Following the high profile hearing last month, we are now waiting for the written decision of the Enlarged Board of Appeal (EBA) in G 1/24. Readers can catch-up on the full background to the case here. There is also still plenty to discuss while we wait.
G 1/24 relates to the question of how to interpret the claims of a patent, and whether the description of the patent may be used for this purpose. Most patent attorneys like nothing more than arguing about the meaning of words. What then could be better than an argument about how to argue about the meaning of words, as we may liberally paraphrase G 1/24. However, whilst this is all very exciting for patent attorneys, we are still left with the question of the practical implications of G 1/24? Even before the EBA issues its decision, there are some lessons to be learnt from the case on drafting the description of a patent.These lessons are even more important with the increased use of AI patent tools for patent drafting.
Beware of boilerplate
One key lesson from the case at the centre of G 1/24 can be summarised very succinctly. When drafting a patent, beware of overusing boilerplate language.
The patent at issue in the referring decision to G 1/24 (T 0439/22) was a Philip Morris patent for a heated aerosol-generating article for use with an electrically-operated aerosol-generating device (e.g. a heat-not-burn e-cigarette), in which an “aerosol-forming substrate comprises a gathered sheet of aerosol-forming material” (e.g. a sheet of gathered tobacco). A key question for the novelty of the claim was whether the product disclosed by the prior art disclosed a “gathered” sheet of tobacco. The prior art disclosed a product comprising a tobacco sheet that “may be spirally wound”. The Board of Appeal in the case was convinced that a person skilled in the art would not normally consider the definition of a “gathered tobacco sheet” to include tobacco sheets that were spiralled. The skilled person, it was agreed, would normally understand a gathered tobacco sheet to be one that was “folded and convoluted”.
However, critically, the description of the patent included the following definition:
As used herein, the term ‘gathered’ denotes that the sheet of tobacco material is convoluted, folded, or otherwise compressed or constricted substantially transversely to the cylindrical axis of the rod.
For the Board of Appeal in the case, this broader definition of the term “gathered” encompassed the spiralled tobacco sheet disclosed by the prior art. In other words, if the description could be used to redefine terms of the art used in the claims, then the patentee had shot themselves in the foot with their overly broad definition. In the view of the Board of Appeal in the case, using the broadening definition provided by the description, the claimed invention lacked novelty.
The case in T 0439/22 thus highlights the dangers of unnecessary boilerplate language. Given that the term “gathered” has an accepted definition within the field, why then does the term need to be defined in the description at all? If the patentee is intentionally trying to broaden the scope of protection offered by the claims to include sheets of tobacco not falling under the commonly accepted definition of “gathered”, then the claims would be the best place to do this. The patentee could simply have used different terminology in the claims. The use of the description to redefine words that are used in the claims creates a lack of clarity that is not conducive to legal certainty. As the case in G 1/24 illustrates, this lack of clarity may harm the patentee as well as third parties.
In short, beyond all the nuanced legal debate, a key practical take-home message from G 1/24 is simply to avoid, as much as possible, unnecessary boilerplate that may undermine your carefully crafted claims.
The importance of technical field
Arguably, the practical implications of G 1/24 for drafting practice vary according to the technical field. In the mechanical field of patent drafting, the definitions of words can be quite fluid and open to interpretation. It is often difficult in mechanical patents to interpret words without the context of the description. To interpret claim terminology such as for example, housing, member, plate, panel, and flange, it is generally necessary to understand what the purpose of these features are in the invention.
By contrast, in technically specialised fields such as biotech and software, terminology is often more clearly defined in the field. Terms such as cell, DNA, nucleic acid sequence, epitope, and chimeric antigen receptor have well-understood definitions. Of course, there will always be some scope for interpretation, but the definitions of such words are still far more delineated than the words often used in mechanical drafting. It is therefore no surprise that the referring case in G 1/24 was from the mechanical field. The point of contention in G 1/24 relates to a word (“gathered”) that on the face of it appears relatively non-technical and open to interpretation.
However, even within the field of tobacco products, the terminology used in patent claims will of often have well-understood definitions. This was in fact the case in T 0439/22, in which it was accepted that gathered would normally be understood by a skilled person to refer to the type of tobacco sheets manufactured on standard crimping machines and thus not encompass spiralled tobacco. The problem for the patentee was the non-technical definition of gathered provided in the application. Given that “gathered” is a well-understood term in the field, defining it in the specification was arguably unnecessary.
A practical lesson from G 1/24 is thus to ensure that any definitions of technical terms provided in the specification which differ from their normal technical meaning are included with the full intention of redefining the term. As suggested above, the safest plan would be to define the invention clearly in the claim.
Beware even more of AI generated boilerplate
The increased use of these tools in the industry also raises interesting questions so far as definitions are concerned. Many of the tools on offer will draft definitions for the description based on your claims. In my experience, without extensive user input and prompting these definitions are often highly unsuitable and are in many cases overly narrowing. Filling the specification with impressive sounding technical language defining terminology used in the claims may give the impression of a well-drafted patent, but this impression would be misleading. G 1/24 is a timely reminder that the description of a patent may be highly influential for how the scope of the claims is determined. AI patent drafting tools to automate a comprehensive glossary of terms based on the claims, should therefore be used with care.
Final thoughts
Before even the Enlarged Board of Appeal issues its written decision in G 1/24, there are already a number of lessons for patent drafting that can be taken from the issues at stake in the case. Wherever the Enlarged Board of Appeal lands on description-based claim interpretation, the fundamental principle of patent drafting remains the same. If you want the scope of the claims to be clear, the best place to ensure this is in claims. As the arrival of AI drafting tools reminds us, there is no substitute for careful, deliberate drafting of both claims and description.
