Claim interpretation is often a major issue in patent infringement or invalidity litigation. After a year and a half of existence, the Unified Patent Court (“UPC”) has published several decisions that provide a better understanding of its method of claim interpretation. It appears that the wording of the claim considered as a whole is decisive and that the description and drawings must always be taken into account. The question of whether the file wrapper should be considered is still awaiting clear arbitration by the Court of Appeal.
Reference decisions of the UPC Court of Appeal regarding claim interpretation
In the decision NanoString Technologies v. 10xGenomics, the UPC Court of Appeal clarified the standard applicable for interpreting patent claims, based on Article 69 of the European Patent Convention (“EPC”) and its Protocol, for the purposes of both infringement and validity assessments.
This decision, the first on appeal to address the scope of rights in both infringement and validity matters, has set a significant precedent, as it has since been consistently cited in on-the-merits decisions by local divisions.
The influence of this case law is expected to extend even to EPO practice. Indeed, the referral to the Enlarged Board of Appeal G 1/24 of 24 June 2024 (decision pending) specifically references this decision and raises the question of claim interpretation under Article 69 EPC for assessing a patent’s validity under Articles 52 to 57 EPC (which cover aspects such as novelty and inventive step of the claims).
The referral concerns, among other things, whether it is necessary to systematically refer to the description or only when a claim term is unclear or ambiguous on its own. In its preliminary opinion, the Enlarged Board of Appeal of the EPO recognises the importance of harmonizing practices of the EPO, the UPC and national Courts regarding the interpretation of claims. However, it qualified the decision in NanoString Technologies v. 10xGenomics by stating that the description and figures may (and not “always must”) be considered when interpreting claims. This would finally confirm the EPO’s abundant case law, which applies a case-by-case approach to the issue.
The entire article can be read here.
