New referral to the Enlarged Board of Appeal

Can the description be used to interpret the claims?

New referral to the Enlarged Board of Appeal

A recent case has put the spotlight again on the question of how much emphasis should be put on the content of the description when interpreting the meaning of the claims of a European Patent?

The case in question (T 0439/22) concerned a heated tobacco product where the claims specified that the tobacco be ‘gathered’. The description provided its own definition of this term which included arrangements where the tobacco was ‘convoluted, folded, or otherwise compressed or constricted’. Prior art cited by the Opponent described a similar product where the tobacco was ‘spirally wound’.

In the past, Boards of Appeal have been reluctant to look to the description as an aid to interpret claim language which is clear in itself. However, in this case, the Board have indicated that they see some divergence in the case law such that a referral to the Enlarged Board of Appeal is necessary.  

The Enlarged Board of Appeal is the ultimate arbiter on matters of Law relating to European Patents. Questions may be referred to it in order to ensure uniform application of the law, or if a point of law of fundamental importance arise. In practice, this means that the resolution of the issue being referred must be critical to decide the case. In T0439/22, the Board considered that if the claim is interpreted with reference to the description it would lack novelty whereas taking the language of the claim alone would resolve the case in favour of the Patentee. The fate of the patent thus rests on whether the description should be consulted or ignored. 

Only the minutes of T0439/22 are available so far. A full written decision is expected in June where we will see the precise wording of the questions the Board wishes the Enlarged Board to answer. It is entirely possible that nothing will come of this case as it is within the competence of the Enlarged Board to decline to answer any questions referred to it, for example if they do not agree that the Case Law is sufficiently divergent. It is also common for the Enlarged Board to revise or reword any referred questions.

We will follow the progress of this case with interest to see whether the Enlarged Board wish to pick up this thorny issue and if so, how any decision they ultimately make will inform European Patent practice going forward.