In the patentee’s shoes

It is not always easy to be in the patentee’s shoes – as today’s decision will confirm again. In fact, patent proprietors and alleged infringers are not on a equal footing, since the latter need only prevail on one defense, while the former must thwart all possible challenges in order to win the case. And this is all the more difficult when the patent gets off on the wrong foot at the examination stage.

As readers may have guessed based on the lexical field of the first paragraph of this post, today’s decision is concerned with the footwear industry.

French company Exten.S owns European patent No. EP 1383402 directed to a sole for a shoe. Together with its exclusive licensee Eram (a well-known shoe distributor), Exten.S sued a Spanish company called Calzados Hergar for infringement of the patent in France.

On November 25, 2008, the Paris Tribunal de grande instance (TGI) revoked claims 1 to 4 of the French part of the European patent – as requested in the defendant’s counterclaim. The judgment was confirmed by the Cour d’appel on October 27, 2010. An appeal on a point a law was submitted to the Cour de cassation, and on January 31, 2012 the court set aside the appeal judgment. The patentee waited almost two years before reinstating the case in front of the Cour d’appel, which finally leads us to the judgment discussed today, which is dated April 8, 2016.

So this is a long story which could probably have been much shorter. Indeed:

  • The TGI originally revoked claims 1 to 4 due to extension of subject-matter.
  • The Cour d’appel fully agreed in 2010.
  • The Cour d’appel still fully agreed in 2016.

In the meantime, Exten.S and Eram regained hope with the 2012 ruling of the Cour de cassation. However, the first appeal judgment was set aside on purely procedural grounds. It turns out that some exhibits filed by the claimants had been discarded by the court (because they were in a foreign language), although they should not have, said the supreme court, because partial translations were in fact provided. So, the supreme court did not look at the merits of the case, which is why it was relatively straightforward for the Cour d’appel to copy and paste its first judgment upon remittal…

Let’s now examine why the subject-matter of the patent was found to have been extended in an unallowable manner relative to the contents of the application as filed.

According to the introduction of the patent, the invention relates to a sole of a shoe making it possible for different foot widths to be fitted easily. Usually shoes are manufactured with a width chosen by the manufacturer, which does not vary as a function of the width of the wearer’s foot. It is also known how to adapt to several foot widths by manufacturing an upper part in elastic material, but without being able to enlarge the lower part in contact with the sole. The purpose of the invention was to remedy these disadvantages.

Claims 1 and 2 of the (PCT) application as filed accordingly read as follows:

1. Extensible sole for shoes of the type where the rigid sole base is glued onto the edges of the upper, characterized in that said base is glued or molded on an insert, which is transversally mounted in an extensible manner, between the gluing zones of said base and said upper.

2. Extensible shoe according to claim 1, characterized in that it comprises at least one insert provided with protrusions in its lower surface, produced by molding a shape memory extensible material glued or injection welded on a rigid sole base, the forepart of which is provided with openings wherein protrusions are embedded, in a sealed way.

One half shoe, one quarter fur coat and one quarter Peruvian hat make a great invention.

One half shoe, one quarter fur coat and one quarter Peruvian hat make a great invention.

Claim 1 as granted was more or less obtained by combining original claims 1 and 2 – the important part of the sentence being of course “more or less“:

1. Extensible sole for shoes of the type where the rigid sole base is glued onto the edges of the upper, characterized in that said base comprises an insert, transversally extensible and provided with one or several protrusions in its lower surface, said insert being produced by molding a shape memory material and being glued or injection welded on said base, the forepart of said base being provided with one or several openings, wherein the protrusion or protrusions are embedded, in a sealed way.

The original wording of openings (plural) and protrusions (plural) was replaced by a broader language encompassing also a single opening and a single protrusion. Sadly for Exten.S, the court deemed that there was no support in the application as filed for such a broadening:

In the description of the PCT application […] it is recited, in relation with the base of the sole, “openings” (p.1 l.25), “the openings” (p.2 l.29 and 36 and p.3 l.1) and “openings” in claim 2. […] Claim 2 […] teaches the presence of openings in which the protrusions are embedded in a sealed way. Figures 1, 3 and 4 of this PCT application show several openings (reference 4), actually five, on the base of the sole, which match the number of protrusions. 

There was only one hint at a single opening in the text but it was considered to relate to a different embodiment:

[…] Although according to p.1 l.24 to p.2 l.1, “the deformable part of the forepart can be obtained by producing one or several longitudinal openings”, this passage relates to “other embodiments”, which is not challenged. Therefore, neither the description nor the claims or drawings of the PCT application mention the presence of a single opening in the base of the sole. 

It would probably have been useful to explain in the reasons for the decision why the context of this sentence was different from the context of granted claim 1, so that no generalization to one or several openings could be allowed – beyond the note on the wording “other embodiments” which can mean several things.

When briefly reviewing the PCT application, it did not immediately strike me why there should be an incompatibility between the option of the single opening and the other features of claim 1 as granted. But a more thorough review could lead to a different conclusion.

Another interesting line of defense based on implicit disclosure was brought up by the patentee and the licensee, also to no avail:

The appellants cannot claim that, since the protrusions cooperate with the openings, a single opening in the forepart of the base of the sole is implicitly disclosed, in view of a single passage of the description of the PCT application (p.1 l.19) per which “this extensible insert is flat on the upper face and provided with one or several protrusions on the lower face. These protrusions are intended to be set countersunk in the base of the sole”. Indeed, as already stated, the PCT application only discloses the presence of several openings and anyway the respondent rightly notes that the presence of a single protrusion in the insert does not necessarily imply the presence of a single opening in the base of the sole. 

This is tough, but very much in line with the criterion of direct and unambiguous disclosure applied at the EPO. If one protrusion does not necessarily equate with one opening, then there is insufficient support in the original PCT application for claim 1 as granted. Even though it might be obvious for the skilled person to come up with the idea of “one opening“, obviousness or equivalents should not come into play in this analysis.

Finally, another ground of extension of subject-matter was entertained by the court, which I have to say is more difficult to understand:

It should additionally be noted that, according to claim 1 of the PCT application, the base of the sole is glued or molded on an insert, but this feature cannot be found in claim 1 of the patent in suit as granted […] according to which, to the contrary, “said insert […] is glued or injection welded on said base” and the insert “is […] mounted between the gluing zones of said base and said upper”.

Basically this is a case of impermissible deletion of an essential feature. But it is stated in a confusing way in the ruling. My two cents is that the deletion of the term “glued or molded” is not really objectionable as claim 1 still requires that the insert be glued or injection welded on the base. And in fact this wording is from original claim 2 and thus seems to correspond to a particular embodiment of the “glued or molded” general statement in original claim 1.

On the other hand, there may indeed be an issue because the feature “mounted between the gluing zones of said base and said upper” no longer appears in claim 1 as granted – although, again, the ruling is not crystal clear in this respect.

All in all, the present decision, which fully confirms two previous similar decisions on the same patent, comes as a further reminder (if needed) that French courts tend to be very strict nowadays in their appraisal of extension of subject-matter: see other examples here, here and there.

The EPO has had the reputation of being the toughest forum for the appraisal of added matter, but there now seems to be some competition in France.

CASE REFERENCE: Cour d’appel de Paris, pôle 5, chambre 2, April 8, 2016, Exten.S & Eram v. Calzados Hergar, RG. No. 14/00580.

Patent in dispute

Most patent legal disputes arise between patentees and third parties, or between patentees and the patent office. But from time to time there are also disputes within a patentee family – because this is what families are like.

By patentee family I mean a group of persons and/or entities who co-own a patent.

One such family is comprised of two French public institutions, namely Université Pierre et Marie Curie (UPMC) and Assistance Publique-Hôpitaux de Paris (APHP), together with an individual, Mr. Julian Itzcovitz, who collectively own European patent application No. EP 2268361 as well as some corresponding foreign applications or patents, directed to a medical device comprising a percutaneous probe, notably for cancer treatment.

Why such an unusual co-ownership? It turns out the invention was jointly made by a neurosurgeon, Prof. Alexandre Carpentier, and by Mr. Itzcovitz who was a private consultant. They jointly filed a U.S. provisional application and then a PCT application claiming the priority of the U.S. provisional. Then, Prof. Carpentier’s share in the patent family was assigned to UPMC and APHP, his employers (in a typical case, the two public institutions would in fact have been the original applicants in the PCT application). On the other hand, Mr. Itzcovitz retained its share, established to be 20%, as he was not an employee.

Under French law, the rules of co-ownership are to be specified in a co-ownership agreement. In the absence of guidelines agreed upon by the parties, article L.613-29 Code de la propriété intellectuelle provides a few default rules. In particular, in terms of licensing, a distinction is made in the article between non-exclusive licenses and exclusive licenses. The default rule is that non-exclusive licenses can be freely granted by each co-owner subject to a compensation to the other co-owners and subject to a right of preemption by the other co-owners.

When it comes to exclusive licenses, the rule is more strict:

An exclusive license can only be granted if all co-owners agree or if a court provides an authorization.

This is a serious constraint indeed. In the present case, although a co-ownership agreement was executed between UPMC, APHP and Mr. Itzcovitz, it does not seem that this agreement contained any provision overruling the unanimity rule set in article L.613-29.

UPMC and APHP planned to grant an exclusive license of the group of patents and applications to a start-up company called Carthera, founded by the inventor Prof. Carpentier. Although the two public entities owned 80% of the shares, this was not quite enough to proceed with the plan, as they still needed the approval of the second inventor Mr. Itzcovitz. But he refused to give it.

Therefore, UPMC and APHP sued Mr. Itzcovitz in front of the Paris Tribunal de grande instance (TGI) in order to obtain the authorization from the court to grant the license without his consent. Carthera, the putative licensee, intervened.

Instead of having to resolve a dispute over a patent, why not file a patent on dispute resolution?
Instead of having to resolve a dispute over a patent, why not file a patent on dispute resolution?

The court defined the scope of its intervention in the dispute as follows:

[…] The court’s authorization is supposed to override an unjustified refusal by one of the co-owners of granting a license contemplated by the other co-owners. It should thus be determined if the reasons set forth by Mr. Julian Itzcovitz for justifying his refusal of the license agreement are serious and well-founded. 

Therefore, the court reviewed the draft of license agreement and examined the reasons mentioned by the inventor for rejecting the proposal.

The proposed license was worldwide and covered products for anti-tumor therapy in all organs. Royalties were to be provided in the form of:

  • a first lump sum of 73,000 euros to be paid in three installments (I understand that this corresponds to a refund of the expenses related to the various patent applications);
  • another lump sum of 80,000 euros due within 6 months of a first marketing authorization in the U.S., and the same lump sum due within 6 months of a first marketing authorization in Europe; and
  • a royalty rate of 4 to 5% for products sold in countries where a patent is in force, as long as the patent remains in force, or of 1 to 2% for products sold in other countries, for 15 years.

The draft also included a sublicensing provision, as well as a termination provision in case the licensee cannot or does not exploit the technology or ceases to do so, or is late in doing so.

The disgruntled inventor listed four reasons why the contemplated license was in his opinion bad for business, and the court assessed each of those.

First, the scope of the license was too broad, both geographically and in terms of subject-matter, in view of Carthera’s actual plans, which were to target only the US and the EU, and to focus on brain tumors first, and then at a later stage liver and lung tumors.

Second, Carthera was unable to implement the invention in a timely manner, in view of its clinical trial schedule and its business plan. In fact the subcontractor responsible for miniaturizing the probe was already behind schedule. And Carthera was still a poorly staffed start-up company.

Third, other companies could be interested in implementing the invention but there had been no effort to get in touch with prospective customers.

Fourth, the royalties were too low. When Mr. Itzcovitz first received the draft license agreement during the negotiations phase, he suggested a different royalty structure with much higher non-refundable yearly lump sums covering a number of sales, and then a lower royalty rate for additional sales not covered by the lump sums. His analysis was based on the belief that market opportunities for the invention were huge. During litigation, Mr. Itzcovitz filed an expert valuation of the patents / applications. According to the expert, the actual value of the patents based on the potential market was 13,600,000 euros; but this value was reduced to 3,410,000 euros in the event of a limited exploitation by Carthera. Therefore, the loss suffered by his client was 20% of the difference between the two amounts, i.e.  approximately 2 million euros. The expert also noted that the royalty rates offered in the license agreement were lower than typical royalty rates in the field.

UPMC and APHP countered the defendant’s analysis by providing their own expert opinion.

The key point in their argumentation was that the invention was still at an early development phase. It was still quite uncertain whether the invention could be exploited and marketed at all. Safety and efficacy trials still needed to be conducted, marketing authorizations needed to be obtained. In fact there was not even a working prototype of the probe – as a side note, the latter argument would certainly be fodder for a third party wanting to challenge the validity of the patents…

In summary, the claimants’ position was that the level of uncertainty was high and that the invention was not ready yet to be on the market. When this was properly taken into account, the contemplated license agreement made perfect sense.

The court was fully convinced by this argument:

In the case of an early license agreement, the licensee needs to finance implementation and development studies, clinical trials and more generally research and development expenses; they cannot take on expensive patent fees before the marketing phase, or they would run out of funding. In the present case, in Mr. Julian Itzcovitz’ proposal, lump sums are requested for the patent co-owners which are to be paid before marketing starts, which would amount to a total of 933,000 euros. As stated by Prof. Galloux, this would result in excluding start-up entities such as Carthera which have to get funded by fundraising in the development process and cannot take on such significant initial patent fees. 

As for the typical royalty rates mentioned by Mr. Itzcovitz’ expert, the court deemed that they were not representative of similar economic situations. The overall valuation of the patent family provided by this expert was also deemed unrealistic – still in view of the uncertainty factor.

Turning to the argument that there were other potential licensees, the court held that there was no evidence of their existence. Only Carthera seemed to be a candidate. Having to find another licensee would also considerably delay the implementation of the invention.

Furthermore, the court held that the choice of Carthera as a licensee was relevant since the head of its scientific committee was the main inventor of the patent. There was no evidence that the delay in the development process could be attributed to insufficient skills or efforts.

Said the court:

[…] In this configuration of an invention at an early stage of its development and a license granted to a start-up company, it is normal to provide that the company taking the financial risk of developing the invention should get an exclusive license with a broad scope in terms of geography and application fields. Indeed, it is rational and balanced that, in case the invention is successful in originally limited fields and territories, it should benefit from profits from the exploitation in other fields and territories, either by directly exploiting the invention itself or by hiring sublicensees (as contemplated in the agreement) if it is not able to do so. It should be added that the patent owners will be compensated proportionally to the sales owing to the royalties in the draft agreement. 

The court also noted that the patentees did not run any financial risk since all patent expenses would be paid by the licensee under the license agreement.

Finally, there was an undertaking for the licensee to make all reasonable efforts to exploit the invention in the agreement. Should there be a breach of this undertaking, the patent owners would be entitled to legal action against the licensee.

The conclusion was the following:

Therefore Mr. Julian Itzcovitz does not demonstrate that he would suffer a loss due to the license agreement which would justify his objection to the agreement. It is thus ordered that the exclusive license agreement with Carthera is authorized according to the draft submitted to Mr. Julian Itzcovitz on March 20, 2013 […]. 

As an additional claim, UPMC and APHP requested 10,000 euros of damages due to the delay in the patent valorization caused by Mr. Itzcotvitz’ refusal. The request was however denied because Mr. Itzcovitz had offered a mediation process but the main co-owners preferred to file suit instead.

Finally, Mr. Itzcovitz as the losing party was condemned to pay 10,000 euros in total as a reimbursement of attorney’s and expert’s expenses. This is relatively lenient, as is usually the case  with a natural person.

A lot was probably not said in the ruling. There may have been personal grievances which could explain why the relationships got that bad in the co-ownership. That said, on the face of it, the ruling makes a lot of sense. It’s probably in everyone’s interest (including patients) to make a deal giving an actual chance to a new medical technology to be exploited, rather than to be too greedy upfront.

CASE REFERENCE: Tribunal de grande instance de Paris, 3ème chambre, 2ème section, March 20, 2015, Université Pierre et Marie Curie & Assistance Publique-Hôpitaux de Paris v. Carthera & Julian Itzcovitz, RG No. 2013/17374.

Time goes by so slowly

The U.S. used to have submarine patents staying under water as pending applications for many years without getting published and suddenly emerging upon grant and awarding 17 years of protection to their owners.

We in France have had a similarly exotic and frightening species of IP rights, that one could call zombie patents:  patents that have apparently been dead for years but that are in fact quietly waiting in their graves for an awakening – which can be triggered e.g. by a decision from the highest court in the country.

European patent No. EP 0984773 to Astrazeneca AB, directed to a pharmaceutical formulation of omeprazole, was such a zombie patent. The patent was filed in 1998 and granted in 2003, and the French translation of the granted patent was duly filed at the Institut National de la Propriété Industrielle (INPI) as was required in those pre-London days. Unfortunately, the sixth renewal fee which was due in 2003 was not paid in due time – nor within the 6-month grace period.

As a result, a formal decision of lapse was issued by the INPI on January 30, 2004 and a mention of this decision was published in the official bulletin (Bulletin Officiel de la Propriété Industrielle or BOPI) on February 27, 2004.

Several pharmaceutical companies apparently relied on this lapse and started marketing generic drugs, such as Ethypharm, which launched its formulation in April 2004.

Five years went by, until one day in April 2009 Astrazeneca filed a request for restoration of right at the INPI. One would think that the request would be expediently dealt with but, as is often the case, one would be wrong. It took the INPI four years to issue its decision on the case, which was… positive. And therefore, in 2013, the patent woke up from the dead.

Obviously Ethypharm was not too happy about this turn of events and filed an appeal against the decision. The Cour d’appel de Paris had sympathy for the generic manufacturer’s case and canceled the decision from the INPI in a judgment dated January 15, 2014 – a swifter process than the proceedings in front of the INPI.

Quite predictably, Astrazeneca filed an appeal on points of law with the Cour de cassation, which brings us to the ruling issued on April 12, 2016, in which the highest court set aside the judgment of the Cour d’appel and therefore reinstated the 2013 INPI decision – and thus revived the patent for the two additional years that are left until it expires.

At this stage there are two questions any puzzled reader would be entitled to ask:

  • Why such a mess?
  • How can a patent possibly be reinstated by a request for restoration of right filed five years after the loss of right occurred?

I think there are two main factors which can help answer these questions:

Let’s first look at the old pre-2008 statute. At that time, the restoration of right further to a lapse due to non-payment of a renewal fee was handled differently from a restoration of right further to non-compliance with another type of time limit.

The former version of article L.613-22 CPI (Code de la propriété intellectuelle) provided in its second paragraph that:

The patent proprietor can file a request for restoration of right within three months from the notification of the decision [of lapse] if it had a legitimate excuse for not paying the renewal fee. 

In the omeprazole case, the decision of lapse having been issued in January 2004, the three month-deadline should have been long expired by the time the request for restoration was filed, and also by the time the law changed in 2008, right?

Well, no, and this is because of the pravastatine case law. It was decided in this famous case (which involved a zombie SPC) that when a decision of lapse is notified to the wrong recipient (i.e. to a recipient who was not entitled to receive the decision), the time limit of article L. 613-22 does not start. Since it does not start, it cannot expire.

This is exactly what happened in the present case. The decision of lapse was not notified to the patent proprietor in Finland. It was not notified to a representative of the patent proprietor either. Instead, I understand from the decision of the Cour de cassation, or rather from the statement of grounds of appeal annexed to the decision, that the 2004 decision of lapse was notified to… the annuity provider:

[…] The director of the INPI states that the notification was made to Mrs Caroline C, who is not an employee of Astrazeneca AB, nor a patent attorney, nor an attorney at law, nor a representative registered with the INPI, and therefore this notification was not made to a person who would be entitled due to the annuity provider, RWS group. Thus, this illegal notification did not trigger the three-month time limit for the restoration, and the request filed by Astrazeneca AB was not outside the time limit. 

OK. But what about the change of law which took place in 2008? How does this come into play?

By way of an executive order dated December 13, 2008, the statute was amended in such a way that paragraph 2 of article L.613-22 CPI was canceled. As a result, the system of restoration of right further to a lapse was aligned with the normal system of restoration of right further to non-compliance with other types of deadlines.

The new relevant provision is article L.612-16 CPI, which will look familiar to European practitioners as it is similarly drafted as the restitutio in integrum provisions in the EPC:

The applicant who does not comply with a time limit set by the [INPI] may file a request for restoration of right if they have a legitimate excuse and if the failure to comply with the time limit directly results in the refusal of the patent application or of a request, in the lapse of the application or the patent or in the loss of any other right. 

The request must be filed with the director of the [INPI] within a deadline of two months from the removal of the cause of non-compliance. The omitted act shall be accomplished within this deadline. The request is only admissible within a deadline of one year from the expiry of the unobserved time limit. 

When the request relates to a failure of payment of a renewal fee, the unobserved time limit is the end of the grace period […].

So, in the new system, the deadline of three months from the notification of the decision of lapse has been replaced by the usual double deadline: two months from the removal of the cause of non-compliance and one year from the expiry of the unobserved time limit.

Since this second deadline is an absolute time bar and is independent from any actions taken or not taken by the patent proprietor and the patent office, it seems that there can no longer be zombie patents in this new system. If this provision had been in place before, Astrazeneca would have been barred from filing a request for restoration of right on the first of December, 2004 (one year after the six-month grace period following the due date for the sixth renewal fee, on the first of June, 2003).

The illustrated device is useful for store clerks: it displays the minimum birth date for an individual who is entitled to purchase alcohol or tobacco. I suggest a variant for patent office clerks displaying the maximum date of lapse of a patent for a patentee who is entitled to restoration of right.

The illustrated device is useful for store clerks: it displays the minimum birth date for an individual who is entitled to purchase alcohol or tobacco. I suggest a variant for patent office clerks displaying the maximum date of lapse of a patent for a patentee who is entitled to restoration of right.

The new provision came into force a few months before Astrazeneca filed its request for restoration. How did this affect the request? As the Cour de cassation summarizes it:

[…] in order to set aside the decision [to restore the patent], the judgment [by the Cour d’appel] stated that the executive order […] entered into force on December 2008 and deleted the second paragraph of article L.613-22 CPI so as to replace it with article L.612-16; and that this was a procedural law and thus was immediately applicable; that Astrazeneca was subjected, in order to benefit from a restoration of right, to the time limit of two months from the removal of the cause of non-compliance in the new provision; that the publication in the BOPI of the decision [of lapse] removed the circumstance which had prevented Astrazeneca to pay the sixth renewal fee when the new article L.612-16 came into force, so that the request filed on April 6, 2009 was late and inadmissible. 

So, in summary, for the Cour d’appel, the time limit of two months came into force with the new law, and since the cause of non-compliance had long been removed, this deadline started on the day the new provision came into force, and was expired by the time Astrazeneca filed its request – so that the restoration could not be granted.

On appeal in front of the Cour de cassation, Astrazeneca criticized the computation of the two-month deadline. They said that a law cannot have a retroactive effect, and that the judgment by the Cour d’appel amounted to such a retroactive effect because the publication of the mention of the decision of lapse in the Bulletin in 2004 retroactively acquired a legal effect in 2008. Also, they explained that this publication was not an actual removal of cause of non-compliance.

But very interestingly, the Cour de cassation set aside the judgment on another ground, that the court came up with on its own – I am not sure I have ever seen this before. Namely, the court ruled that the former pre-2008 rule in fact still applied to the request for restoration filed in 2009. Said the supreme court:

[…] legal remedies against a decision are determined by the law which is in force on the day the decision is issued; 

[…] the decision of lapse of patent right was open to restoration of right under article L.613-22 [CPI] second paragraph, within a time limit of three months from the notification, and since the notification was illegal, the deadline did not start running, and thus the Cour d’appel violated the law […]. 

As a side remark, Ethypharm was not the only third party involved in this dispute. Parallel cases involved Actavis, and therefore there are two other judgments by the Cour de cassation of the same date with substantially the same content.

All in all, this is a rather spectacular result which does seem to make sense on a legal standpoint. The real aberration is probably the error made by the INPI. Why on earth a decision of lapse was notified to someone else than the representative is puzzling – and I guess there must have been a representative actually appointed since the patent was validated by filing a French translation.

Fortunately this kind of fiasco would no longer be possible nowadays – or could it?

CASE REFERENCE: Cour de cassation, ch. com., April 12, 2016, Astrazeneca AB v. Ethypharm & Directeur général de l’INPI, pourvoi No. V 14-17.439.

Search for meaning

Today’s Board of appeal decision was already reported on elsewhere, but it may be worth another commentary, since it relates to a fundamental aspect of patent law, namely the rules of claim interpretation, and more specifically the question of how much one should rely on the description and drawings when interpreting the claims – in particular for the assessment of novelty and inventive step.

One could think that such a basic issue should have long been very clearly settled. Well, one could think again.

Art. 69(1) EPC provides 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 official Case Law book (Case Law of the Boards of Appeal of the European Patent Office, 7th edition, section II.A.6) reminds us that a number of decisions referred to Art. 69 as a legal basis for interpreting the claims in the light of the description and drawings. Others pointed out that Art. 69 is concerned with the question of infringement, and is therefore only for courts of law to deal with, and not for departments of the EPO (except when assessing a potential extension of scope of protection after grant – Art.123(3) EPC).

For example, in T 1279/04, the Board explicitly stated that a different standard should be applied for interpreting the claims in examination or opposition proceedings and in infringement proceedings – which is somewhat reminiscent of the U.S. approach. As the Case Law book puts it, according to this decision:

in examination and opposition proceedings the value of future legal certainty was paramount. […] There was no case for anything other than a strict definitional approach, given that in this procedural stage the claim could and should be amended to ensure legally certain patentability, in particular novelty and inventive step over any known prior art. Amendment rather than protracted argument should be the answer to genuine difficulties of interpretation in all aspects of the examination and opposition procedure.

The strict approach advocated in T 1279/04 does not strike me as being commonly applied.

The position that first instance departments are officially supposed to follow (Guidelines for examination, F-IV, 4.2) seems somewhat more flexible. It refers to the description and drawings in the context of “particular cases“, where “the description gives the words a special meaning“. Otherwise, reference is more generally made to the meaning that words “normally have in the relevant art“, and to the necessity of attempting “to make technical sense out of” the claim.

And in practice, I feel that most of the time parties as well as the EPO tend to turn first and foremost to the description when interpreting the claims – and not just in particular cases when there is a special definition in the spec.

So, back to today’s decision T 1871/09, which sheds another interesting light on claim interpretation in view of the description.

The Board provided extensive general remarks on claim interpretation, and then applied their approach to the case at hand, where several terms raised interpretation issues.

A first important point is that the Board followed the approach adopted in T 556/02, per which reliance on the description and drawings to interpret the claims is justified by a general principle of law:

The Board was confronted with diverging argumentations from the parties regarding the meaning that the claims should have, and in particular some concepts that they refer to. The Board endeavored to look at the specification of the patent taken as a whole for the meaning that the skilled person would give to them. The Board applied a general principle of interpretation, of which Article 69 EPC is only an illustration, per which a part of a document cannot be interpreted independently from its context, and to the contrary the entirety of the document should be taken into consideration, when looking for the meaning of a certain statement which is made. […] Therefore, even if the provisions of Article 69 EPC on the scope of protection do not […] apply to departments ruling on opposition cases, the principle set out in this article is nevertheless applicable (reasons 3.1 – this passage and the following ones were freely translated from the French original version).

This makes sense and is a nice way to justify what most people would intuitively think is right – even if not explicitly enshrined in the Convention – i.e.: do not read the claims in isolation without considering the rest of the patent.

In the next paragraph, the Board recalled that the reader is the skilled person, and that he/she is the one supposed to interpret the claims. This is a very classical statement.

Then, the Board went on to warn that:

The interpretation principle recalled here applies to all, that is not only the opponents but also the patent proprietor, and third parties as well. The patent proprietor cannot possibly attribute a meaning to the terms that are used or to the features recited in a claim which the general context does not really make it possible to establish. It is thus not justified in this respect to rely on one passage of the description instead of another, so as to give a particular color to some terms that are used (reasons, 3.3).

So, patentees have to deal with their description as a whole. They cannot rely on just one paragraph which may support their preferred interpretation, without looking at other paragraphs which provide a different view.

And then comes the last bit of the general remarks, which is probably the most interesting one:

That said, the specificity of a patent specification should not be forgotten, that is the claims are supposed to generalize particular embodiments effectively disclosed in the patent specification. To which extent this specificity plays a role in the interpretation depends on the case. In this respect, some aspects such as the purpose of the invention and the number of examples are especially relevant. But it remains that the terms chosen in the claims are supposed to have been selected to serve this objective of generalization of particular embodiments. As a consequence, when the patentee omits, voluntarily or not, to define some concepts, or accepts that certain ambiguities remain in the patent description related to the request at stake, they cannot validly hide behind a limitative interpretation of the terms of the claim, at least insofar as the general interpretation which is retained makes sense on the technical standpoint and is consistent with the general teaching of the patent (reasons, 3.4)

Oftentimes in opposition proceedings, a patent proprietor would like a narrow interpretation of the claims to be used – in order to resist novelty and inventive step challenges.

One important consideration may however play against this defense: by nature and by function, claims are supposed to be more general than the embodiments disclosed in the description. Therefore, the fact that the description offers a narrow illustration of the claims may not by itself validly support the narrow interpretation of the claims. Or, to put it otherwise, the scope of the claims cannot be assumed to be limited by the “scope” of the description.

These principles were applied by the Board to the case at hand a number of times.

Claim 1 of the main request (patent as granted) read as follows:

Spectral content enrichment process of a signal having an incomplete spectrum including a first spectral band, the process consisting of the following stages:
– at least one transposition of the spectral content of the said first band into a second spectral band not included in the said spectrum in order to generate a transposed spectrum signal of restricted spectrum, to the said second spectral band;
– transformation of the spectrum of the signal with the transposed spectrum to obtain an enrichment signal;
– combination of the incomplete spectral signal and of the enrichment signal to produce an enriched spectral signal;
characterized in that the generation of the transposed spectral signal includes a whitening stage of the said spectral content such that the spectrum of the signal to the transposed spectrum is a whitened version of the said spectral content.

A device with spectral bands.
A device with spectral bands.

Novelty of this claim over a prior art document D1 was discussed. The two patent proprietors argued that the document did not disclose a process wherein the second spectral band is “not included” in the spectrum.

Remarkably, the Board rejected both the interpretation of the term “included” offered by the patent proprietors and the one offered by one of the opponents. The opponent had put forward a mathematical definition of the term. But the Board held that this “turns out to be too theoretical and does not take into account the content of the specification of the patent, where nothing suggests that these usual terms should be given a particular mathematical meaning” (reasons, 5.3.1).

As for the patent proprietors, their position was that the first and second spectral bands should necessarily be adjacent or separated. The argument was based on two embodiments in the description corresponding to these two possibilities. But the Board decided that the claim could not be interpreted in such a restrictive manner:

The passages of the patent relating to these embodiments are very general and do absolutely not suggest that the disclosed solutions are the only ones which can be contemplated. Therefore, in the absence of indications in the patent as to the meaning which the concept of inclusion should have, and taking into account the fact that claims are meant to generalize the teaching of the disclosed embodiments, the Board considers that the expression “not included” should be given a general meaning. The formulation used can thus not be interpreted as excluding the partial superposition of spectra of the initial and transposed signals (reasons 5.3.1). 

A second point of interpretation concerned the concept of “whitening“, which had to be compared with the notion of sub-band energy equalization in the prior art. The patent proprietors submitted that “whitening” the signal meant making the peaks of the spectral envelope more uniform, which was different from sub-band energy equalization.

Even though the other parties did not directly criticize this definition of whitening, the Board was not fully satisfied, because the definition “is not devoid of ambiguity” (reasons, 5.3.2). Then followed a detailed technical discussion showing that since the notion of spectral envelope is not clearly defined, there are many different ways to whiten the signal according to this broad definition. One of the opponents had filed an example showing that a sub-band energy equalization was tantamount to one possible form of whitening, and the Board was convinced by the demonstration.

One important last argument was discussed in this respect. Claim 1 called for one step of transposition and one step of transformation, the whitening being part of the transposition step, and being therefore before the transformation step. But in the prior art document, the whitening discussed above took place at the same time as the transformation. So, on the face of it, there was a difference between the process of claim 1 and that of the prior art.

But the Board decided that claim 1 should be interpreted more broadly than its literal wording, in view of the description:

When the granted patent is taken into account, this however leads to a generalization of the claimed process beyond its literal interpretation. Indeed, paragraph [0033] of the patent mentions the possibility of whitening and filtering in one operation by a transfer function filter equal to the product of the respective transfer functions of the whitening filter and of the transformation filter. It is unfortunate that the version of the description was not adapted to the version of the claims considered patentable by the Examining division and results in what is above all a problem of clarity of the claimed process. The version of the patent is however the entire responsibility of the appellant. Although no clarity objection […] can be raised against the granted version of the patent […], the patent proprietors must nevertheless accept that any contradiction, ambiguity or imprecision may be used by the opponents who can in particular rely on the extended scope of the claims made possible by such circumstances. In the present case, the argument that D1 reproduces the process of claim 1, as interpreted in the light of the description, is thus justified. 

All in all, this decision is actually a serious warning to applicants, who must carefully check whether the description is consistent with the claims, bearing in mind that:

  • On the one hand, the fact that the description discloses specific embodiments cannot by itself justify a narrow interpretation of the claims, since the function of the claims is such that they are supposed to be broader than these embodiments.
  • On the other hand, if the invention appears to be somewhat broader than the claims literally imply, based on the description (for instance because the description was not properly adapted to amended claims), then the claims may need to be reinterpreted in a broader manner.

Readers interested in the outcome of the case will have to wait a few more years, since the Board remitted the case to the first instance for further prosecution on the basis of an auxiliary request, after admitting new relevant documents into the proceedings.

As a final remark, there has been a long-standing tradition for French courts to rely a lot of the description and drawings to come up with their own understanding of what the invention really is about – irrespective of the exact wording used in the claims.

Does the French nationality of the patent proprietors explain why such a large part of the legal discussion in this case revolved around claim interpretation in view of the description? Possibly, but it seems that the description did little to help them in Munich after all.

CASE REFERENCE: Board of Appeal 3.4.01, T 1871/09, Orange et al. v. Stefanie Kremer et al., November 24, 2015.