In July 2024, we published our comments on the appeal case referring to a “gathered sheet” which led to the following three questions regarding claim interpretation being referred to the Enlarged Board of Appeal as case G1/24:
The Enlarged Board of Appeal has now given its preliminary opinion on the above three questions.
In their preliminary opinion, the Enlarged Board has found that questions 1 and 2 are admissible, while question 3 is found not to be. The preliminary opinion also offers a small insight into the Board of Appeals current thinking, particularly with regard to the second question where they have indicated that the description can be used to interpret claims.
Question 1
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?
The Enlarged Board has stated that they are aware of the interest in uniform application of the principles of claims interpretations not only in the patent grant proceedings before the administrative departments of the EPO and the Boards of Appeal, but also in the post-grant revocation and infringement proceedings in the EPC contracting states, including the Unified Patent Court (UPC).
Interestingly, the specific mention of the UPC signals the Enlarged Board’s particular awareness of the current potential for there to be divergence between the UPC and the EPO’s approaches to claim interpretation, and this question may bear some significant weighting in providing harmonisation between the courts of both bodies.
The Enlarged Board has also mentioned that as well as discussing the issue raised by question 1, they will also consider if Article 69(1) EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC are to be the legal bases for the principles that are to be applied to the interpretation of patent claims when assessing the patentability of an invention under Article 52 to 57 EPC.
The preliminary opinion offers no clue as to how the Enlarged Board might answer this question, so we will have to wait for further guidance.
Question 2
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?
In addition to indicating that the second question is admissible, the Enlarged Board has provided a very brief comment that the description and the figures can be referred to in the course of claim interpretation.
Hence, we will have to wait for further guidance as to the limits on when the description and claims should be used to support claim interpretation. The question itself poses a key issue, namely should the description and drawings be used only when the claims are unclear or ambiguous when read in isolation (or should the description and drawings be used in all circumstances). The preliminary opinion offers no guidance in this key respect.
Question 3
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?
Question 3 was found inadmissible because the Enlarge Board are of the view that this question is not required in order for the referring Board of Appeal to be able to reach a decision in the case before it.
It is now just one month until the date of oral proceedings on 28 March 2025, although we will have to wait a little longer for the written decision to publish. We will be keeping an eye on how this case progresses but, for the time being, good patent practice remains unchanged. In particular, careful consideration during the initial drafting of patent claims can avoid the expense and uncertainty of dealing with clarity issues during prosecution of the patent application. If you have any questions on how G1/24 may impact your patent needs, please get in touch with your usual contact at Boult.
