"
  8. ↑ T 1098/14, Reasons 5.
  9. ↑ Decision T 1486/08 of 23 February 2012, Reasons 1.4, referring to T 0409/91, OJ EPO 9/1994, 653, Reasons 3.2, penultimate sentence and Reasons 3.3, second sentence.
  10. ↑ Decision T 409/91 dated 18 March 1993, OJ EPO 9/1994, 653, Reasons 3.3, second sentence.
  11. ↑ See for instance "The pre-characterising portion of the claim is based on..." in Decision T 0443/11 of 30 January 2012, item 2.1.
  12. ↑ EPO boards of appeal decision T 263/05 dated June 28, 2007, Headnote II.1
  13. ↑ Decision of the Administrative Council of 25 March 2009 amending the Implementing Regulations to the European Patent Convention (CA/D 3/09), Article 2(1).
  14. ↑ EPO web site, Notice from the European Patent Office dated 15 October 2009 concerning amendments to the Implementing Regulations to the European Patent Convention (EPC), 15 October 2009, point 2.1.
  15. ↑ Decision of the Admin. Council, CA/D 3/09, Article 1.1.
  16. 1 2 3 EPO web site, Notice from the EPO dated 15 October 2009 concerning amendments to the Implementing Regulations to the EPC, 15 October 2009, point 2.2.
  17. ↑ New rule 62a(2) EPC. See Decision of the Admin. Council, CA/D 3/09, Article 1.1.
  18. ↑ EPO web site, Notice from the EPO dated 15 October 2009 concerning amendments to the Implementing Regulations to the EPC, 15 October 2009, 1. Introduction.
  19. ↑ See for instance: Decision T 0075/09 of 13 September 2011, Reasons for the Decision 2.8, 2nd and 3rd paragraphs:
    "... a deficiency concerning the requirements of Article 84 EPC is neither a ground for opposition before the EPO under Article 100 EPC nor a ground for revocation under Article 138(1) EPC. Consequently, such a deficiency cannot be dealt with, let alone remedied in either proceedings.
    Reference can be made in this respect to established jurisdiction, namely to the Decision of the Enlarged Board of Appeal G 9/91, (OJ EPO 1993, 408, No. 19 of the reasons) and e.g. Decisions T 301/87 (OJ EPO 1990, 335, No. 3.8 of the reasons) and T 690/00 of 20 February 2002 (No. 4.1 of the reasons; not published in OJ EPO, cf. also Chapter VII.D.4.2 in the Case Law of the Boards of Appeal of the EPO, 6th edition, 2010)."
  20. ↑ David Rogers, Lack of clarity as a ground in opposition proceedings, Journal of Intellectual Property Law & Practice, 2007, Vol. 2, No. 8, p. 502.
  21. ↑ "Decision G 3/14 of the Enlarged Board of Appeal". European Patent Office. March 26, 2015. Retrieved 27 March 2015.
  22. ↑ See for instance:
    • "Although a claim must not be interpreted in a way which is illogical or does not make any sense, the description cannot be used to give a different meaning to a claim feature which in itself imparts a clear credible technical teaching to the skilled reader..." in Decision T 1018/02 of 9 December 2003, Catchwords. (T 1018/02 is cited with approval in (French) decision T 0369/10 of 1 October 2012, reasons 2.1.2, second paragraph.)
    • (German) "Sind die Patentansprüche so deutlich und eindeutig abgefasst, dass der Fachmann sie problemlos verstehen kann, so besteht keine Veranlassung die Beschreibung zur Interpretation der Patentansprüche heranzuziehen. Bei einer Diskrepanz zwischen den Patentansprüchen und der Beschreibung ist der eindeutige Anspruchswortlaut so auszulegen, wie ihn der Fachmann ohne Zuhilfenahme der Beschreibung verstehen würde.
    Somit sind bei einer Diskrepanz zwischen deutlich definierten Patentansprüchen und der Beschreibung solche Teile der Beschreibung, die in den Patentansprüchen keinen Niederschlag haben, grundsätzlich in der Beurteilung der Neuheit und der erfinderischen Tätigkeit nicht zu berücksichtigen." in Decision T 0197/10 of 28 October 2011, Leitsatz.
  23. ↑ T 2221/10, Reasons for the Decision 33 (Boards of Appeal of the European Patent Office 4 February 2014) (“According to established case law of the Boards of Appeal the description can be used as the patent's "dictionary" to assess the correct meaning of ambiguous terms used in claims. However, if a term used in a claim has a clear technical meaning, the description cannot be used to interpret such a term in a different way. In case of a discrepancy between the claims and the description, the unambiguous claim wording must be interpreted as it would be understood by the person skilled in the art without the help of the description (e.g. decision T 197/10 of 28 October 2011, and the Case law of the Boards of Appeal, 7th Edition 2013, II.A.6.3.1, page 268).”).

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