UPC Court of Appeal: Interpretation in accordance with Article 69 EPC

The Court of Appeal states that the interpretation has to be done according to Art 69 EPC and the corresponding protocol: The patent claim is not only the starting point, but the decisive basis under Art 69 EPC in conjunction with the Protocol on the Interpretation of Art 69 EPC for determining the extend of the protection conferred by a European patent. The interpretation of a patent claim does not depend solely on its exact wording in the linguistic sense. Rather, the description and the drawings must always be taken into account as explanatory aids for the interpretation of the patent claim and not only be used to eliminate any ambiguities in the patent claim. This does not mean that the patent claim merely serves as a guideline but that its subject-matter also extends to what, after examination of the description and drawings, appears to be the subject-matter for which the patent proprietor seeks protection. The patent claim must be interpreted from the perspective of the person skilled in the art. In applying these principles, the aim is to combine adequate protection for the patent proprietor with sufficient legal certainty for third parties. These principles for the interpretation of a patent claim apply equally to the assessment of the infringement and the validity of a European patent. 

Applied to the patent in suit, the Court of Appeal came to the following conclusion. 

The patent in suit relates to a method for detecting a large number of analytes in a cell or tissue sample. The problem to be solved by the invention is to develop high-throughput optical multiplexing methods for the detection of target molecules in a sample. Contrary to the understanding of the Court of First Instance, it is not apparent from claim 1 that the detection reagents must remain bound to the respective analytes during the entire detection procedure.

The Court of Appeal agrees with the Court of First Instance that the detection reagents must bind securely to the respective analytes and, in order to make this possible, a sufficient incubation time of the cell or tissue sample together with the plurality of detection reagents must be provided. Contrary to the view of the Court of First Instance, however, the need for a sufficient incubation period does not preclude the decoder samples, once they have securely bound to the respective analytes, from being removed again at a later stage and from being replaced again with the same detection reagents. 

On the basis of this interpretation, the Court of Appeal ─ contrary to the view of the Court of First Instance ─ considers it to be more likely than not that the subject-matter of claim 1 in the version asserted in the main request will prove to be unpatentable under Art 52(1) EPC. Based on this interpretation, one of the cited documents already discloses all features of patent claim 1 with the exception of the feature that the method is intended to be used to detect a large number of analytes "in a cell or tissue sample". This document would have been of interest to a person skilled in the art who, at the priority date of the patent at issue, was seeking to develop high-throughput optical multiplexing methods for detecting target molecules in a sample, as it discloses a method for detecting a plurality of amplified single molecules (ASMs) by encoding and decoding the single molecules, wherein the encoding is performed via probe-mediated generation of ring-shaped DNA and the decoding is performed by temporally sequential detection of the targeted ASMs. The fact that the person skilled in the art at the priority date of the patent in suit considered the transfer of the method to an in situ environment as the next step after the successful application of an in vitro multiplex method for the detection of ASMs is evidenced by a further document. This publication describes a method for the detection of non-polyadenylated RNA molecules using "a new probe format", which was initially carried out in vitro in "a controlled environment" and, after successful implementation, was also tested in situ with positive results. Accordingly, the Court of Appeal considers it more likely than not that the patent in suit will prove to be unpatentable in the proceedings on the merits due to a lack of inventive step. Therefore, there is no sufficient basis for issuing a preliminary injunction (UPC 26. 2. 2024, CoA 335/2023).