The Enlarged Board of Appeal (EBA) has issued its highly anticipated decision in case G1/24. The case concerns the extent to which the description and figures should be referred to when interpreting the claims for assessing patentability. The board concludes that the description and figures should always be referred to when interpreting the claims for assessing patentability. This clear and succinct guidance resolves the divergence in EPO case law and is consistent with the approach recently adopted by the Unified Patent Court (UPC).
Case background
G1/24 came about as a result of a referral to the EBA by the Board of Appeal in case T0439/22. The Board of Appeal in that case considered the interpretation of the term "gathered sheet" key to determining whether or not claim 1 as granted is novel. If the term is interpreted as having its usual meaning in the art, then claim 1 would be considered novel. However, if the term is interpreted according to the broader meaning in the description, then claim 1 would be considered to lack novelty.
The referring board noted that there are inconsistent approaches in the case law of the Boards of Appeal to the legal issue of whether or not the description should be used to interpret a term in a claim which is prima facie clear. It therefore referred the following three questions to the EBA:
- 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?
- 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?
Findings of the EBA
The EBA noted that none of the articles of the EPC provided a clear framework governing claim interpretation. However, it extracted, and endorsed, the following principles from the existing case law of the Boards of Appeal:
"1) The claims are the starting point and the basis for assessing the patentability of an invention under Articles 52 to 57 EPC.
2) The description and any drawings are always referred to when interpreting the claims, and not just in the case of unclarity or ambiguity."
In adopting point 2), the EBA addressed question 2 from the referring board. It explicitly rejected the line of case law which suggested that the description and figures should only be consulted if the claim is unclear or ambiguous. It noted that such an approach would be contrary to the practice of both the national courts of the EPC and the UPC, and noted that it would be"a most unattractive proposition that the EPO deliberately adopt a contrary practice to that of the tribunals that are downstream of its patents."
Conclusion of the EBA
The EBA therefore concludes the following in answer to questions 1 and 2:
"The claims are the starting point and the basis for assessing the patentability of an invention under Articles 52 to 57 EPC. The description and drawings shall always be consulted to interpret the claims when assessing the patentability of an invention under Articles 52 to 57 EPC, and not only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation." (See Headnote, emphasis added)
Thus, the description and figures should always be referred to when interpreting the claims for assessing patentability.
Looking forward
The EBA's succinct and sensible decision provides welcome guidance on claim interpretation.
Its approach is consistent with the general statement of principle from UPC's Court of Appeal that "the description and drawings of a patent must always be used as explanatory aids for the interpretation of the patent claim and not only to resolve any ambiguities in the patent claim" (UPC_CoA_335/2023, 10x Genomics vs Nanostring; see here for further discussion).
The EBA notes that the conclusions reached highlight the "importance of the examining division carrying out a high quality examination of whether a claim fulfils the clarity requirements of Article 84 EPC." Thus, there may be an increase in the number of clarity objections as examiners are encouraged to spend more time looking to the description to interpret terms used in a claim, whereas previously such language may have been simply accepted at face value.
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