The first decisions of the UPC have been handed down, and it will be exciting to learn the position of the UPC regarding the much-discussed issues of claim interpretation, the burden of presentation and proof for facts, and also regarding inventive step considerations.
1. Claim interpretation – introduction and comparison with the EPO
It is an ongoing debate in proceedings before the EPO, to what extent the description should be considered for claim interpretation, and the underlying legal basis, if any.
In decision T 1473/19, the Board of Appeal (BoA) came to the conclusion that Art. 69 EPC in conjunction with Art. 1 of the Protocol for its interpretation can be relied upon regarding claim interpretation and determining the claims’ scope, both in examination proceedings and in opposition proceedings. Further, although according to Art. 69 EPC, 2nd sentence, description and drawings shall be used to interpret the claims, there is still the primacy of the claims (1st sentence of Art. 69 EPC, according to which the extent of the protection covered by a European patent or patent application shall be determined by the claims), which sets the limits for interpreting claim features.
It was further decided that the description may additionally be consulted to further interpret the claim, even if the claim is clear from itself.
However, as an unambiguous (clear) claim wording must be given priority over the description for interpretation of claim features because of the “primacy of the claims”-principle, consulting the description for claim interpretation is eventually only possible for ambiguous claim features.
In T 0169/20, the Board concluded that the provisions of Art. 84 EPC, particularly 2nd sentence of Art. 84 EPC, and Rules 42 and 43 EPC provided an adequate legal basis for claim interpretation when assessing patentability. Art. 69 EPC was only used to determine the scope of protection for the purpose of examining conformity with Art. 123(3) EPC, and in infringement proceedings (contrary to T 1473/19). The Board further concluded that “if the wording of a claim is clear and technically reasonable in itself, it is neither necessary nor justified to interpret it in the light of the description. In particular, the support of the description should not be used for restricting or modifying the subject-matter of the invention beyond what a skilled person would understand when reading the wording of the claims, for example by excluding interpretations which are both reasonable and technically sensible within the relevant technical context.“ (underlining added).
In summary, although both exemplary decisions of the Boards of Appeal of the EPO apply a different legal basis (Art. 69 EPC in conjunction with Art. 1 of the Protocol thereto, and Art. 84 EPC in combination with Rules 42 and 43 EPC), the outcome is similar: It is the wording of the claims which defines the claimed subject-matter, and the description may only be used to interpret ambiguous features.
Now the UPC handed down the first orders, and it will be interesting to see the position of the UPC regarding claim interpretation:
In decision UPC_CoA_335/2023 (rectified), the Court of Appeal (CoA) of the Unified Patent Court (UPC) decided that “the patent claim is not only the starting point, but the decisive basis for determining the protective scope of a European patent under Art. 69 EPC in conjunction with the Protocol on the Interpretation of Art. 69 EPC.” (Headnote 2, 1st sentence). Further, the CoA of the UPC came to the remarkable conclusion that “the description and the drawings must always be used as explanatory aids for the interpretation of the patent claim and not only to resolve any ambiguities in the patent claim.” (emphasis added; Grounds for the Order, 5.d) aa); 3rd paragraph). This is different from the position of the EPO’s BoA, which held that consulting the description for claim interpretation is only possible for ambiguous claim features. The CoA of the UPC further stated that it is the aim of the claim interpretation to “combine adequate protection for the patent proprietor with sufficient legal certainty for third parties.” (Grounds for the Order, 5.d) aa), 6th paragraph).
In decision UPC_CoA_335/2023, the CoA held that some of the features of claim 1 required interpretation, such as the feature “cell or tissue sample”. This point was actually relevant in the court proceedings, because interpreting this feature was relevant in assessing substantive patentability, notably by questioning: can a sample extracted from a cell or tissue but bound to a support be considered as the claimed “cell or tissue sample”? According to the CoA, the feature required that a cell or tissue sample is to be understood as a sample which is still recognisable as a cell or tissue. Additionally, the CoA additionally consulted the description which supported this understanding.
To sum up, the CoA of the UPC takes the position that based on Art. 69 EPC in conjunction with the Protocol on the Interpretation of Art. 69 EPC the description must always be considered for claim interpretation, not only if claim features are ambiguous.
2. The burden of presentation and proof for facts in preliminary injunctions
Pursuant to Rule 205 et seq. RoP, the order for provisional measures is issued by way of summary proceedings (commonly also referred to as preliminary injunction (PI) proceedings) in which the opportunities for parties to present facts and evidence is limited.
Up to now, national law and practice on PI proceedings were quite distinct among European countries, and even in German practice there was no harmonized approach [1].
According to the CoA, on the one hand, the standard of proof must not be set too high, in order to avoid irreparable harm to the patent proprietor that can result from delay, but on the other hand, it must not be set too low in order to prevent the defendant from being harmed by an order for provisional measure that is revoked at a later date.
According to R. 211.2 RoP, the applicant may be “required to provide reasonable evidence to satisfy the Court with a sufficient degree of certainty that the applicant is entitled to commence proceedings pursuant to Article 47, that the patent in question is valid and that his right is being infringed, or that such infringement is imminent.”
The CoA now held that such a “sufficient degree of certainty requires that the court considers it at least more likely than not that the Applicant is entitled to initiate proceedings and that the patent is infringed. A sufficient degree of certainty is lacking if the court considers it on the balance of probabilities to be more likely than not that the patent is not valid.” (Grounds for the Order, 5. a) 4th paragraph).
Hence, the CoA for the UPC ruled a “balance of probability“ assessment. In case it is more likely that a patent is invalid, a PI shall fail. This concept boils down to the “simple” question: is it more likely that the patent is held not novel or not inventive? In this case, the UP court shall not grant a PI in patent infringement proceedings.
This decision hence provides a common standard under the UPC, distinct from various conflicting decision among national courts.
3. Inventive step considerations before the UPC
In the case at issue, UPC_CoA_335/2023, the CoA came to the conclusion that it is more likely than not that the subject-matter of claim 1 will prove to be obvious. Interestingly, by this decision the CoA overruled the opposite finding of the court of first instance on that part.
The CoA based its conclusion on the finding that the only difference between the relevant prior art document D6 and claim 1 was that D6 did not disclose the feature that the method of claim 1 is intended to detect a plurality of analytes in a cell or tissue sample. Rather, D6 disclosed a method that was intended to detect “amplified DNA molecules” (ASMs), which were not present in a cell or tissue sample, and which would not be regarded by a skilled person as a cell or tissue sample within the meaning of the patent. Hence, novelty was acknowledged.
Regarding inventive step, the CoA further stated that a skilled person seeking to develop high-throughput optical multiplexing methods for detecting target molecules in a sample would have considered D6, as this document disclosed a method for detecting a plurality of ASMs. Starting from this document and having in mind that at the priority date there was a demand for multiplex analysis techniques, a skilled person would also consider transferring the method of D6 to an in situ environment, as evidenced by a further document (B30). Remarkably, in the reasoning why a skilled person, being confronted with difficulties, would not have been prevented from carrying out tests due to insufficient prospects of success, the CoA refers to the Swedish Intellectual Property Office Consulting Report (B10, p. 5).
The CoA concludes that it is more likely than not that the patent at issue will prove to be invalid in proceedings on the merits due to a lack of inventive step and rules that there is no sufficient basis for the issuance of a preliminary injunction.
Take home message:
[1] GRUR 2022, 811 – Phoenix Contact/Harting
Munich District Court:
Decisions of September 29, 2022, Az. 7 O 4716/22; and October 27, 2022, Az. 7 O 10295/22:
European patents and also the German parts of European patents are presumed to be valid from the date of publication of their grant
Düsseldorf District Court:
Decision of September 22, 2022, Az. 4 b O 54/22:
Questions presumption of validity of European patents and also the German part thereof
[2] German Supreme Court, BGH – Fulvestrant (X ZR 59/17; Headnotes)
