Written by: Caleb Gilliam-Scott and Ella Katz
The Enlarged Board of Appeal of the European Patent Office (EPO) has issued Decision G1/24 clarifying the extent to which the description should be used to interpret a claim in pre-grant and opposition proceedings. In particular, it finds that whilst the claims are the starting point, the description and any drawings shall always be consulted to interpret the claims, and not only in the case of unclarity or ambiguity.
Prior Position
Before the Decision, the general position of the EPO was that the claims should be clear in their own context.
However, some ambiguity in this position gave rise to a substantial corpus of diverging case law, comprising various conflicting arguments and rulings. Notably, more than half such cases hinged on varying interpretations of Articles 69 and 84 EPC:
Article 69 (1) EPC: The extent of the protection conferred by a European patent or a European patent application shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims.
Article 84 EPC: The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description.
In particular, applicants attempting to rely on the provisions of Article 69 EPC and its protocol, which relates to interpretation post-grant, were often unsuccessful in leveraging such a provision in pre-grant proceedings; meanwhile, many examiners at the EPO construed Article 84 EPC as requiring the claims to be clear in their own right, without recourse to the description and drawings.
As such, neither provision seemed to provide definitive basis for how the claims should be interpreted.
Referring Decision T439/22
The G1/24 Decision arose from a referral in an appeal case, T439/22, concerning an opposition to a patent for a tobacco product. Therein, the opponent argued that the term ‘gathered sheet’, as defined in the description of the application, rendered the claims not novel; the patentee, on the other hand, maintained that the claims were novel on the basis of a narrower definition established in the tobacco industry.
Noting the above incongruity in case law, which could justify either argument, the Technical Board of Appeal referred the following questions to the Enlarged Board of Appeal:
- Is Article 69 (1), second sentence EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC to be applied to the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC?
- May the description and figures be consulted when interpreting the claims to assess patentability and, if so, may this be done generally or only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation?
- May a definition or similar information on a term used in the claims which is explicitly given in the description be disregarded when interpreting the claims to assess patentability and, if so, under what conditions?
The Enlarged Board Response
On the admissibility of the questions, the Enlarged Board of Appeal first noted that Question 3 is encompassed within Question 2 and thus does not merit a separate answer. Questions 1 and 2, however, were found to be of ‘fundamental importance’: their answers, as determined by the Enlarged Board, would have profound implications for future cases.
Regarding Question 1, the Enlarged Board noted that Article 69 EPC is found under ‘Effects of the European patent and the European patent application’; in particular, it pertains to infringement and should therefore not be construed as definitive basis for assessing patentability under Articles 52 and 57 EPC, namely in pre-grant and opposition proceedings.
Similarly, Article 84 EPC is found under ‘Filing and requirements’ and thus, having a formal and technical nature, also does not provide definitive basis for patentability.
The Enlarged Board accordingly concluded that the answer to Question 1 is ‘No’.
However, the Board continued, whilst Articles 69 and 84 EPC do not strictly pertain to patentability, previous case law has nevertheless applied them as such and, in so doing, established applicable principles for claim interpretation. In particular, the following principles could be derived:
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- The claims are the starting point and the basis for assessing the patentability of an invention under Articles 52 to 57 EPC.
- The description and any drawings are always referred to when interpreting the claims, and not just in the case of unclarity or ambiguity.
Regarding the second principle, the Enlarged Board noted that despite the fact that it is contravened by some EPC case law, it is in fact consistent with the practice of national courts of EPC states and of the Unified Patent Court (UPC). Resolving, then, to adopt the EPC’s ‘harmonisation philosophy’ and conform with this practice, the Board concluded that the second principle suffices as the answer to Question 2.
Impacts
The Decision therefore confirms that claims must always be interpreted in view of the description and any drawings, regardless of whether they are seemingly clear in their own right.
Harmonisation with the practice before the UPC will also bring about a measure of legal certainty for parties, and hopefully minimise conflicting interpretations amongst pre-grant, opposition, and post-grant court proceedings going forward.
However, while this concludes a long-standing debate in case law, it does not address – and in fact raises further questions for – the ever-contentious extent to which the description must conform with the claims, for example as regards ‘boilerplate’ language and unclaimed embodiments.
It is also noted that, contrary to the Enlarged Board’s assertion, the Decision does not seem to provide a definitive answer to Question 3. Indeed, the Decision does not require that the description define, or overrule, the interpretation of the claims, only that it must be consulted; there is thus still no explicit teaching in the event of a discrepancy between the claims and description, as found, for example, in the meaning of ‘gathered sheet’ in Referring Decision T439/22.
The full breadth of the Decision’s implications therefore remains to be seen, but there is no doubt that the Decision will find itself frequently reached for by Examiner and Applicant alike.
