G 1/24 - Annotated

Key points

• Decision G 1/24 was refreshingly short and analysed in many other social posts and blog posts already. I will add my comments to the text below. 
• The EBA held that: "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".
• The EBA did not specify in any way how the information derived from the description must be used when deciding on the scope of the claims. As of yet, the established caselaw seem unaltered that "when taking into account the description of the patent (see e.g. the headnote of G 1/24) - which is not necessarily, and indeed may rarely be, limiting for the claimed subject-matter due to the primacy of the claims which may be broader than particular limited examples and explanations given in the description" (T 161/24).
• Indeed, the EBA derived as the first principle for claim interpretation that "The claims are the starting point and the basis for assessing the patentability of an invention under Articles 52 to 57 EPC." (and could have very well included this in the headnote as well).

EPO 

The link to the decision can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/g240001ex1

Questions 1 and 2

4. It is not a matter of dispute that the departments of the EPO, in the course of their duties, are required to interpret patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC.

5. Question 1 concerns the legal basis in the EPC for carrying out this interpretation. The two positions on this question are that the legal basis in the EPC is either Article 69 EPC and Article 1 of the Protocol on the interpretation of Article 69 EPC ("the Protocol"), or Article 84 EPC.

The issue of legal basis in the EPC has been addressed in several decisions of the Enlarged Board, for example in G 2/88, G 6/88 (these cases identified Article 69 EPC and the Protocol as the legal basis) and G 2/12 (this case identified Article 84 EPC as the legal basis). The legal basis was not the decisive issue in any of these cases.

 

• The EBA does not identify which parts of G 2/88, G6/88 and G 2/12 are relevant. I think the following parts are meant. 
• G 2/12 point VIII.2(6)b):  "Dabei ist zu unterscheiden zwischen den Aspekten der Patentierbarkeit auf der einen und den (Schutz-)Wirkungen europäischer Patentanmeldungen oder Patente auf der anderen Seite. Das EPÜ sieht eine klare Entscheidung dieser Art eindeutig vor, da die Patentierbarkeitserfordernisse in den Artikeln 52 bis 57, 76, 83, 84 und 123 EPÜ geregelt sind, während auf den Schutzbereich und die Rechte aus europäischen Patentanmeldungen bzw. Patenten insbesondere in den Artikeln 64 (2) und 69 EPÜ eingegangen wird."
• G 2/88 r.9.1 about second non-medical use claims: "In the view of the Enlarged Board, with reference to the discussion concerning the interpretation of claims in paragraph 9 above, the claim in question should properly be construed, having regard to the Protocol to Article 69 EPC, as implicitly including the following functional technical feature: that the named compounds, when used in accordance with the described means of realisation, in fact achieve the effect (i.e. perform the function) of controlling fungus. ... In other words, when following the method of interpretation of claims set out in the Protocol, what is required in the context of a claim to the "use of a compound A for purpose B" is that such a claim should not be interpreted literally, as only including by way of technical features "the compound" and "the means of realisation of purpose B"; it should be interpreted (in appropriate cases) as also including as a technical feature the function of achieving purpose B, (because this is the technical result). Such a method of interpretation, in the view of the Enlarged Board, is in accordance with the object and intention of the Protocol to Article 69 EPC. If the proper construction of such a claim in the context of a particular patent is such as to include such a functional technical feature, the question which remains to be considered is whether such claimed invention is novel. (same as G 6/88 r.7.1; see also G 6/88, r.3, first sentence)

6. The Enlarged Board considers that neither Article 69 EPC and Article 1 of the Protocol, nor Article 84 EPC are entirely satisfactory as a basis for claim interpretation when assessing patentability.

7. Article 69 EPC and the Protocol are arguably only concerned with infringement actions before national courts and the UPC. Such a conclusion can be drawn from the wording of Article 69 EPC and the Protocol, the drafting history of these provisions, and from their position in the EPC, (Article 69 EPC is found in Chapter III, "Effects of the European patent and the European patent application").

• The EBA omits the details.

• Especially for the reference to the drafting history of the provisions, this is a pity, because the travaux to the EPC are an extensive collection of documents. However, the impeccable amicus letter of Alessandro Cossu contains an impressive analysis of the travaux (from page 12), disucssing Van Empel, the key develpoments in the BR documents (citing BR/7/69), the contemporary understanding as derivable from the M documents, and even analysing the Hartel Study. The amicus letter also contains a textual and systematic analysis, the latter being slightly different from the one of the EBA.
• For readers who wish to learn more about the methods of interpretation, I can recommend Vissers Annotated EPC, 2025 edition, Preamble Note 2.2 (page 6).  

8. Using Article 84 EPC as an alternative basis for interpretation of the claims can also be criticised. 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 (see T 1473/19 Reasons 3.8).

• T 1473/19 r.3.8, in part "Article 84, first sentence, EPC does not contain any such rules. Rather, the rationale underlying both the specific requirements under Article 84, second sentence, EPC (as to clarity see, for example, T 6/01, Reasons 14) and the general requirement under Article 84, first sentence, EPC (see T 3097/19, Reasons 28 and 28.1) is to enable a clear delimitation of the extent of protection. In other words, claims must satisfy the requirements under Article 84 EPC so that they can fulfil their purpose of enabling the protection conferred by the patent to be determined under Article 69 EPC (cf. G 2/88, Reasons 2.5). Article 84 EPC, however, says nothing about how to interpret patent claims. At most, it defines the standard to be applied when assessing clarity."

9. The Enlarged Board thus considers that 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". The Enlarged Board will, however, give some further guidance on this issue.

10. The above conclusion does not mean that it is necessary to invent from scratch new principles of claim interpretation. The Enlarged Board notes that, from the case law of the Boards of Appeal (see the case law described in Reasons 3.2 of the Referring Decision), whether Article 69 EPC or Article 84 EPC is taken as the basis for claim interpretation does not appear to affect the principles that are applied. In general terms, what the Boards of Appeal have done is apply 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.

• The referring decision is T 439/22. Point 3.2 of the reasons thereof is lengthy, and concludes with  "Thus, to reach a common approach on the legal basis for claim construction for patentability, a referral of the case to the Enlarged Board of Appeal is required.".

11. The Referring Decision contains an extensive discussion of how the Boards of Appeal have interpreted patent claims when assessing patentability {see the Board of Appeals case law discussed in the Referring Decision, Reason 3.3.2(b), (in particular T 2684/17 Reasons 2.1.4 and T 1871/09 Reason 3.1), Reason 3.3.3, (in particular T 1473/19 Reasons 3.1 to 3.15 and 3.16 to 3.16.2), and Reason 3.3.4}.

• T 2684/17 Reasons 2.1.4 in translation: According to the settled case law of the Boards of Appeal the terms of a claim or the wording of the claim as such must be interpreted contextually, i.e. in the overall context of the claim or the description (see T 1646/12 of 26 June 2015, Reasons 2).
• T 1871/09 in translation: "The Board applied a general principle of interpretation, of which Article 69 EPC is merely an illustration, according to which a part of a document cannot be interpreted independently of its context, but rather that the document as a whole must be considered when seeking the meaning of a particular statement referred to (see decision T 556/02, section 5.3, unpublished)."
• T 1473/19: "According to established case law, patent claims must be interpreted through the eyes of the person skilled in the art, who should try with synthetical propensity to arrive at an interpretation of the claim which is technically sensible and takes into account the whole disclosure of the patent (Case Law of the Boards of Appeal, 10th edition 2022, II.A.6.1, first paragraph). The whole disclosure of the patent includes the description and the drawings, which must therefore be taken into account for claim interpretation (T 2365/15, Reasons 4.3.1).

12. From this case law the following principles of claim interpretation can be extracted:

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 here actually adopts these two principles. The EBA next acknowledges that the second principle is controversial (point 13 of the reasons) and gives some supporting arguments.

13. Point 1) above can be considered to be a settled point in the case law of the Boards of Appeal, and indeed the Referring Decision does not suggest otherwise. As regards point 2), this has given rise to diverging case law.

14. The Enlarged Board, in adopting the above position, is thus rejecting the case law of the Boards that sees no need to refer to the descriptions and drawings when interpreting a claim, unless the claim is unclear or ambiguous. This is the issue raised in Question 2.

• The phrase "in adopting the above position" refers to the EBA adopting the second principle in point 12 of the reasons.
• "the case law of the Boards that sees no need to refer to the descriptions and drawings when interpreting a claim, unless the claim is unclear or ambiguous."
• See e.g. T 0197/10, for novelty: "If the patent claims are drafted so clearly and unambiguously that a person skilled in the art can easily understand them, there is no need to refer to the description for interpreting the patent claims. In the event of a discrepancy between the patent claims and the description, the unambiguous wording of the claims should be interpreted as a person skilled in the art would understand them without reference to the description.
• T 169/20: "if the wording of a claim is clear and technically reasonable in itself, it is neither necessary nor justified to interpret it in the light of the description. In particular, the support of the description should not be used for restricting or modifying the subject-matter of the invention beyond what a skilled person would understand when reading the wording of the claims, for example by excluding interpretations which are both reasonable and technically sensible within the relevant technical context."

15. The diverging case law under para 12, point 2) above, where the description is referred to only in cases of unclarity or ambiguity, 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 (see Reasons 4.3 and 4.4.4 of the Referring Decision for a discussion of this national and UPC case law).

• The EBA uses "diverging case law" in the sense of the part of the case law that the EBA rejects in the present decision. 

16. The Enlarged Board finds it a most unattractive proposition that the EPO deliberately adopt a contrary practice to that of the tribunals that are downstream of its patents. On this point, the Enlarged Board agrees with the harmonisation philosophy behind the EPC (see G 5/83, Reasons 6, and G 3/08, Reasons 7.2.2).

• G 5/83: "In the interpretation of international treaties which provide the legal basis for the rights and duties of individuals and corporate bodies it is, of course, necessary to pay attention to questions of harmonisation of national and international rules of law. This aspect of interpretation, not dealt with by the provisions of the Vienna Convention, is particularly important where, as is the case with European patent law, provisions of an international treaty have been taken over into national legislation. The establishment of harmonised patent legislation in the Contracting States must necessarily be accompanied by harmonised interpretation. For this reason, it is incumbent upon the European Patent Office, and particularly its Boards of Appeal, to take into consideration the decisions and expressions of opinion of courts and industrial property offices in the Contracting States.

17. A further reason for rejecting this line of Board of Appeal case law is a logical one. The finding that the language of a claim is clear and unambiguous is an act of interpretation, not a preliminary stage to such an interpretative act.

• This reasoning puzzles me. I think that the degree of clarity of a sentence can often be determined for a sentence in isolation. For instance, if the words are scrambled in a sentence in a document, the sentence is unclear without any need to study the other sentences in the document. 
• On the other hand, a legal conclusion that a claim meets Article 84  EPC may very well require a consultation of the description.

18. The Enlarged Board thus answers Question 2 as follows: the description and any drawings are always referred to when interpreting the claims, and not just in the case of unclarity or ambiguity.

• Interestingly, the headnote differs linguistically:  "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."
• One can only speculate about why the wording is not the same in point 18 of the reasons. 

19. The Enlarged Board notes that the current case law of the UPC, as exemplified in Headnote 2 of the order of the UPC Court of Appeal of 26 February 2024 in NanoString Technologies -v- 10x Genomics, (as rectified by the order of 11 March 2024), appears to be consistent with the above conclusions.

• link

20. The above considerations highlight the importance of the examining division carrying out a high quality examination of whether a claim fulfils the clarity requirements of Article 84 EPC. The correct response to any unclarity in a claim is amendment. This approach was emphasised in the Comments of the President of the EPO (see para 87, 109 and last sentence of para 135 of these comments).

• link to the comments of the President of the EPO
• 87. This requires that the subject-matter claimed be defined as precisely as possible in the claims and that the description supports (and if necessary is adapted to support) the claims so that the requirements of Article 84 EPC are met. This will limit the risk of diverging claim interpretations to the greatest extent possible. Consequently, examiners should require applicants to amend the claims so that the meaning is as clear as possible from the claim wording alone and to adapt the description to these claims.
• 109.  Finally, there are detailed rules [in the Guidelines] about how to deal with inconsistencies between the claims and the description. As set out above, if the claims are more limited than the description (like apparently in the case underlying the present referral, according the referring board), the claims may be broadened or the description may be limited. 123 Vice versa, if there is a statement in the description which suggests that the invention is limited to a particular feature but the claims are not thus limited, the inconsistency can be removed either by broadening the description or by limiting the claims. 124
• 135.  However, in the interest of legal certainty for the public, the EPO will, as far as possible, require the claims to be amended so that their meaning is clear from the wording of the claims alone.
• Of course, referral G 1/25 on the need to adapt the description has meanwhile been made.

21. In the light of the above, the Enlarged Board finds itself in a position to answer the referred Questions 1 and 2 as set out in the Order below.

Question 3

1. Question 3 is considered by the Enlarged Board to be encompassed within Question 2. As the Enlarged Board is going to give an answer to Question 2, the Enlarged Board considers that Question 3 is inadmissible as an answer to it is not necessary for the Referring Board to reach a decision in the case before it.

• 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 EBA accordingly does not indicate how the information from the description must be used.