Overview
In its first substantive decision back in February 2024, the UPC Court of Appeal (CoA) signalled the UPC’s likely approach to claim interpretation with respect to both validity and infringement, and various decisions have touched on this issue. In parallel, the principles of claim interpretation are a hot topic at the European Patent Office (EPO), which deals with validity only, with allegedly divergent case law leading to a referral to the Enlarged Board of Appeal.
Divergent approaches to claim interpretation at the EPO
The Technical Board of Appeal in T 439/22 has referred questions to the Enlarged Board of Appeal of the EPO as to whether the description and the drawings should be consulted when the claim language is clear.
The potential for divergence comes with reference to Articles 69 and 84 EPC. Article 84 EPC specifies that the claims “define the matter for which protection is sought” and that the claims shall be “supported by the description”. The scope of protection conferred by a European patent is set out in Article 69(1) EPC as being “determined by the claims” but that “[n]evertheless, the description and drawings shall be used to interpret the claims”. Further, Article 1 of the Protocol on Interpretation of Article 69 EPC explains that:
“Article 69 should not be interpreted as meaning that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Nor should it be taken to mean that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patent proprietor has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties.”
However, defining said position between these extremes has been a cause for uncertainty in EPO proceedings.
T 439/22 refers to the “classical approach” of the Boards of Appeal of the EPO, which is to consult the description and drawings for clarification only where the wording of the claims is not clear. For example, in decision T 0169/20, an EPO Technical Board of Appeal determined that sufficient legal basis for interpreting the meaning of the claims for patentability could be found in Article 84, Rule 42, and Rule 43 EPC, with Article 69 EPC only being relevant when considering infringement (which the EPO does not decide on). In older decision T 0223/05, a Board found that the Protocol on Interpretation of Article 69 EPC does not provide legal basis for excluding the literal meaning of the claims. In T 1924/20, a different Board found that the proprietor’s inventive step arguments, which were based on a claim construction that was based on the description, were unconvincing- stating that, “when interpreting the claims, the description and drawings cannot be relied on as a sort of fall-back or supplementary-guidance tool for filling up gaps or for resolving inconsistencies in a claim to the patent proprietor’s advantage”.
However, other EPO Boards of Appeal appear to have taken a more “holistic” approach to claim interpretation which considers the invention in the context provided by the description and drawings from the outset. In decision T 556/02, the Board opined that any interpretation of the claims contrary to the unequivocally clear teaching of the description and drawings could not be accepted (though in that case it appeared to interpret the claims on their face and disagreed with the opponent that the resulting interpretation was inconsistent with the description). This early case and others were cited in a more recent decision (T 1473/19) where the Board concluded that “Article 69 EPC in conjunction with Article 1 of the Protocol can and should be relied on when determining the claimed subject-matter in proceedings before the EPO”, effectively stating that the description and drawings should generally be taken into account when determining the meaning of a claim.
This uncertainty surrounding claim interpretation in relation to patentability is relevant to the ongoing proceedings in appeal T 439/22. The Board in that case has therefore referred the following questions to the Enlarged Board of Appeal to clarify this apparently divergent case law:
- 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? [see Reasons, points 3.2, 4.2 and 6.1]
- 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? [see Reasons, points 3.3, 4.3 and 6.2]
- 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? [see Reasons, points 3.4, 4.4 and 6.3].
If the referral is admissible, these questions will form the basis of Enlarged Board of Appeal decision G1/24, and could have far-reaching implications at the EPO, at the UPC, and in the national courts.
The UPC’s approach to claim interpretation at first instance and at the Court of Appeal
The UPC CoA overturned the decision of the Munich Local Division (LD) in case UPC CFI 2/2023 to grant 10x Genomics, Inc. (10x Genomics) and Harvard University a preliminary injunction against NanoString Technologies (Nanostring) on the basis that the patent at issue was more likely than not to be invalid. The CoA and the Munich LD took similar approaches to claim interpretation but came to different conclusions on validity, and we are seeing the effects of the CoA’s guidance on claim interpretation in decisions from the first instance divisions of the UPC and from the EPO. However, first instance divisions still diverge on whether the prosecution history of the patent can be taken into account for claim interpretation.
10x Genomics’ application for provisional measures was successful at first instance
On the UPC’s first day of operation (1st June 2023), 10x Genomics filed an infringement action alleging that unitary patent EP 4 108 782 relating to DNA sequencing technology was being directly and indirectly infringed by NanoString, and applied for a preliminary injunction against NanoString.
Claim 1 of the contested patent is directed to “a method for detecting a plurality of analytes in a cell or tissue sample”. At the first instance proceedings, the parties disagreed on the interpretation of “cell or tissue sample” and so the LD deemed it necessary to interpret this term. After taking into account technical arguments from the parties and relevant passages of the patent’s description, the LD interpreted a “cell or tissue sample” narrowly as “a sample that is still recognizable as a cell or tissue”. The LD considered that “what is claimed is not the examination of genomic DNA isolated from a cell or tissue sample, but rather the examination of cell or tissue samples that contain such analytes”. This point of interpretation was relevant to the LD’s assessment of infringement and validity. In particular, the LD found that a particular prior art document was not an appropriate starting point for inventive step because it was “specifically not aimed at detecting a plurality of analytes in a cell or tissue sample”. The LD did not explain its rationale for referring to the description to interpret the claims beyond the fact that the parties disagreed.
The Munich LD ultimately found that the contested patent was more likely than not to be valid and granted the PI against NanoString, resulting in an immediate ban on sales of NanoString’s products in the current 17 UPC member states. NanoString then appealed this decision on several grounds, including that the LD had erred i) in its narrow interpretation of the claims and ii) in assuming EP4108782 was likely to be valid.
A successful appeal by NanoString
On its review of NanoString’s appeal, the UPC Court of Appeal (CoA) in Luxembourg issued its first substantive decision on 26th February 2024 (UPC_CoA_335/2023). The CoA overturned the LD’s decision to grant the preliminary injunction to 10x Genomics on the basis that it was more likely than not that claim 1 would be invalid over the prior art. In doing so, it provided explicit guidance on claim interpretation, citing Article 69 EPC and the Protocol on its Interpretation as justification for the use of the description and drawings to interpret the claims:
“The patent claim is not only the starting point, but the decisive basis for determining the protective scope of a European patent under Art. 69 EPC in conjunction with the Protocol on the Interpretation of Art. 69 EPC.
The interpretation of a patent claim does not depend solely on the strict, literal meaning of the wording used. Rather, the description and the drawings must always be used as explanatory aids for the interpretation of the patent claim and not only to resolve any ambiguities in the patent claim.
This does not mean that the patent claim merely serves as a guideline but that its subject-matter also extends to what, after examination of the description and drawings, appears to be the subject-matter for which the patent proprietor seeks protection.”
The CoA did not explicitly disagree with the LD’s approach to the interpretation of various features in the claims and agreed on its narrow interpretation of the term “analytes in a cell or tissue sample” based on the wording of the claims and the description which distinguished between the analytes to be detected and the cell or tissue sample. Notwithstanding the narrow interpretation, the CoA disagreed with the LD on inventive step. According to the CoA, the skilled person would have been motivated to transfer and adapt the prior art method, which was performed on analytes isolated from a cell, to detect analytes in a sample still recognizable as a cell or tissue as in the patent. The CoA found that “it is more likely than not that the patent at issue will prove to be invalid in proceedings on the merits due to a lack of inventive step”.
The CoA considered that on the “balance of probabilities” standard required to grant a preliminary injunction, the patent was more likely than not to be found invalid. It therefore did not need to decide on whether it was infringed. However, the CoA explicitly stated that “these principles for the interpretation of a patent claim apply equally to the assessment of the infringement and the validity of a European patent”.
Implications of the CoA decision
The principles on claim interpretation endorsed by the UPC’s CoA align with the “holistic” approach taken by several EPO Boards of Appeal and by e.g. German national courts, with the description and drawings of the granted patent likely to be taken into account when interpreting the claims. Therefore, applicants may increasingly wish to consider carefully how they adapt the description of any European applications which will fall within the UPC’s jurisdiction as granted patents – especially if contentious proceedings are likely.
As mentioned above, the CoA has stated that these principles for claim interpretation apply to both validity and infringement. These principles will also be relevant to parties considering their likely freedom to operate in the UPC’s jurisdiction and when filing pre-emptive “protective letters” at the UPC against any future applications for provisional measures (for more detail on protective letters, see our article here) .
Claim interpretation can, of course, be critical when examining the validity of a patent. The more “holistic” approach the CoA has set out, which takes into account the patent’s description, arguably provides more scope for parties to consider a broader range of starting points for novelty and inventive step at the UPC. The Technical Boards of Appeal have taken note of this approach, citing the UPC CoA decision along with some of the EPO decisions we have discussed as support for interpreting the claims in the context of the description (see T177/22).
Divergent UPC case law on ‘file wrapper estoppel’
It remains to be seen whether the UPC’s judges will additionally take the prosecution history (‘file wrapper’) into account for claim interpretation. Decisions from the Munich and Dusseldorf LDs to date appear to diverge on this point.
Before granting an application for provisional measures to Ortovox Sportartikel GmbH against Mammut Sports Group (UPC CFI 452/2023) last December, the Dusseldorf LD found that statements made by the patentee in the patent granting procedure are not, by law, admissible material for interpretation and are generally not be taken into account in the context of patent interpretation,. The Dusseldorf LD (in a partially different composition) then reiterated its approach in a recent decision (UPC_CFI_463/2023).
Conversely, when refusing SES-imagotag SA’s application for provisional measures against Hanshow Technology Co. Ltd (UPC CFI 292/2023) the Munich LD used the original wording of the claims in the application as filed and amendments made during prosecution before the EPO to aid in claim interpretation when assessing infringement. The CoA recently upheld the Munich LD’s decision and dismissed SES-imagotag SA’s appeal (UPC_CoA_1/2024), again adopting the “holistic” approach to claim interpretation in accordance with Article 69 EPC and referencing to the principles outlined in its earlier decision in 10x Genomics v. Nanostring (UPC_CoA_335/2023). However, the CoA interpreted a particular feature in the claims “based on the wording of the claim, read in the light of the description and drawings from the perspective of a person skilled in the art based on their common general knowledge, without having regard to the prosecution history of the patent” (paragraph 37 of the decision). The CoA explicitly stated that it did not need to address the question of whether the prosecution history can be taken into account when determining the scope of protection of a European patent, at least partly because in its view, the parts of the file history cited to the parties did not “shed any new light on this [claim] interpretation”.
Future developments
The principles on claim interpretation endorsed by the UPC’s CoA should be applied in future UPC proceedings – both at first instance in the Local, Regional and Central Divisions and at the CoA. Although the CoA has provided parties with largely clear guidance, some uncertainty remains. The Munich LD will hear 10x Genomics and NanoString again in the main proceedings for infringement and validity of EP 4 108 782, and it will be interesting to see how these principles are applied in proceedings on the merits.
NanoString has also filed the CoA’s order in the parallel EPO opposition proceedings on the contested patent. Given that the CoA has, apparently, adopted the “holistic” approach to claim interpretation, it will be interesting to see whether the EPO’s Opposition Division follows this approach or takes the “classical approach”, which could lead to a broader interpretation that includes isolated analytes. It will also be interesting to see whether the EPO applies its inventive step analysis under the problem-solution approach in the same way as the UPC CoA.
There is clearly potential for the UPC and the EPO approaches to claim interpretation to diverge, but also the opportunity for harmonisation. Encouragingly, we have seen EPO appeal boards citing UPC jurisprudence on claim interpretation, e.g. in T 439/22 and in T439/22, the latter being the decision referring questions to the Enlarged Board. Guidance from the Enlarged Board of Appeal will likely take a couple of years to arrive, and the President of the EPO has indicated that examining and opposition division proceedings should not be stayed pending the outcome of the referral, so parties will likely to continue to rely on the case law most favourable to their situation. At the UPC, with claim interpretation a live issue and ever more substantive decisions to be expected in coming months, we can expect further clarity on its approach and alignment of the first instance divisions. Users of the European patent system can hope for clarity and certainty on the horizon.
