Introduction
The European Patent Office (EPO) Board of Appeal, in decision T 0438/22 addressed a significant issue regarding the presence of claim-like clauses in patent descriptions. The decision focused on whether such clauses lead to a lack of clarity as per Article 84 EPC, and the legal standing of the EPO Guidelines concerning the deletion of these clauses.
Summary of the Invention
The patent in question, EP 18211801.8, is owned by Intel Corporation and relates to a semiconductor package. The invention focuses on the architecture of a semiconductor die and a package that facilitates efficient coupling between multiple dies, allowing better functionality in semiconductor devices. The claims cover the structure and coupling mechanism between the electrical meshes and semiconductor dies to ensure proper functionality in electronic circuits.
Key Elements of the Decision
- Arguments of the Opponent and Patentee:
- The Examining Division rejected the patent application based on the presence of "claim-like clauses" in the description (pages 30-38). The division stated that these clauses led to unclarity regarding the scope of protection, as per Guidelines F-IV, 4.4 (March 2021 version).
- The Patentee (Intel Corporation) argued that there is no formal requirement in the European Patent Convention (EPC) or prior case law to prohibit claim-like clauses in descriptions. Intel emphasized that deleting such clauses would result in a loss of valuable disclosed subject matter that could be needed during opposition or national invalidation proceedings.
- Board of Appeal’s Decision:
- The Board sided with the Patentee, stating that there is no formal provision within the EPC that mandates the deletion of claim-like clauses from patent descriptions. The Board highlighted that examples in patent descriptions, even if in a claim-like format, should support the claims (as per Article 84 EPC).
- The Board also rejected the argument that the claim-like clauses in this case led to any lack of clarity regarding the scope of protection. It further emphasized that the Guidelines alone cannot impose mandatory deletion without considering the specific circumstances of the case.
Lessons to be Learned
The key takeaway from decision T 0438/22 is the need to balance the interpretation of the EPC with the Guidelines for Examination. While Guidelines are helpful tools, they must not be applied mechanically, especially when the deletion of content leads to an unjustified loss of disclosure.
- The decision reinforces that Article 84 EPC does not inherently prohibit claim-like clauses, and the patent description should support the claims, provided that there is no inconsistency or lack of clarity.
- It also suggests a need for a potential review of Guidelines F-IV, 4.4 to ensure that they align with the principles established by the Board of Appeal.
Contact
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Legal Disclaimer
The information provided in this blog post is for generalinformational purposes only and does not constitute legal advice. The summary and analysis of the EPO case are based on publicly available information and are intended to offer insights into the decision and its implications. This content should not be used as a substitute for professional legal advice tailored to your specific circumstances. For advice related to any specific legal matters, you should consult a qualified attorney.