Anticipated Referral To The Enlarged Board Of Appeal Now Confirmed – G 1/26

Background
We previously reported on an anticipated new referral to the Enlarged Board of Appeal.

This potential referral was flagged in the Minutes to Appeal case T 873/24. The Board in that case were considering whether the description should be consulted when interpreting the claims in an assessment of added subject matter – in a similar way to the direction in G 1/24 to consult the description when interpreting the claims in an assessment of novelty and inventive step. The anticipated referral has now been confirmed, and we now know the questions referred for the Enlarged Board of Appeal’s consideration.

Questions referred
The questions referred are:

1. May a decision be considered to be “required” for the purposes of Article 112(1) EPC, if the referring Board demonstrates that the point of law in question arises out of the context of the case pending before it and, in the circumstances of the proceedings, it is reasonable for the Board to examine it and decide on it next?

2(a). Does the fact that the claims are the starting point and the basis for assessing the patentability of an invention generally preclude a feature which is only disclosed in the description or the drawings of a patent from being read into the meaning of a granted claim, in particular if this leads to a restrictive reading of terms used in the claim?

2(b). If the answer to question 2(a) is no: is claim interpretation the result of both reading the claims and consulting the description and drawings as a unitary process and does the claim being the starting point and the basis for assessing the patentability rule out only those interpretations which can be derived from the patent as a whole but would clearly contradict the general technical understanding of the terms used in the claim?

3(a). When assessing compliance with Article 123(2) EPC, must a term used in a claim be assessed against all interpretations that make technical sense to the skilled reader on the basis of the claim alone?

3(b). If the answer to question 3(a) is no: is it sufficient that only the interpretations of the subject-matter of the claim established against the background of the patent specification as a whole are directly and unambiguously derivable from the application as filed?

Discussion
The first question is related to a procedural matter concerning the conditions to be met for a referral to the Enlarged Board of Appeal to be admissible. If answered yes, it would relax the conditions a little. However, if answered no, it might well imply the G 1/26 referral is itself inadmissible.

Questions 2a and 2b are more general than just the added subject matter issue. These questions look for further guidance as to how the direction on claim interpretation in G1/24 should itself be interpreted. G1/24 says the description must always be “consulted” when interpreting the claims. In practice, we have seen many decisions where the description is consulted and effectively ignored: any inconsistency between the claims and description often sees the principle of the primacy of claims applied at the expense of the teachings of the description. This has somewhat diluted the expected effect of the G 1/24 decision.

Questions 3(a) and 3(b) are concerned with the issue of how to interpret a claim when assessing added subject matter. Namely, should all sensible interpretations of a term in a claim be considered when the claim is read in isolation? If not, is it enough that just the interpretations based on a consideration of the description are directly and unambiguously derivable?

Takeaway
Question 1 is perhaps a tacit acknowledgement that the Enlarged Board of Appeal have a good reason to decline the referral should they wish to do so. That said, it would no doubt be tempting for the Enlarged Board of Appeal to admit the referral if they believe the direction in G 1/24 is not being followed as intended. So, perhaps we will see further guidance on how the direction of G 1/24 should be applied. We will keep you informed as further news emerges.