Background
Back in August 2025, I reported on two Unified Patent Court (UPC) decisions and their possible relevance to the European Patent Office’s decisions in G1/24 and G1/25.
The decision in G 1/24 had already issued and made it clear that the description and drawings must be consulted when interpreting the claims. G 1/25 followed this year, saying that the description must be amended where there are incompatibilities with the claims that cause non-compliance with a provision of the European Patent Convention (e.g. clarity under Article 84).
One of these cases, Agfa v Gucci, was appealed from the Hamburg local division of the Unified Patent Court, and a decision has now issued from the UPC’s Court of Appeal.
Summary
The Court of Appeal’s decision in Agfa v Gucci does nothing to suggest any substantial differences to the principles set out in G 1/24 or G 1/25. However, the Board of Appeal differed from the local division in how they applied the guidance of G 1/24 when interpreting the claims. They adopted an interpretation that ensured compatibility between the description and claims which, in my opinion, is preferable to the local divisions interpretation that decided there was incompatibility.
The Court of Appeal’s decision also serves as a reminder to be mindful of how the description might influence interpretation of amended claims. The temptation to keep broader wording in the description is a double-edged sword as it might make a claim read onto prior art as well as onto alleged infringements, as happened in this case.
Agfa’s patent
The technology in dispute was inkjet printing on leather goods. According to Agfa’s patent, a base coat is first applied to the leather and then a colour image is inkjet printed on top of the base coat. Claim 1 is reproduced below.
Other relevant paragraphs of the patent are:
[0021] which said that a chromatic colour is any colour in which one particular wavelength or hue predominates. For example, blue and green are chromatic colours, while 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.
[0029] which said that, in a third aspect of the invention, the base coat (44) contains both a pigment for providing a chromatic colour and a pigment for providing an achromatic colour different from black.
[0170] – [0179] which presented a third example that “illustrates the manufacturing method for decorating natural leather with a decorative image according to the invention wherein the base coat contains a pigment providing a chromatic colour to the base coat … by replacing a minor part of the titanium dioxide pigment BK [that produces an achromatic colour] in the base coat BC2 by a brown pigment.”
Local division’s decision
The local division followed the principle set out in G1/24 and in another Unified Patent Court case (10x Genomics v NanoString) to interpret the claims while consulting the description.
The local division concluded that claim feature (v) meant that the base coat must be an achromatic colour different from black. Thus, to meet the definition of “achromatic” in paragraph [0021], claim feature (i) must be interpreted such that the base coat contained pigment providing only an achromatic colour (and excluded any chromatic pigment).
This rebutted Agfa’s arguments that the claims should cover base layers with small amounts of chromatic pigment resulting in off-white base layers – like those allegedly found in Gucci’s products.
Court of Appeal’s decision
The Court of Appeal disagreed that claim feature (v) requiring the base coat to be an achromatic colour different from black implied that the base coat could not contain any chromatic pigment.
This implies that the amount of chromatic pigment must be small enough to result in the base coat appearing to be an achromatic colour. The Court noted that paragraphs [0029] and [0171] – [0179] describe an aspect and an example with such a combination of chromatic and achromatic pigments.
The Court of Appeal believed the definition of achromatic colours provided in paragraph [0021] did not require that all wavelengths are present in exactly equal amounts. The paragraph says all wavelengths are present in approximately equal amounts. It also follows that an achromatic colour will differ from the definition of a chromatic colour where one wavelength or hue predominates, i.e. an achromatic colour will not have a dominant wavelength. The Court believed these requirements would be met by off-white base coats comprising small amounts of chromatic pigments.
This difference in interpretation meant that the Court of Appeal concluded that the claims should cover base layers with small amounts of chromatic pigment resulting in off-white base layers. While this might have seemed bad news for Gucci, the broader interpretation of claim 1 meant it also read onto products sold before the priority date of the patent, rendering the claim invalid.
Discussion
I prefer how the Court of Appeal applied the principle of G 1/24. The Court appeared to account for the disclosure of the description as a whole to resolve how the claims and the description paragraphs noted above could be compatible. In contrast, the local division seemed to focus on the paragraph providing the definition of achromatic and interpreted it narrowly such that the other paragraphs were then incompatible.
Furthermore, the Court’s approach did not put into question the primacy of the claims or force less obvious meanings onto words or phrases. They noted that paragraph [0029] says the base coat contains both a pigment for providing a chromatic colour and a pigment for providing an achromatic colour: they interpreted this as requiring a pigment suitable for providing a chromatic colour (but not necessarily causing an overall chromatic colour to the base coat).
This argument is weakened in that paragraph [0170] does not follow the “for providing” language: it says, “the base coat contains a pigment providing a chromatic colour to the base coat”. Considering G 1/25, perhaps this should have been amended rather than requiring a mind desirous of understanding to conclude that the chromatic colour, although present, is dominated by the achromatic colour leading to an overall achromatic appearance.
Conclusion
The Court of Appeal have followed an approach to interpreting the claims by consulting the description that is consistent with G 1/24. I would argue that their approach that found compatibility between the description and claims is preferable to the local division’s approach that decided there was incompatibility.
However, the broader scope of claim 1 did not help Agfa as perhaps they hoped as the claim was found to read onto prior art as well as the alleged infringing articles. This reminds us that care must be taken with ensuring claims allowed for grant will be interpreted as we want them to be. This requires a careful consideration of the description and how it might affect claim interpretation. In some circumstances, an innate reluctance to amend the description after amending the claims can cause problems when enforcing the patent.
For further advice, please contact Nigel Tucker or your usual Boult adviser.
