G 1/26 asks how the description and drawings should inform claim interpretation, and what this means for the assessment of added subject-matter
Background
In G 1/24, the EBA confirmed that the description and drawings must always be consulted when interpreting the claims for the purposes of assessing patentability under Articles 52 to 57 EPC, which govern the assessment of novelty, inventive step and exclusions from patentability. However, G 1/24 did not provide further guidance as to what ‘consulting’ the description should involve or how this should impact the interpretation of the claims. There have now been many decisions of the Boards of Appeal that apply G 1/24, but the issue of how terms in claims should be interpreted in light of the description has been a matter of significant debate in the case law. Different Boards have taken different approaches on this front, in particular in relation to whether restrictive definitions of terms provided in the description should be read into the claims.
Furthermore, G 1/24 did not expressly refer to Article 123(2) EPC, which governs added subject-matter by stipulating that a European patent application or patent must not be amended to include subject-matter which extends beyond the application as originally filed. The Boards have taken differing approaches to whether and how G 1/24 should be applied in the context of Article 123(2) EPC.
The referring decision
In the referring decision, T 873/24, the question of added subject-matter hinges on the interpretation of a ratio in the claims.
In particular, claim 1 of the patent as granted specifies that “the ratio of titanium to nitrogen is in excess of 3.42” but does not state whether the ratio is a weight or a molar ratio. The Patentee argued that the ratio in claim 1 should be interpreted as a weight ratio when the description is consulted to interpret the claim, because that is the definition that would be apparent to a skilled person reading the description. The application as filed provided basis for the ratio being a weight ratio, so under this approach there would be no added subject-matter in claim 1. The Opponent, however, argued that the ratio should not be interpreted as a weight ratio because it could be a weight ratio or a molar ratio, and a molar ratio would not be inconsistent with the rest of the claim. Under this approach, claim 1 would violate Article 123(2) EPC because one possible interpretation of it would not have basis in the application as filed.
The referring Board (3.3.05) considered whether the dimensionless ratio in claim 1 represents added subject-matter to depend on how this feature is interpreted when consulting the description, as stipulated in G 1/24. In the Board’s view, there are substantial differences in the way that terms in claims are interpreted in decisions that apply G 1/24, depending on the extent to which the description is relied upon. The Board identified three differing approaches in the case law, which did not lead to the same outcome under Article 123(2) EPC in the case at hand. The Board therefore considered a referral to the EBA to be appropriate.
1) Under the first approach, the description is only consulted for the purpose of defining the skilled person and their common general knowledge. All possible claim interpretations are then taken into account, except those that are illogical or make no technical sense.
In the case at hand, the Board considered that the skilled person could interpret the dimensionless ratio as a molar ratio or a weight ratio. Claim 1 would therefore violate Article 123(2) because there was no basis for the molar ratio having the value specified in claim 1.
2) According to the second approach, the description is consulted beyond mere identification of the technical field in order to exclude interpretations of a claim which are incompatible with the technical context provided by the patent. However, it is not accepted under this approach that features or restrictions only present in the description can be read into the claim. Similarly, a broad interpretation of a claimed feature is not accepted where the feature, as such, imparts clear, credible technical teaching to the skilled person.
In the present case, the Board considered that under this approach it would not be permissible to read into the claim, from the description, a requirement that the dimensionless ratio is a weight ratio. As with the first approach, adopting this approach leads to a finding of added subject-matter.
3) The third approach takes a more holistic view, interpreting the claim in light of the patent specification as a whole to determine the meaning that a person skilled in the art would attribute to the terms used in the claim. Claim interpretation is accordingly seen as the result of both reading the claims and consulting the description and drawings as a unitary process. This is more closely aligned with the approach adopted by the UPC.
Under this approach, the Board considered it would be reasonable to conclude that the dimensionless ratio in claim 1 should be interpreted as a weight ratio and that there is therefore no added subject-matter.
The Board considered that further clarity on how G 1/24 should be applied is needed from the Enlarged Board, in view of the differing outcomes of the assessment of added subject-matter in the case before it, depending on which of the approaches set out above is followed. The Board commented that it is of particular importance to know whether interpreting a claim might go so far that it leads to a broadening or limitation of features based on the description. The Board also noted that with regard to all three of the approaches set out above, it is to be clarified against which of several possible interpretations the claim has to be assessed under Article 123(2) EPC.
A procedural point
The Board also seeks to clarify when it is procedurally reasonable for a Board to make a referral to the EBA (see question 1 below). Under Article 112(1) EPC, a Board may only refer questions to the EBA if it considers a referral is required in order to ensure uniform application of the law, or if a point of law of fundamental importance arises. However, a further requirement has been read into the term ‘required’ in the case law: the referred questions need to be relevant to the referring Board’s decision for a referral to be admissible. The Board considers that approach to be “impractical and inefficient”. In its view, referred questions should not need to be shown to be decisive for the outcome of the referring case in order to be admissible. The Board therefore asks what is meant by “required” in Article 112(1) EPC.
The referral
In view of the issues discussed above, the following questions have been referred in G 1/26. The first question relates to the procedural issue of the requirements for a referral to the EBA to be considered admissible. Questions 2(a) and 2(b) relate to how the description and drawings should be used to interpret the claims. Finally, questions 3(a) and 3(b) concern the implications of claim interpretation for assessing compliance with Article 123(2) EPC.
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?
The President of the EPO has decided that proceedings in examination and opposition should continue while this referral is pending to ensure legal certainty and maintain the effective operation of the patent system. There are therefore unlikely to be any changes in practice by the EPO until the EBA issues its decision in G 1/26, which is likely to be some time in 2027.
Conclusion
The interpretation of terms in claims is often decisive in assessing patentability, and as this referral demonstrates, it can also be central to assessing added subject-matter. G 1/26 should provide guidance on how the requirement set out in G 1/24 to consult the description and drawings when interpreting the claims should be applied, and what the implications are for added subject-matter. These issues are of crucial importance for many examination and opposition cases before the EPO.
We will continue to monitor the referral and provide our commentary as developments emerge.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
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