Essentials of claim construction

Reading time: 7 minutes

Case No. O2019_003 | Decision of 19 August 2020 | ‘Lumenspitze’


Hepp Wenger Ryffel is involved in this matter on behalf of Alcon.

Hoya logo

HOYA had lodged nullity proceedings against Alcon re EP/CH 2 002 803 B1; see the European Register and Swissreg for further bibliographic information. Don’t be misled by the reference to EP 2 002 801 at various occasions in the decision (including the operative provisions); that’s a typo.

Alcon logo

The invention of EP 803 relates to intraocular lenses (IOLs), more particularly to cartridges used to inject IOLs into an eye. This is reflected in claim 1 of EP 803 as granted, broken down into distinct features, as follows:

Claim 1 of EP 803

1.1 An intraocular lens injector cartridge (10), comprising:
1.2 a body (12) having an internal lumen (15);
1.3 a tubular nozzle (14) having an outer wall (36) and an opening (18),
1.3.1 the nozzle projecting distally from the body,
1.3.2 the opening being fluidly connected to the internal lumen of the body;
1.3.3 and wherein
a) the nozzle opening is defined by an extended canopy (20, 20’, 20″)
b) projecting distally from a plane of the opening (18, 18’, 18″)
c) at least partially encircling the opening;
1.4 at least one peripheral protrusion (22) extending laterally from the outer wall of the nozzle proximally from the opening;
1.4.1 the at least one peripheral protrusion (22) is spaced proximally from the plane of the opening so as to provide an insertion depth limitation and prevent full insertion of the cartridge tip, in use.

added subject-matter?

The decision holds that the combination of features 1.3.3 b), 1.4.1 and 1.3.3 c) is based on two different embodiments, and that feature 1.4.1 itself is based on an intermediate generalization; the decision further holds that this also applies to the auxiliary requests (¶ 39).

These issues of (non-)complicance with the requirements of Art. 123(2) EPC are very case-specific, and I do not believe they are of broader interest beyond the case at hand. An appeal is currently pending at the Supreme Court.

But there are quite some other aspects in the decision that I find interesting.

comments on the expert opinion

The parties had been given the chance to the comment on the judge-rapporteur’s expert opinion in writing, within a time limit fixed by the court. But what if a party does not comment in writing: Is that party prevented from pleading at the main hearing on that issue? The decision holds that this is not the case. However, the decision also holds that it contravenes the equality or arms not to submit a position in writing within the time limit set by the court, but to argue extensively on the expert opinion at the main hearing.

Even though it had no consequences in this case, it appears that unconditional withholding of comments on the expert opinion is a risky thing to do.

The skilled person

There is an interesting remark in the decision about how the knowledge and expertise of the skilled person is to be determined. The decision holds that the relevant technical field of the invention is to be determined in first place, and, as a second step, the specific competencies of the skilled person in that technical field are to be determined.

That’s pretty straight-forward, isn’t it? The decision refers to S2017_001 (¶ 4.4) in this respect. In that case, it had been held that the definition and knowledge of a skilled person that had been proposed by the parties appeared to be correct in view of the technical problem defined in the patent itself.

But what if a party argues for obviousness starting from a ‘closest’ prior art document that is not in the same technical field, and/or the objetive technical problem is not anymore the one that is stated in the patent? Let’s take a washing machine as an example. The invention is all about a very energy-efficient motor — in a washing machine.

No washing machine on board, I guess.

Let’s further assume that such a very energy-efficient motor had been described in the prior art, but only in a publication relating to the space station ISS. Such a document cannot be ignored as a potentially promising springboard; see e.g. S2017_001, ¶ 4.6. Now, starting from that publication, the skilled person being an engineer of washing machines would immediately recognize what a perfect fit this motor is for his daily business, i.e. washing machines. The invention is just plainly obvious(?). But that can’t be it, right? Starting from a technologically pretty unrelated ‘closest’ prior art document, the skilled person cannot rightly be considered to be skilled in the field where the solution or the invention lies. Rather, I feel the skilled person should then be from the field where this ‘closest’ prior art stems from (i.e., in my example above, an aerospace engineer). And when you ask an aerospace engineer for alternative uses of the motor, he quite likely will not come up with washing machines.

This is at least my understanding of how the BoA of the EPO would approach such a situation; see e.g. T 25/13 (¶ 2.3).

It will be interesting to see a case being decided at the FPC where this issue is decisive.

claim construction

The decision provides further guidance on how the specific embodiments are to be considered in claim construction. The FPC had previously held that the claims are to be construed such that the embodiments are literally covered; I had long been troubled by the generality of the statement, see e.g. this Blog here.

In the present decision, the FPC clarified that this should be so ‘in case of doubt’.

More specifically, the decision holds that the rule of ‘literal coverage’ shall only apply when the claim can be reasonably construed in several ways. In such cases, the claim shall be construed such that the specifically disclosed embodiments are literally covered.

A much appreciated and highly relevant clarification about claim construction, in line with e.g. X ZR 35/11 (‘Zugriffsrechte’) of the German Supreme Court.

UPDATE 6 November 2020:

The decision has been appealed.

Reported by Martin WILMING


Case No. O2019_003 | Decision of 19 August 2020 | ‘Lumenspitze’

HOYA Surgical Optics GmbH
Alcon AG

Panel of Judges:

    • Dr. Mark SCHWEIZER
    • Dr. Philipp RÜFENACHT
    • Dr. Tobias BREMI


    • Dr. Philipp RÜFENACHT

Court Clerk:

    • Susanne ANDERHALDEN

Representative(s) of Plaintiff:

    • Dr. Michael RITSCHER (MLL)
    • Livia ANDERMATT (MLL)
    • Dr. Claudia BIBUS (Blum), assisting in patent matters
    • Joel HOCHREUTENER (Blum), assisting in patent matters
    • n/a (Eisenführ Speiser), assisting in patent matters

Representative(s) of Defendant:




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A Swiss approach to the EPO’s gold standard

Reading time: 5 minutes

Case No. O2016_016 | Decision of 6 June 2019

The patent at stake is MundiPharma‘s EP 2 425 825 B9; see EPO Register and Swissreg. EP’825 pertains to a combination of oxycodone hydrochloride (in an amount of 10 to 150g) and naloxone hydrochloride (in an amount of 1 to 50g), in a weight ratio of 2:1.

This combination is an analgesic drug that is available as modified-release tablets under the trade name Targin® by MundiPharma.

Develco’s logo

Develco sought annulment of EP(CH)’825 for various reasons, i.e. undue extension of subject-matter, non-enablement and invalidity of the priority claim. Please see this Blog here for a brief summary of the main hearing in this matter, and some relevant prior art Develco has asserted against patentability of the claimed subject-matter.

MundiPharma’s logo

Defendant / patentee MundiPharma countersued for infringement. MundiPharma not only countersued the plaintiff, but rather also attempted to involve the German branch of Develco as well as Konapharma. This attempt failed.

It was evident from the pleadings at the main hearing that the expert opinion of the judge-rapporteur had held that the patent was invalid for undue extension of subject-matter. Thus, it does not come as a big surprise in the decision that EP(CH)’825 is held invalid for undue extension of subject-matter. Consequently, the decision does not address the other grounds of invalidity asserted by Develco; and the counterclaim for infringement is moot, too.

In my perception, the detailed assessment of undue extension of subject-matter is nothing out of the ordinary. It’s all about the EPO’s ‘gold standard’ (G 2/10 in ¶4.3, with reference to G 3/89 and G 11/91), i.e.

[…] any amendment […] can […] only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of [the application as filed].

What is interesting, though, is how the decision addresses the so-called essentiallity-test (‘Wesentlichkeits-Test’), in particular how this test fits with the ‘gold standard’. In brief, in T 331/87 the Board held that the replacement or removal of a feature from a claim may (referred to in the Case Law of the Boards of Appeal as a ‘might’) not be in breach of Art. 123(2) EPC if the skilled person would directly and unambiguously recognise that

  1. the feature was not explained as essential in the disclosure;
  2. it was not, as such, indispensable for the function of the invention in the light of the technical problem it served to solve; and
  3. the replacement or removal required no real modification of other features to compensate for the change.

It is important to note that even this Board apparently (in view of the conditional language used; see mark-up above) did not consider compliance with the above three criteria as a sufficient condition for compliance with Art.123(2) EPC in any given case. Accordingly, the present decision holds that the only thing that really matters is the ‘gold standard’ discussed above, which cannot be deviated from. With reference to the Swiss Supreme Court decision 4A_109/2011, 4A_111/2011 (¶4.3.1), however, the decision further holds that in a case where not even the criteria of the essentiallity test are fulfilled, it must be assumed that an undue extension of subject-matter occured.

What suprises me, though, is that the decision holds (¶31):

Otherwise this would again amount to a materiality test, which was expressly rejected in G 2/98.

Frankly, I don’t see that in G 2/98, at least not expressly (‘ausdrücklich’). One may well conclude from the gist of G 2/98, in particular ¶8.3, that it does not endorse a distinction of technical features which are related to the function and effect of the invention and technical features which are not. But there is no discussion of the essentiallity test at all in G 2/98. Else, if there was, the essentiallity test would surely not be referred to anymore in the most recent edition of the Case Law of the Boards of Appeal and the Guidelines.

But still, my personal take-away message from this decision is that the essentiallity test is of no avail in proceedings at the FPC (until someone comes along and proves me wrong).

The decision is not yet final / may still be appealed to the Supreme Court.

Reported by Martin WILMING


Case No. O2016_016 | Decision of 6 June 2019

Develco Pharma Schweiz AG
MundiPharma Medical Company

Panel of Judges:

  • Dr. Daniel M. ALDER
  • Dr. Tobias BREMI
  • Dr. Hannes SPILLMANN


  • Dr. Tobias BREMI

Court Clerk:


Representative(s) of Develco:

  • Andrea MONDINI (TIMES)
  • Dr. Cornelia HOFFMANN (SBMP), assisting in patent matters

Representative(s) of Mundipharma:

  • Dr. Simon HOLZER (MLL)
  • Dr. Dirk BÜHLER (Maiwald), assisting in patent matters
  • Dr. Andreas LEDL (Maiwald), assisting in patent matters


Don’t be misled by the patent no. on the bottom of the title page. EP 2 245 825 is a typo; this should read EP 2 425 825.
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