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A Comma Commotion

An interesting recent decision handed down by the European Patent Office (EPO) Board of Appeal (BoA) has emphasised again the strict application by the EPO of the principle of law prohibiting added matter.

The case concerns an Opposition filed by Airbus SAS to a patent granted to The Boeing Company. A patent granted by the EPO may be opposed post-grant during a 9 month period starting from the grant date.

Aircraft communications

Patent EP 1798872 was granted in 2011 to a method of dealing with aircraft communications between and aircraft and a ground based station. The method allows transmissions and manages communications over and via the number of different networks that are theoretically available including satellite, GPRS, ground based etc.

The patent faced Opposition and the verdict, a decision revoking the patent was issued in 2016. An Appeal was filed and now the dismissal of the Appeal and completion of the process nullifying the patent has been issued. Overall a lengthy 9 year process!

Added matter

In short, the matter at issue was whether the claims contained subject matter which extended beyond the content of the application as filed, the so called ‘added matter’ objection of Article 123 (2) EPC.

The claims directed to handling aircraft communications included an evaluating feature provided as a list. The method steps could be interpreted in more than one way as the subsequent feature following evaluation was not separated from the evaluation list by a comma or other indication.

A comma can be used in English grammar to set out a subordinate clause and to delineate portions of a list. The absence of a comma in the claim here meant that the reader could take the subsequent feature of ‘identifying’ to be part of the continuing list, or to be a separate step, independent from the evaluation.

As there was no comma present the Opposition division found that the claim features should be read together. The combined features however were not disclosed or taught together in the application as filed and so the patent claim was invalid for added matter.

Auxiliary requests were made to attempt to clarity the position, and in some cases these included a comma but the clarification was too late. The requests were refused (under Article 123 (3) EPC) as extending the protection originally granted in the patent, also prohibited.

Definition of the scope of protection

It was argued at appeal that the skilled person looking at the claim would also look to the description to establish the scope of the claim and to address the issue that the method steps could be interpreted in more than one way. From there it was said that the identifying feature would be seen as a separate step. The Board of Appeal did not agree and considered that the claim alone should ‘essentially be read and interpreted on its own merits’.

The board’s reasoning relied on established case law (T 1018/02)

“… 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. This also applies if the feature has not been initially disclosed in the form appearing in the claim. Otherwise third parties could not rely on what a claim actually states.”

Also stating that ‘the fact that a claim of a patent is to be construed by a mind willing to understand and not a mind desirous of misunderstanding does not mean that the description and the drawings have automatically to be consulted when an “ambiguous” feature (i.e. a feature which at least theoretically allows more than one interpretation) occurs in the claim, or where the claim as a whole includes one or more inconsistencies, to resolve that ambiguity or inconsistency.’

Conclusion

The case is a reminder of the importance of claim writing and claim language and the strict interpretation and application of the rules of added matter (Article 123) at the EPO. The decision is in line with previous case law but does look to tighten up on ambiguous claims.

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