The Enlarged Board of Appeal of the European Patent Office (EPO) recently issued a landmark decision in G 1/24 addressing a fundamental question in European patent law: how should patent claims be interpreted when assessing patentability? As noted in our previous article on G 1/24, it will be interesting to see how Examining Divisions interpret the Enlarged Board of Appeal’s decision in G 1/24. The recent decision by an EPO Board of Appeal in T 1561/23 [1] provides the first indication of how the EPO Boards of Appeal will interpret the Enlarged Board of Appeal’s decision in G 1/24 [2].
T 1561/23 is an appeal against the refusal by the Examining Division of European Patent Application No. 17720035.9 (publication number EP3446216) “Real-time Environment and Programmable Logic Control”.
Background
The Enlarged Board of Appeal’s decision in G 1/24 concerned whether and how the description and drawings should be used in claim interpretation at the EPO. The Enlarged Board of Appeal in G 1/24 ordered that “The claims are the starting point and the basis for assessing the patentability of an invention under Articles 52 to 57 EPC. The description and drawings shall always be consulted to interpret the claims when assessing the patentability of an invention under Articles 52 to 57 EPC, and not only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation.”
T 1561/23
With respect to the present appeal, EP3446216 concerns a method of executing at least one additional function within a real-time environment, as well as to a programmable logic controller (PLC) which executes such a method. The control on a PLC takes place in the form of “tasks” which are processed within a specified task runtime. The method consists of fixed runtime tasks, where at least one additional function should be run in-between these tasks.
EP3446216 was rejected by the Examining Division on the grounds of added subject matter, lack of novelty, and lack of inventive step. The Applicant appealed against this decision.
A key issue in the appeal was in the interpretation of the claimed terms “task” and “additional function”. The Board of Appeal considered that neither the “tasks” nor the “additional functions” are further characterised according to the claims, leading to an objection based on lack of novelty. However, the Appellant argued that the description distinguishes between “tasks” and “additional functions”, providing a point of novelty over the cited prior art. The Appellant referred to the decision by the Enlarged Board of Appeal in G 1/24 when making their arguments.
However, the Board of Appeal noted that “Decision G 1/24 does not even explicitly require that the definition of a term from the description must be used to interpret the claim.” That is to say, whilst the Board of Appeal considered the description, they decided that it did not justify a narrower interpretation of the claim wording. In particular, the Board of Appeal considered the description to not have provided a definition for the terms at issue, with the Board of Appeal unable to find a definition that could distinguish between a ‘task’ and an ‘additional function’.
Final Thoughts
A takeaway from the present appeal, T 1561/23, is that whilst G 1/24 orders that the description should be “consulted” to interpret the claims, it remains to be seen how Boards of Appeal interpret the meaning of ‘consult’. Going forwards, it will also be of interest to see how the Examining Division interprets G 1/24 and in what way this will affect the interpretation of claims at the EPO.
Our article on the Enlarged Board of Appeal decision in G 1/24
[1] https://www.epo.org/de/boards-of-appeal/decisions/t231561du1
[2] https://www.epo.org/en/boards-of-appeal/decisions/g240001ex1