The Enlarged Board of Appeal issued their decision in the case of G1/24 on 18 June 2025.
Background
The facts of the case and the questions referred to the Enlarged Board are detailed in our previous article, G1/24 referral to the Enlarged Board of Appeal (EBOA) – will the EBOA resolve the burning issue of claim interpretation?
In brief, the Enlarged Board was asked to consider when the description and figures can be consulted when interpreting the claims to assess patentability and if this should be done only if the claim is deemed unclear or ambiguous.
In the appeal from which the questions were referred, a key issue is the claim interpretation of the term a “gathered sheet”. The patent proprietor-respondent argued that if this term is assigned its usual meaning in the art, claim 1 is to be regarded as novel and the appellant-opponent argued that if “gathered sheet” is interpreted in the light of the description, including the definition given therein, then it would have a broader meaning which would lead to a lack of novelty.
The decision
The first of the referred questions related to if Article 69 (1), second sentence EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC can be applied to the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC.
This question relates to diverging case law at the EPO in which some cases have pointed to Article 69 (1), second sentence EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC as legal basis for why the description and figures should always be consulted for claim interpretation and others have pointed to Article 84 EPC (clarity) as to why the description and figures should only be consulted if the feature in the claim is unclear or ambiguous.
The Enlarged Board considered that Article 69 (1), second sentence EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC were only concerned with “infringement actions and do not provide a basis for claim interpretation when assessing patentability under Articles 52 to 57 EPC.”
The Enlarged Board was also of the opinion that Article 84 EPC does not provide an alternative legal basis as it “addresses the content of the patent application and is formal in nature without providing guidance on how to interpret claims”.
The Enlarged Board did however consider that there was an “existing body of case law which applied the aforementioned provisions in an analogous way to the examination of patentability, and from which the applicable principles of claim interpretation could be extracted.”
The decision of the Enlarged Board concluded:
- 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 and not only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation.
Relevance to practice
This decision indicates the importance of clear definitions and that definitions should be thoroughly considered when drafting.
In light of the decision, it is likely that applicants will be held to the definitions set out in the specification and the claims will be interpreted in light of any limitations described therein.
Further, the Enlarged Board has opted to follow the standard for case law from national courts and the UPC which does provide clarity across these jurisdictions. This should be welcome news for applicants and patent professionals alike.
It is however unfortunate that this decision does not discuss the issue of when description amendments are required in order to bring the description into conformity with the accepted claims. While it is not explicitly discussed, it may be inferred that the description should be brought into conformity in such a way as to ensure that the definitions in the description are not at odds with the meaning of claim features put forward by the applicant in prosecution.
