Clarifying the Boundaries of Patent Claims Interpretation: A Closer Look at UPC Court of Appeal’s Latest Decision

In its recent decision dated May 13, 2024, the Unified Patent Court of Appeal clarified some aspects of patent claim interpretation, particularly emphasizing the interpretation of claim features in the light of the claim as a whole. “Unfortunately”, the CoA refused to answer the question “whether the prosecution history can be taken into account when determining the scope of protection of a European patent” (as confirmed in a headnote by the first instance of the CoA case, the Local Division Munich; and as refuted in a Headnote of the Local Division Düsseldorf)

Court of Appeal’s Interpretation
The Court of Appeal underscored a fundamental principle: claim features must not be interpreted in isolation but rather in the context of the entire claim. This approach aligns with Art. 69 of the European Patent Convention and its Protocol, aiming to balance adequate patent protection with legal certainty for third parties. The Court stressed that each component mentioned in a claim (such as the antenna and the circuit board in this case) should be considered in relation to the entire apparatus described, not just in physical proximity or isolation.

Interestingly, the Court left open whether the historical context or the original intent during the patent’s filing should influence the interpretation of claim features. This point is particularly relevant as it touches on the broader debate about the role of prosecution history in patent law, which can significantly affect future patent litigation strategies. In the very least, however, it now appears clear that the earlier Court of Appeal decision (ORD_12169/2024) should not be interpreted as implicitly rejecting the use of the prosecution history of a patent when interpreting its claims.

Key takeaways:

  • Holistic Interpretation of Claims: The decision of the Court of Appeal underscores the importance of interpreting patent claims in the context of the entire claim, not just isolated parts. This holistic approach ensures that the functional interdependencies within a patent are fully understood and respected in legal assessments.
  • Ambiguity Regarding Prosecution History: The Court of Appeal's decision to leave open the question of whether the prosecution history should influence claim interpretation highlights an ongoing legal ambiguity.