Decision G1/24
The Enlarged Board of Appeal of the European Patent Office (EPO) has issued a landmark decision in G1/24, stemming from referral T 439/22, which addresses a fundamental question in European patent law: how should patent claims be interpreted when assessing patentability?
The case arose from a dispute over the interpretation of the term “gathered sheet” in a patent relating to vaping devices, highlighting the diverging approaches to claim interpretation in the existing EPO case law. In response, the Technical Board of Appeal referred key legal questions to the Enlarged Board of Appeal seeking clarity on whether and how the description and drawings should be used in claim interpretation.
The resulting decision not only resolves the long-standing divergence but also aligns EPO practice with that of national courts and the Unified Patent Court (UPC), promoting greater consistency and legal certainty.
Background
T 439/22 of 24 June 2024 (“the Referring Decision”) is an appeal against the decision of the Opposition Division rejecting the opposition filed against European Patent No. 3 076 804 (“the patent in suit”).
The patent in suit relates to an article for a vaping device that contains an aerosol forming material. A key issue discussed on appeal was the novelty of claim 1 of the patent as granted. Specifically, there was disagreement between the patent proprietor (respondent) and the opponent (appellant) regarding the interpretation of the term “gathered sheet” in claim 1. The patent proprietor argued that the term should be assigned its usual meaning in the art, while the opponent argued that the term should be interpreted in light of the description.
Technical Board of Appeal 3.2.01 (“the Referring Board”) took the view that there was diverging case law on how patent claims should be interpreted. Consequently, the Referring Board referred the following three questions of law to the Enlarged Board of Appeal:
Question 1
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?
Question 2
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?
Question 3
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?
Decision of the Enlarged Board of Appeal
The Enlarged Board of Appeal considered question 3 to be encompassed within question 2. As a result, Question 3 was deemed inadmissible because answering it was not necessary for the Referring Board to reach a decision in the case before it.
Question 1 was found to concern the legal basis in the EPC for interpreting patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC. The Enlarged Board of Appeal considered that neither Article 69 EPC (“extent of protection”) and Article 1 of the Protocol on Interpretation of Article 69 EPC, nor Article 84 EPC (“clarity of claims”) were entirely satisfactory as a basis for claim interpretation when assessing patentability. Thus, the Enlarged Board of Appeal considered there to be no clear legal basis within the EPC for claim interpretation when assessing patentability.
Turning to the case law of the Boards of Appeal, the Enlarged Board of Appeal considered there to be an existing body of case law from which the applicable principles of claim interpretation could be extracted. From this case law, the Enlarged Board of Appeal extracted the following principles:
1) The claims are the starting point and the basis for assessing the patentability of an invention under Articles 52 to 57 EPC.
2) The description and any drawings are always referred to when interpreting the claims, and not just in the case of unclarity or ambiguity.
In adopting point 2), the Enlarged Board of Appeal rejected the case law of the Boards of Appeal that limited the reference to descriptions and drawings to situations where the claim is unclear or ambiguous (i.e., the issue raised in question 2).
The Enlarged Board of Appeal considered this diverging case law, where the description is referred to only in cases of unclarity or ambiguity, to be contrary to the wording and principles of Article 69 EPC, as well as the practice of national courts of the EPC states and to the practice of the UPC (referring to the order of the UPC Court of Appeal of 26 February 2024 in NanoString Technologies v 10x Genomics, UPC_CoA_335/2023, App_576355/2023 of 26 February 2024, as rectified by the order of 11 March 2024).
The Enlarged Board of Appeal noted that determining whether the language of a claim is clear and unambiguous is an act of interpretation, not a preliminary stage to such an interpretative act.
In view of this, the Enlarged Board of Appeal answered Question 2 as follows: the description and any drawings are always referred to when interpreting the claims, and not just in the case of unclarity or ambiguity.
Order
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 drawings shall always be consulted to interpret the claims when assessing the patentability of an invention under Articles 52 to 57 EPC, and not only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation.
Key takeaways
The Decision of the Enlarged Board of Appeal in G1/24 addresses the long-standing divergence in EPO case law on claim interpretation. The order confirms that claims must always be interpreted in light of the description and drawings, not just in cases of ambiguity.
By aligning the EPO’s practice with that of the UPC and national courts, the Decision promotes consistency across jurisdictions. This harmonization will be crucial for providing legal certainty and predictability in patent litigation.
It is noteworthy that there has been recent diverging EPO case law on the requirement of bringing the description into conformity with the claims. In some decisions, Examining Divisions and Boards of Appeal have insisted that the description must be amended to remove or clearly distinguish subject matter not covered by the claims, in order to avoid inconsistencies and ensure clarity under Article 84 EPC. This has led to the practice of requiring applicants to delete or label certain embodiments as “not part of the invention,” even post-grant.
Conversely, other decisions have taken a more lenient approach, emphasizing that the claims alone define the scope of protection and that the presence of broader or inconsistent language in the description does not necessarily create ambiguity. This divergence has created uncertainty for applicants and practitioners, particularly during examination and opposition proceedings.
It will be interesting to see how Examining Divisions interpret the Enlarged Board of Appeal’s decision in G 1/24. While the decision clarifies that the description and drawings must always be consulted when interpreting claims, it does not explicitly address whether the description must be brought into strict conformity with the claims. That said, the Enlarged Board of Appeal highlights the importance of Examining Divisions carrying out a high-quality examination of whether a claim fulfils the clarity requirements of Article 84 EPC. The Enlarged Board of Appeal also considers the correct response to any unclarity in a claim is amendment. Here the Enlarged Board of Appeal references the Comments of the President of the EPO. In view of this, Examining Divisions may take a stricter stance on enforcing the EPO’s requirement to amend the description for conformity with the claims.
It remains to be seen how the divisions of the EPO will interpret the decision of the Enlarged Board of Appeal in G1/24.
Our previous articles on the referral: