G 1/24 : Enlarged Board of Appeal referral on claim interpretation

Technical Board of Appeal 3.2.01 has issued their interlocutory decision on 1 July 2024 in T 439/22in which it has explained the divergence in several areas of EPO jurisprudence. Specifically, the Board has highlighted divergence in the legal basis for construing claims; whether a patent claim must, on the face of it, be shown to be unclear or ambiguous before the figures and description can be taken into account to construe that claim; and the extent to which a patent can serve as its own dictionary.

The appeal concerns a decision by the opposition division to maintain European Patent No. 3076804 owned by Philip Morris related to a cartridge for a smoking device. The key issue in the pending appeal proceedings is whether a “spirally wound” material in the prior art anticipates the “gathered” material of the claim. 

The description provided a very broad definition of “gathered” encompassing any way of bringing together the material, such as by spirally winding in the prior art. The opponent argued for a broad interpretation of the term based on this definition. According to the proprietor, the term “gathered” has a well-established, and narrower meaning in the tobacco industry and therefore, the description should not be consulted for interpreting the claim.

The Opposition Division took the approach that the description should only be consulted for interpreting subject-matter in the claims that is otherwise unclear and accordingly based its decision on the narrower interpretation. 

The Board of Appeal noted divergent case law on whether the description can be used to interpret prima facie clear claim language and on the broader question of whether the description should be consulted in EPO proceedings pursuant to Article 69 EPC and/or Article 84 EPC. On the one hand, there is a line of case law, exemplified by T 169/20, according to which 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. This aligns with the EPO’s classical approach based on the first sentence of Article 84 EPC that the claims shall define the matter for which protection is sought. Conversely, in other decisions, such as T 1473/19 the Board of Appeal found that in proceedings before the EPO the claims of a patent should be interpreted taking into account the drawings and the description, pursuant to Article 69 EPC, even if the claims themselves are deemed clear. 

Recognizing this divergence in case law, the TBA in their interlocutory decision which summaries their reasons and grounds, referred the following three questions to the Enlarged Board of Appeal (referral pending under G 1/24 - Heated aerosol) :

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 the invention under Articles 52 to 57 EPC?
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?
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?

The EPO has  issued a notice indicating that, in order to ensure the proper functioning of the EPO and for legal certainty, proceedings before the examining and opposition divisions will continue and examining and opposition divisions will continue to apply the practice set out in the Guidelines for Examination in the EPO. The Guidelines specify that as far as possible, a claim must to be amended such that, in cases where the description gives a specific meaning to words used in the claims, the meaning is clear from the wording of the claim alone.

The Enlarged Board of Appeal will first look into the admissibility of the referral and then possibly rephrase the questions. Third parties will be given the opportunity to file their amicus curiae briefs in the near future.

As already noted in our earlier article, a decision by the Enlarged Board on these issues may have far-reaching consequences for patent drafting, examination, opposition and appeal proceedings before the EPO.

Notably, the question of interpretation of the claims in view of the description may bear relevance to the ongoing controversy whether the EPO’s strict approach of requiring amendments of the description to align it with the allowed claims prior to grant is necessary and justified.  In connection with this discussion on description amendments, we are currently awaiting confirmation from the Board of Appeal regarding a further referral to the Enlarged Board in T 56/21 relating to EP 3094648 pending before Board 3.3.04 (see also our previous reports on description amendments: “Description Amendments: From a lenient approach to a heavy burden for applicants and their representatives” and “Potential Referral to Enlarged Board of Appeal on the Requirement of Description Amendments: Is there a legal basis?”). It is however uncertain whether or not a new separate referral will be made on this aspect and/or whether the Enlarged Board will also issue guidance on this aspect in the G1/24 ruling, if deemed admissible.

The present referral on claim interpretation also has the potential to align patent law practices across Europe. Presently, the EPO’s classical approach stands in sharp contrast to the approach taken by national courts, particularly in infringement cases, and the Unified Patent Court (UPC). Notably, the Court of Appeal of the UPC emphasized in one of its first rulings (UPC_CoA_335/2023) that the supporting role of the description and the drawings is essential for the interpretation of the claims when assessing both infringement and validity. It stressed that the description should not be used except in exceptional cases. We hope that the EPO and the UPC converge on a uniform approach to claim interpretation to avoid conflicting decisions on validity from these two prominent European authorities.

We continue to follow further developments on this referral with great interest. If you have any questions, we would be happy to help. Feel free to reach out to our European Patent Attorneys via email on  info@dcp-ip.com.