On 30 April 2025, hot on the heels of the EPO’s Enlarged Board of Appeal’s G 1/24, the Hamburg Local Division of the Unified Patent Court issued its own Decision, UPC_CFI_278/2023, on the topic of claim interpretation in view of definitions in patent applications.
Case Background
The hearing concerned European Patent No. 3388490, for which the proprietor and claimant was AGFA NV (“AGFA”), a Belgian company that specialises in industrial inkjet technology, such as inks and printers. The patent concerns a manufacturing method for decorating natural leather with a decorative image, and a decorated natural leather having a decorative image. It also concerns the use of an achromatic colour different from black in a base coat on a crusted leather in combination with an inkjet-printed colour image on the base coat for providing a decorative image to a natural leather. The patent in suit was in force in Belgium, Germany, Spain, France, UK, Italy and Sweden.
AGFA filed an infringement action against nine defendants under the French conglomerate Kering, which is the parent company of, amongst others, the luxury fashion house, Gucci. The defendants are collectively referred to here as “Gucci”. AGFA was of the view that several claims of the patent were directly infringed by Gucci’s “Pikarar Collection” in Belgium, Germany, France, Italy and/or Sweden.
Gucci filed a counterclaim for revocation of EP3388490 in its entirety on the grounds of a lack of novelty and inventive step with effect in Belgium, France, Germany, Italy and Sweden.
Achromatic colour
The definition of the term “achromatic colour”, and its impact on the interpretation of the feature “achromatic colour different from black in a base coat” of the independent claims, proved pivotal to the case.
AGFA alleged that the claimed base coat must contain, not consist of, a pigment for providing an achromatic pigment different from black, which contributes towards a base coat having an achromatic colour different from black. Before the European Patent Office it is generally accepted that “consists of” is a closed term, wherein only the listed components can be included in a composition. Conversely, “contains” is an open term and allows for components other than those recited in a claim to be included in a composition in addition to those components recited in the claim. White, grey and black were considered achromatic colours, which were considered to have no dominant hue, such that all wavelengths are present in approximately equal amounts. AGFA alleged that adding a small amount of chromatic pigment to a large amount of achromatic pigment would generally still result in an achromatic base coat, meaning base coats with a small amount of chromatic pigments, including off-white or ivory white colours, were protected by the patent, as well as “perfect” achromatic colours or indistinguishable variants thereof. AGFA relied on paragraph [0029] and Example 3 of the patent.
Conversely, Gucci pointed to paragraph [0021] of the patent in suit, which discloses that “white, grey, and black are achromatic colours, as they have no dominant hue, meaning that all wavelengths are present in approximately equal amounts within those colours”. Gucci argued that this taught that a colour is achromatic within the meaning of the patent if it has a flat spectral response or, if the spectral response is not perfectly flat, if the deviations from the perfectly flat spectrum are such that the difference between the colour in question and the nearest reference achromatic colour with a perfectly flat spectrum line would not be perceptible to the average observer. Specifically, according to Gucci, "approximately equal amounts” means that a colour is achromatic as long as the human eye cannot perceive a difference to the nearest "perfect" achromatic colour, which is a colour where all wavelengths have the same reflection intensity.
The Decision
The UPC’s approach
For claim interpretation, the Court adopted the approach that the claim is not only the starting point, but the decisive basis for determining the protective scope of the European patent and that the description and the drawings must always be used as explanatory aids for the interpretation of the patent claim, not only to resolve any ambiguities in the patent claim. However, the Court stressed that this does not mean that the patent claim serves only as a guideline and that its subject-matter may extend to what, from a consideration of the description and drawings, the patent proprietor has contemplated.
The Court decided that the independent claims required the base coat as a whole to have an achromatic colour different from black, rather than containing such a colour. The Court then construed the term “achromatic” according to the definition in paragraph [0021] of the patent in suit, as relied upon by Gucci. The Court’s approach was based on the principle that a patent may be used as its “own lexicon”.
According to this interpretation, an ivory base coat was held not to be within the scope of the patent. Rather, the Court noted that the independent claims refer to an “achromatic colour” and not to a white colour, and that, despite the fact that the patent sees white, grey, and black as achromatic colours, the skilled person would consider it clear that not all white or grey tones fulfil the patent’s definition of achromatic, when the claims are read in consultation with paragraph [0021].
As a result, the infringement action was not successful as AGFA could not prove that the attacked embodiments comprised an achromatic base coat in accordance with the Court’s interpretation. The good news for AGFA was that the Court held that the claims were novel and inventive over the cited prior art and in respect of public prior use, and so the patent was held to be valid.
Could AGFA have done anything differently?
In support of their arguments that “whitish” colours are encompassed by the patent’s claims, AGFA attempted to rely on paragraph [0029] of the patent in suit, which refers to “a base coat containing a white pigment and one or more colour pigments to provide e.g. an off-white or a pale clay colour”. However, the term “chromatic colour” had been deleted from claim 1 during prosecution and so the disclosure of paragraph [0029] was no longer considered part of the claimed invention by the Court.
It is not immediately clear whether any alternative arguments might have saved AGFA’s infringement claim. Rather, changes at the drafting stage might have been required in this instance. Specifically, the consistent application of a definition of the term “achromatic”, using the broadest and most open language reasonable, might have allowed “whitish” colours to fall within the ambit of the claimed “achromatic colour”. Of course, often the limitations of a definition are only thrown into harsh relief when a patent is compared with other documents in great detail during legal proceedings.
Practical Implications for Patent Practice
Contrast to G 1/24
The EPO’s Enlarged Board of Appeal recently issued Decision G 1/24, seemingly clarifying claim interpretation, by confirming that the claims are the starting point for assessing patentability but that the description and drawings shall always be consulted to interpret the claims, and not only if the skilled person considers the claims to be unclear or ambiguous when read in isolation. It did not, however, explicitly address whether a definition in the description of a term used in the claims may be disregarded when interpreting the claims to assess patentability. The recent Board of Appeal decision T 1999/23, applying G 1/24, went one step further and held that definitions in the description cannot overrule clear claim wording.
Decision UPC_CFI_278/2023 from the UPC contrasts with the latest case law from the EPO. By allowing definitions to be effectively created by the applicant, meaning might be ascribed to features of the claims that allows them to avoid allegations of a lack of novelty and/or inventive step before the UPC. Having only just received some clarity on the matter from G1/24, it is somewhat disappointing to see the UPC adopt a different approach to interpretation by allowing the applicant to be their own lexicographer, whether intentionally or not.
Best Practices Moving Forward
Despite their inconsistencies, both UPC_CFI_278/2023 and G1/24 raise the importance of including a comprehensive “Definitions” section in a European patent application or at least comprehensively providing definitions, as well as consistently applying those definitions, to ensure that the skilled person interprets the claims in the way the applicant intended. Indeed, the clarification in G1/24 that the description and drawings shall be consulted is a welcome one as it avoids claims being unreasonably construed without context.
However, the Court’s Decision should inform applicants’ decisions as to whether or not they wish to opt out of the UPC’s jurisdiction by the time their European patent application reaches grant. If there are any concerns in respect of infringement or validity of the patent based on the claims, per se, but the description offers a narrower interpretation of a crucial feature, the potential risk that a patent can be knocked out in all UP member states by a single action might be balanced out by the benefits of the UPC’s apparent willingness to allow narrower interpretations of features to be imported into the claims. However, narrowing of a claim interpretation based on the description may result in a finding of non-infringement as in the AGFA case so where that is a danger it would be prudent to opt-out of the UPC.
The UPC’s approach also raises the question of whether or not passages that are inconsistent with the claims should be deleted during prosecution. On the one hand, the Court said that references to “chromatic colours” should have been deleted from the specification; but on the other hand, it was quite able to disregard those passages for the sake of legal certainty by not considering disclosures that were contradictory to the claims. Until we have more clarity on this matter, it would seem prudent to be less accepting of examiners proposing sweeping changes to bring the description into conformity with the claims, when it does not seem necessary for claim interpretation.
Conclusion
The UPC’s Decision suggests a divergence in approach to claim interpretation between the EPO and the UPC mere months after the EPO’s stance was clarified. Nevertheless, regardless of which of the two approaches applies to a particular case, it is clear that carefully constructed, and consistently applied, definitions of technical terms are of paramount importance when drafting European patent applications.