Oral proceedings before the Enlarged Board of Appeal (G1/24) were held on 28 March 2025, to discuss the extent to which the description can be used to interpret the claims when assessing patentability. Boult followed the hearing via live stream.
As previously discussed, the following questions were referred to the Enlarged Board:
1. Is Article 69(1), second sentence EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC to be applied to the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC?
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?
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?
During the proceedings, the Appellant (opponent) proposed a new “diamond standard” in which both the description and drawings should be used to interpret the claims. The Respondent (patentee) disagreed, arguing for a primacy of the claims approach wherein the description should only be used to interpret the claims in the instance that the claims are unclear.
The Enlarged Board did not give much away on the day. We therefore eagerly await the written decision and will provide our commentary as soon as it issues.
If you have any questions on how G1/24 may impact your patent needs, please get in touch with your usual contact at Boult.
