Rivendicazioni e descrizione nell’interpretazione del brevetto

Europeran Patent Office, Board of appeal, 28.-09.2023, case numeber T 0447/ 22 – 3.2.05, Patent Proprietor: Picote Solutions Oy Ltd , § 13.1 Reasons, p. 43 ss:

<<There is an extensive body of case law of the Boards of
Appeal according to which, within certain limits, a
claim may be interpreted with the help of the
description and the drawings for understanding the
subject-matter to be assessed under the requirements of
the EPC.
It is a general principle applied throughout the EPC
that a term of a claim can be interpreted only in
context. The claims do not stand on their own, but
together with the description and the drawings they are
part of a unitary document, which must be read as a
whole (see e.g. T 556/02, Reasons 5.3; T 1646/12,
Reasons 2.1, T 1817/14, Reasons 7.3, and T 169/20,
Reasons 1).
The extent to which description and drawings can
provide an aid to interpret the claims is however
subject to certain limitations.
A decision often cited in this context is T 190/99,
which in point 2.4 of the Reasons states that the
skilled person when considering a claim should rule out
interpretations which are illogical or which do not
make technical sense. He 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
The present board concurs with T 1408/04 (Reasons 1)
that this statement must be understood to mean only
that technically illogical interpretations should be
excluded (see also T 1582/08, Reasons 16, and T 169/20,
Reasons 1.3.3). A claim can thus be interpreted in the
light of the description and the drawings to the extent
that they contain logical and technical sensible
Furthermore, interpreting the claims in the light of
the description and the drawings does not make it
legitimate to read into the claim features appearing
only in the description or the drawings and then
relying on such features to provide a distinction over
the prior art. This would not be to interpret claims
but to rewrite them (see T 881/01, Reasons 2.1). In this context, it is important to differentiate between a claim consisting of terms with a clear technical
meaning and an unclear claim wording. The preparatory
material available on the discussions leading up to the
European Patent Convention shows that even in the
framework of Article 69 EPC and its Protocol on
Interpretation (see for instance Armitage, “Die
Auslegung europäischer Patente”, in GRUR Int. 1983,
242; Decker in Stauder/Luginbühl, “Europäisches
Patentübereinkommen”, 9th edition, Art 69, marginal no.
22, with reference to Stauder, “Die
Entstehungsgeschichte von Art 69(1) EPÜ und Art 8(3)
StraßbÜ über den Schutzbereich des Patents”, GRUR Int.
1990, 793, 799), it was never the scope to exclude what
on the clear meaning was covered by the terms of the
claims. Accordingly, many decisions of the Boards of
Appeal have concluded that a discrepancy between the
claims and the description is not a valid reason to
ignore the clear linguistic structure of a claim and to
interpret it differently (see, for example, T 431/03,
Reasons 2.2.2; T 1597/12, Reasons 3.2.1; T 1249/14,
Reasons 1.5). 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 (T 1018/02, Reasons 3.8; T 1391/15,
Reasons 3.5). On a similar note, the board in T 197/10
(Reasons 2.3) held that, in the event of a discrepancy
between the claims and the description, those elements
of the description not reflected in the claims are not,
as a rule, to be taken into account for the examination
of novelty and inventive step>>.

(segnalazione di  Rose Hughes in IPKat)

Sul rapporto tra rivendicazioni e descrizione nella domanda brevettuale

Precisazioni sul tema dal Board of Appeal dell’ufficio europeo EPO 23.01.2023 , caso T 0169/ 20 – 3.3.06, application n° 13750929.5, Patent Proprietor: Reckitt Benckiser Vanish B.V. , Opponent: Henkel AG & Co. KGaA.

V. qui la pagina in epo.org nonchè il link diretto alla decisione.

Grazie a Rosie Hughes di IPKat per segnalazione e link.

Amgen c. Sanofi: la corte suprema sulla sufficiente descrizione di brevetto farmaceutico

Corte Suprema 18 maggio 2023, n°  21-757, Amgen c. Sanofi, su questione brevettual-farmaceutica di un certo interesse, relativa alla descrizione (<<(a) In General.— The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention>>, 35 US Code § 112; da noi art. 51 c.p.i.)

DAl Syllabus:

<<amino acid sequences of 26 antibodies that perform these two functions. Amgen then described two methods—one Amgen called “the roadmap”and a second it called “conservative substitution”—that scientists could use to make other antibodies that perform the binding-and-blocking functions described in the claims>>

E poi andando al giudizio:

<<(b) Turning to the patent claims at issue in this case, Amgen’s claims sweep much broader than the 26 exemplary antibodies it identifies bytheir amino acid sequences. Amgen has failed to enable all that it has claimed, even allowing for a reasonable degree of experimentation.Amgen’s claims bear more than a passing resemblance to the broadest claims in Morse, Incandescent Lamp, and Holland Furniture. While Amgen seeks to monopolize an entire class of things defined by their function—every antibody that both binds to particular areas of the sweet spot of PCSK9 and blocks PCSK9 from binding to LDL receptors—the record reflects that this class of antibodies does not include just the 26 that Amgen has described by their amino acid sequences, but a vast number of additional antibodies that it has not.
Amgen insists that its claims are nevertheless enabled because scientists can make and use every functional antibody if they simply follow the “roadmap” or “conservative substitution.” These two approaches, however, amount to little more than two research assignments. The “roadmap” merely describes step-by-step Amgen’s own trial-and-error method for finding functional antibodies. Not
much different, “conservative substitution” requires scientists to make substitutions to the amino acid sequences of antibodies known to work and then test the resulting antibodies to see if they do too.
Amgen’s alternative arguments lack merit. Amgen first suggests that the Federal Circuit erred by conflating the question whether an invention is enabled with the question how long may it take a person skilled in the art to make every embodiment within a broad claim. But the Federal Circuit made clear that it was not treating as dispositive the cumulative time and effort required to make the entire class of antibodies. Amgen next argues that the Patent Act supplies a single, universal enablement standard, while the Federal Circuit applied a higher standard to Amgen’s claims that encompass an entire genus of embodiments defined by their function. The Court agrees in principlethat there is one statutory enablement standard, but the Federal Circuit’s treatment in this case is entirely consistent with Congress’s directive and this Court’s precedents. Finally, while Amgen warns thata ruling against it risks destroying the incentives that lead to breakthrough inventions, since 1790 Congress has included an enablement mandate as one feature among many designed to achieve the balanceit wishes to strike between incentivizing inventors and ensuring thepublic receives the full benefit of their innovations. In this case, the Court’s duty is to enforce the statutory enablement requirement according to its terms. Pp. 15–19>>.

Si noti che la lite verteva sul requisito dell’ enablement (modalità attuative) che per legge integra la descrizione in senso stretto (da non espressamente richiesto).

V. commento di Rose Hughes su IpKat.

Per determinare l’ambito coperto dalle rivendicazioni, non conta la descrizione (secondo il Board of Appeal dell’EPO)

Dalla decisione del BoA dell’ufficio europeo, 16 marzo 2023, caso n° T 1924/ 20 – 3.5.03  (ne dà notizia Rose Hughes il 10 aprile u.s su IPKat):

<< 2.7     The respondent’s line of argumentation regarding E1’s
disclosure and inventive step concerning claim 8 hinged
upon a claim construction that was based on the
description of the opposed patent. The board holds such
a line of argumentation to be not convincing, given its
conviction that a skilled reader of a patent claim
would, for many reasons, interpret the claims based
essentially on their own merits (see e.g. T 2764/19,
Reasons 3.1.1; T 1127/16, Reasons 2.6.1). This is
because the “subject-matter of the European
patent” (cf. Article 100(a) EPC) is defined by the
claims and only by them. The description and drawings
are, however, typically used by the deciding body to
determine the above-mentioned “skilled reader” and,
hence, the view point from which the claims are
interpreted. This means 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. Such a reliance on the description and the
drawings by the patent proprietor will normally fail to

Qui il link diretto al pdf della decisione.

SEcondo il ns. art.  52.2 c.p.i. e il 69 della Conv. Europea (EPC), il ruolo della descrizione è solo interpretativo: <<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 >>.