05/01/2015
The presence of reference numerals in the claims of European patents frequently raises questions. The UK Court of Appeal has recently ruled on this point further clarifying the situation.
The Implementing Regulations to the European Patent Convention require in Rule 43(7) that:
Where the European patent application contains drawings including reference signs, the technical feature specified in the claims shall preferably be followed by such reference signs relating to these features, if the intelligibility of the claim can thereby be increased. These reference signs shall not be construed as limiting the claims.
The intent of the rule is therefore clear. There is no limiting effect on the claim implied by the presence of reference numerals and their presence is only to help improve intelligibility. This matter has been commented on previously in the case of Virgin Atlantic Airways Limited vs Premium Aircraft Interiors UK Limited ([2009] EWCA Civ 1062) by Lord Justice Jacob, Lord Justice Patten and Mr Justice Kitchin in the Court of Appeal. In particular, they said in the judgment:
“we do not think that numerals should influence the construction of the claim at all – they do not illustrate whether the inventor intended a wide or narrow meaning. The patentee is told by the rule that if he puts numerals into his claim they will not be used to limit it. If the Court subsequently pays attention to the numbers to limit the claim that is simply not fair…that is not to say that numbers are pointless. They help a reader orient himself at the stage when he is trying to get the general notion of what the patent is about. He can see where in the specific embodiment a particular claim element is, but no more. Once one comes to construe the claim, it must be construed as if the numbers were not part of it.”
This position has been further reinforced in the case of Jarden Consumer Solutions (Europe) Limited SEB SA ([2014] EWCA Civ 1629), in the UK Court of Appeal.
At first instance Mr Justice Arnold held that reference numerals used in the specific description and in the claims helped him construe the lid of a “dry fryer” as part of the “main body”. He stated that “the specification describes the main body as having three parts: a base 2A, a side skirt 2B, and a lid 2C”, and he therefore construed the term “main body” in the claims as including the lid.
The Court of Appeal held on 17 December that the judge was incorrect to use reference numerals in this way. It was commented that reference numerals were used by the judge to construe the claims and in particular to give an extended meaning to the term “main body” so as to include the lid. The court held that this gave the claim increased scope and that this was impermissible.
It is therefore clear that patentees should not be wary of including reference numerals as far as the UK courts are concerned. The Court of Appeal has followed Rule 43(7) EPC by holding that not only do the reference numerals not limit the scope, they are not to be used as an aid to construing the claim (whether or not they are in fact used in the claims).
The main principle of construction adopted by the UK courts when construing a claim remains that of purposive construction which is directly derived by the courts from Article 69 EPC and the protocol thereto. Article 69 of course states that “the extent of the protection conferred by a European Patent… should be determined by the claims. Nevertheless the description and drawings shall be used to interpret the claims”. The use of the word “interpret” should not be confused with the term “construe”. It means “understand” in this context.
The use of reference numerals whether in the claims or merely present in the description cannot be used to limit or to construe the claim to include features which on a purposive construction would not be included. The use of reference numerals will, however, keep European patent examiners happy, particularly if they are included prior to search and examination, by directing the Examiner to the relevant part of the specification and assisting them in resolving any ambiguities in claim meaning.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
