Preliminary opinion of the Enlarged Board of Appeal in the G1/24 referral on claim interpretation

In July 2024, we reported on the G1/24 , as a follow-up of our earlier article in which we discussed the case T 0439/22 that led to the G1/24 referral.

The referral relates to claim interpretation according to patent practice at the European Patent Office (EPO). It seeks to clarify whether and  to what extent the description and drawings should be used to interpret the claims when assessing the patentability of an invention at the EPO. 

The three questions that were referred to the Enlarged Board of Appeal by the Technical Board of Appeal in T 0439/22 are set out below.

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 on 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?

Ahead of the oral proceedings scheduled for March 28, 2025, the Enlarged Board of Appeal issued its preliminary opinion on February 6, 2025. All amicus briefs are visible here.

The Enlarged Board’s preliminary view is that Questions 1 and 2 are admissible, while Question 3 is deemed inadmissible because, allegedly, “an answer to it is not required for the referring Board to reach a decision on the case before it”.

Question 1 asks whether the legal provisions applied to claim interpretation when determining the scope of protection conferred by a European patent, e.g. in post-grant revocation and infringement proceedings before National courts or the Unified Patent Court (UPC), is also relevant during pre-grant examination and opposition proceedings at the EPO when assessing the patentability of an invention. 

The Enlarged Board has mentioned with respect to Question 1 that they will consider: 

(i) whether the principles of interpretation set out in Article 69(1) EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC are to be applied to the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC, and

 (ii) if Article 69(1) EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC provide the legal bases for the principles that are to be applied to the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC.

The Enlarged Board has also recognized the interest in uniform application of the principles of claim interpretation in proceedings before the EPO and post-grant revocation and infringement proceedings before the courts of the EPC contracting states, including the UPC. 

With respect to Question 2, the Enlarged Board has mentioned that the description and the figures can be referred to in the course of claim interpretation, but they did not provide their view on whether this can be done generally or only for interpreting subject-matter in the claims that are otherwise unclear. However, they seem to rule out completely ignoring the description and drawings when interpreting the claims. 

According to the EPO’s classical approach, supported by one line of Board of Appeal case law, the description should only be taken into account in case of ambiguity, whereas if the skilled person considers the wording of a claim to be clear at face value, then consulting the description for interpretation is deemed unnecessary and unjustified. 

Notably, in UPC decisions so far, including the UPC’s first revocation decision on which we reported previously, the description and drawings are heavily relied upon for the interpretation of a patent claim and not just to resolve any ambiguity.

While this preliminary opinion of the Enlarged Board is not binding, it provides some insight into the issues that the Enlarged Board currently considers to be of significance. We will have to await the oral proceedings on March 28th, and somewhat longer for the written decision to issue, to receive some guidance on the weight to be given to the description and drawings when interpreting the claims in proceedings at the EPO. 

If you have any questions, we would be happy to help. Feel free to reach out to our European Patent Attorneys via email at info@dcp-ip.com.