Today saw the eagerly awaited Oral Proceedings before the EPO's Enlarged Board of Appeal in the case G 1/24, which relates to the extent to which the description may be used to interpret the claims in Europe. Twenty-eight amicus curiae briefs were filed in the run up to the Oral Proceedings by a range of individuals and organizations, demonstrating the high level of interest from the European patent community in this important area.
The referring case, T 439/22, is an appeal by Yunnan Tobacco International against the Opposition Division's decision to reject their Opposition to Philip Morris' patent, EP3076804. The Oral Proceedings were centered around three questions referred to the Enlarged Board by the Board of Appeal:
- Is Article 69(1) EPC, 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?
- 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?
- 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 focus of the Oral Proceedings was mostly on the first question, which essentially asks whether the approach taken in post-grant proceedings (i.e., revocation and infringement) of using the description and drawings to interpret the claims should also be applied during pre-grant proceedings covered by the EPO (i.e., examination and oppositions). As well as the current text of the EPC, there was a discussion of the Travaux Préparatoires of the EPC 1973, which provide context and insight into the intentions behind the drafting of the EPC legislation.
Having heard from the Appellant and Respondent, as well as from Representatives of the President of the EPO, the Enlarged Board will now prepare their full written Decision. We expect this to issue some time later this year, and will provide our insights on their conclusions on this significant and contentious area of European patent law in due course.
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