Düsseldorf, July 11, 2024 – As a result of the ruling T 439/22 handed down on June 24, 2024, the Enlarged Board of Appeal of the European Patent Office (EPO) will address the matter of whether and to what extent the remaining disclosure of a patent can or should be used to interpret patent claims to assess patentability. For example, for a term in a patent claim that has a clear definition in the industry, can or should the remaining part of the patent be taken into consideration to give this term a different definition (to the industry norm)? In other words, can a patent also serve as its own dictionary?
There are clear answers to these questions when it comes to determining the scope of protection of a patent, but not for assessing protectability. “Clarification from the Enlarged Board of Appeal would be helpful in terms of assessing whether a patent claim ‘survives’ opposition proceedings,” says Mathias Karlhuber, patent attorney and partner at Cohausz & Florack (C&F).
The case concerned a patent held by tobacco manufacturer Philip Morris for a smoking product (EP3076804). In the opposition proceedings, the competent Board of Appeal of the EPO had to decide whether the description of the patent should be used to change the definition of “gathered” tobacco from the definition known from the prior art. The Board of Appeal referred the case to the Enlarged Board of Appeal. This is the highest judicial authority of the EPO’s independent jurisdiction and frequently ensures the uniform application of the European Patent Convention (EPC).
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