The Enlarged Board of Appeal (EBA) has issued its highly anticipated decision in G 1/24, relating to fundamental questions about how patent claims should be interpreted when assessing patentability. The referral arose from diverging Board of Appeal case law on whether the description and drawings should always be used to interpret the claims, or should only be referred to when the claims are unclear or ambiguous. The EBA found that the description and drawings should always be consulted when interpreting the claims.
However, there is an important nuance in the language of the EBA’s final order in G 1/24. The EBA does not stipulate in its decision the descriptions should always be used to interpret the claims. The EBA instead orders that the description should always be consulted to interpret the claims. The act of consulting the description does not necessarily mean that the description should be used to override otherwise clear claim language. Question 3 in G 1/24 may have provided some clarity on this issue, but the EBA found this question inadmissible in view of its answer to Question 2. Therefore, as with most referrals, questions remain.
Legal background
The EBA noted that the EPC provides limited guidance on claim interpretation principles. The important provisions are as follows.
Article 69 EPC states:
“The extent of the protection conferred by a European patent or a European patent application shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims.”
Article 69 EPC is supplemented by Article 1 of the Protocol on the Interpretation of Article 69 EPC, which provides:
“Article 69 should not be interpreted as meaning that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Nor should it be interpreted as meaning that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patent proprietor has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties.”
Article 84 EPC requires that:
“The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description.”
The legal question that has troubled the EPO concerns which of these provisions should govern claim interpretation when assessing patentability, and whether the description and drawings must always be consulted or only in cases of unclarity or ambiguity.
Case Background
The referral in G 1/24 originated from Board of Appeal 3.2.01 in case T 439/22, concerning a Philip Morris patent for a heated aerosol-generating article for use with an electrically-operated aerosol-generating device. The key issue in the case was whether claim 1 of the patent as granted was novel. Claim 1 contained the feature that the material was a “gathered sheet”. The Patentee argued that if this term was assigned its usual meaning in the art, claim 1 should be regarded as novel. The Opponent argued that if “gathered sheet” was interpreted in light of the description, it would have a broader, although still technically sensible meaning, which would lead to a lack of novelty.
The referring Board of Appeal identified diverging case law on claim interpretation and referred three questions to the Enlarged Board:
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 to the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC?
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?
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?
The referring Board identified several diverging approaches in Board of Appeal case law. Regarding Question 1, one line of case law took Article 69 EPC and Article 1 of the Protocol as the legal basis for interpretation of patent claims when assessing patentability, whilst another line took Article 84 EPC as the basis. A further line of case law was not explicit about which article provided the legal basis.
Regarding Question 2, the referring Board of Appeal identified fundamentally different approaches. One line of case law held that boards only consulted the description and drawings when interpreting claims to assess patentability if the person skilled in the art found a claim to be unclear or ambiguous when read in isolation. A contrasting line of case law held that boards always consulted the description and drawings when interpreting claims to assess patentability.
The EBA’s decision
The EBA found Questions 1 and 2 to be admissible, noting that the referring decision identified diverging case law and that both questions concerned points of law of fundamental importance. Question 3, on the other hand, was found inadmissible. The EBA particularly found that Question 3 was effectively encompassed within Question 2, and given that the EBA was providing an answer to Question 2, it considered it unnecessary to answer Question 3.
The Enlarged Board extracted two fundamental principles from existing case law:
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.
The EBA noted that Principle 1 could be considered a settled point in Board of Appeal case law, whilst Principle 2 had given rise to diverging case law.
Answer to Question 1: No clear legal basis
On Question 1, the EBA found that neither Article 69 EPC (and the Protocol) nor Article 84 EPC were entirely satisfactory as a basis for claim interpretation when assessing patentability.
The EBA explained that Article 69 EPC and the Protocol “are arguably only concerned with infringement actions before national courts and the UPC” (r.7). This conclusion was drawn from the wording of Article 69 EPC and the Protocol, their drafting history, and their position in the EPC, noting that Article 69 EPC is found in Chapter III concerning “Effects of the European patent and the European patent application”.
Regarding Article 84 EPC as an alternative basis, the EBA was equally sceptical: “Article 84 EPC addresses the content of the patent application and is formal in nature, does not mention the invention and provides no guidance on how to interpret claims. It only sets out an instruction to the drafter of what needs to be in the claims, and an instruction to the EPO to determine whether the claims meet that purpose” (r.8).
The EBA thus concluded: “there is no clear legal basis, in terms of an article of the EPC, for claim interpretation when assessing patentability. Given the above, the strictly formal answer to Question 1 would be ‘No’” (r.9).
The EBA nonetheless noted that its conclusion “does not mean that it is necessary to invent from scratch new principles of claim interpretation” (r.10). The EBA observed that whether Article 69 EPC or Article 84 EPC was taken as the basis for claim interpretation did not appear to affect the principles that were applied in practice. The EBA particularly noted that Boards of Appeal had applied the wording of these articles “in an analogous way to the examination of patentability under Articles 52 to 57 EPC. There is thus an existing body of case law from which the applicable principles of claim interpretation can be extracted” (r.10).
Answer to Question 2: Always consult the description
On Question 2, the EBA provided a clear and decisive answer, rejecting the case law that limits consultation of the description to cases of unclarity or ambiguity. For the EBA, this line of case law “is contrary to the wording, and hence the principles, of Article 69 EPC. It is also contrary to the practice of the national courts of the EPC states and to the practice of the UPC” (r.15). The EBA particularly found it “a most unattractive proposition that the EPO deliberately adopt a contrary practice to that of the tribunals that are downstream of its patents” (r.16).
The EBA thus answered Question 2: “the description and any drawings are always referred to when interpreting the claims, and not just in the case of unclarity or ambiguity” (r.18).
The EBA’s final order is as follows:
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.
Comparison with the UPC
The EBA noted that the current case law of the UPC appeared to be consistent with its conclusions. It specifically referenced the UPC Court of Appeal decision in NanoString Technologies -v- 10x Genomics. The language of the headnote to Nanostring, and the EBA’s order in G1/24 are similar. In Nanostring, the UPC stipulated that “The description and the drawings 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.” Consistency in the approaches of the UPC and EBA to claim interpretation are welcome. However, for this Kat, there remains some scope for divergence in how much the whole disclosure or individual definitions should influence claim interpretation. After all, it is one thing to consult a dictionary for a definition. It is another thing to use that definition.
What does this mean for description amendments?
Initially, there was some speculation that the EBA would use the referral in G 1/24 to also address the related controversial issue of whether the description should be amended in line with the claims. However, whilst the issue of description amendments was not addressed directly in G1/24, it seems that the issue of description amendments may also soon become the subject of its own referral in case EP 2124521 B1 (T 697/22).
The outcome of G1/24 arguably gives weight to the argument that the description should be amended in cases where there is a discrepancy between the claims and the description, for the purpose of legal clarity. However, it is also notable that other jurisdictions such as the US that rely heavily on the specification for claim interpretation do not require amendment of the description. After all, as the EBA emphasised in its G1/24 order, the claims are the starting point and the basis for assessing patentability (r. 12). Furthermore, given that G1/24 only requires the description to be consulted, and not necessarily used to directly interpret or override the language of the claims, the argument that amendment of the description is unnecessary still carries weight.
Analysis
In G 1/24, EBA therefore does not state that descriptions should always be used to interpret claims. Rather, it requires merely that the description should always be consulted to interpret the claims. There is a critical distinction between these two statements. Consulting a description does not automatically equate to using it to override the clear meaning of the claims, nor does it necessarily mean that definitions provided within the description must be read directly into the claims.
The referring Board of Appeal in T 439/22 will now have to apply the order in G1/24 to the case in question. In particular, does the broader definition of “gathered” provided in the description affect how the term should be interpreted in the claim. The question remains whether consulting the description to interpret the claims means that claim in T 439/22 encompasses spiralled tobacco, or whether the clear language of the claim overrides the definition provided in the description.
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This post is based on a previous article on IPKat.
