6. Interpretation of claims
According to the established case law, the skilled person should try, with synthetical propensity, i.e. building up rather than tearing down, to arrive at an interpretation of the claim which is technically sensible and takes into account the whole disclosure of the patent. The patent must be construed by a mind willing to understand, not a mind desirous of misunderstanding (see inter alia T 190/99, T 920/00, T 500/01, T 749/03, T 405/06, T 2480/11, T 2456/12, T 383/14, T 1477/15, T 448/16).
According to T 2764/19, claims of a European patent application are typically directed to a reader skilled in the field (and aware of the respective terminology) of that application. Given that such a technically skilled reader does not normally need any further description-based guidance, claims should essentially be read and interpreted on their own merits, rather than with the aid of the description and drawings (see e.g. T 223/05, T 1404/05, T 1127/16). The wording of the claims should typically be given its broadest technically sensible meaning by such a skilled reader. See also the decisions in this chapter II.A.6.3. "Using description and drawings to interpret the claims".
A considerable number of decisions have held that the skilled person, when considering a claim, should rule out interpretations which are illogical or which do not make technical sense (see inter alia T 190/99, T 552/00, T 920/00, T 1023/02, T 749/03, T 859/03, T 1537/05, T 1204/06, T 681/15). Some decisions (T 1408/04, T 1582/08, T 493/09, T 5/14, T 2110/16) have emphasised that this is understood to mean only that technically illogical interpretations should be excluded. A mind willing to understand does not require that a broad term need be interpreted more narrowly (even if, as in the case underlying T 1408/04, the narrower interpretation would refer to a structure which is very common, but not exclusive, in the technical field concerned).
In T 1771/06 a claim specifically referred with closed language to the characterising part (GBSS gene fragment in the antisense direction) of the gene construct and, in an attempt to generalise, left open other structural elements necessary to operate the system ("comprising a fragment ... which codes for ...., said fragment consisting of a nucleotide sequence selected from ... SEQ ID No: ..."). According to the board this was not an unusual claim formulation. The board did not accept the appellant's argument that the scope of the claim extended to gene constructs which comprised any DNA in addition to the GBSS gene fragments. The skilled person would certainly take into account the fact that the gene construct was made for the purpose of introducing the GBSS DNA fragment into the potato cells and integrating it into the genome. Accordingly, the gene construct would be thought to contain all necessary DNA elements for these steps to take place.
In T 409/97 the board held that an erroneous statement in the introduction to the description was of no assistance in interpreting the claim and establishing the subject-matter for which protection was being sought, where this statement contradicted its actual content.
Two methods having no technical bearing on each other cannot form a single multi-step process (i.e. a "technical whole") even though they are linguistically linked together in a claim (T 380/01).
A prerequisite for arriving at a technically sensible claim interpretation is that the claim is technically consistent: if two features are separately clear, but inconsistent with each other from a technical point of view, then their combination, and the claimed matter, cannot be clear (T 935/14).
In T 1513/12 the board noted that an interpretation of a claim agreed by the parties to the proceedings was not to be regarded as binding on the board: the "principle of party disposition" was not to be understood as meaning that the parties to the proceedings could choose an interpretation of the patent which, although it might be satisfactory for them, might have implications for others not party to the proceedings.
In T 1603/13 the board stated that claims could not be interpreted in a manner that would contradict the idea of the invention as disclosed in the original application. The case law on correction of errors on the basis of the common general knowledge could not be extended to cases where the deviation from the common general knowledge and in particular from generally accepted laws of physics in the description had been deliberately chosen in order to describe the invention and thus could not be identified as an error.
See also chapter I.C.8.1.3 c) "Interpretation of process claims".
- T 1924/20
Catchword:
As to claim construction, see point 2.7 of the Reasons.
- T 1553/19
Catchword:
The normal rule of claim construction of reading a feature specified in a claim in its broadest technically meaningful sense corresponds to determining the broadest scope encompassed by the subject-matter being claimed according to a technically sensible reading. In the case of a feature defined in a positive manner, which imposes the presence of a specific element, this is effectively achieved by giving to the element in question its broadest technically sensible meaning. However, for a feature defined in a negative manner, which excludes the presence of a specific element, the broadest scope of the claim corresponds to the narrowest (i.e. most limited) technically sensible definition of the element to be excluded. (Reasons, point 5.7)
- Annual report: case law 2022
- Summaries of decisions in the language of the proceedings