Claim interpretation at the EPO – G1/24 Enlarged Board of Appeal referral – preliminary opinion from the Enlarged Board
The Enlarged Board of Appeal has issued its preliminary opinion ahead of the upcoming oral proceedings on the G1/24 referral relating to claim interpretation at the EPO. It appears to confirm, at least in its preliminary opinion, that the description and figures can be referred to for claim interpretation when assessing patentability before the EPO.
As discussed in our previous article about the T 439/22 decision made on 24 June 2024, a referral has been made (G1/24) in order to clarify the legal basis for interpreting patent claims for the purpose of assessing patentability, whether and under which circumstances the description and figures may be taken into account when interpreting a patent claim, and the extent to which a patent can serve as its own dictionary.
The exact referral questions in G 1/24 (“Heated aerosol”) are:
- 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?
- 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?
- 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 Enlarged Board in its preliminary opinion has stated that while the first two questions are admissible, question 3 is inadmissible; taking the view that an answer is not required for the Board to reach a decision on the case in question.
Looking at question 1, the Enlarged Board recognised the need for uniform application in pre- grant proceedings before the EPO and post grant revocation and infringement proceedings before the UPC and courts of contracting states.
It stated that two issues need to be discussed during the oral proceedings. Firstly whether the principles of interpretation set out in Article 69(1) second sentence EPC, and Article 1 of the Protocol on the Interpretation of Article 69 are to be applied to the interpretation of patent claims when assessing patentability under Articles 52 to 57 EPC. Secondly, if Article 69(1) second sentence EPC, and Article 1 of the Protocol on the Interpretation of Article 69 are the legal bases for the principles that are to be applied to the interpretation of patent claims when assessing patentability under Article 52 to 57 EPC.
Responding to question 2, the Enlarged Board succinctly stated that it is currently of the opinion that the description and figures can be referred to in the case of claim interpretation. However, it has not yet indicated whether this can be done generally or only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation.
The hearing is scheduled for 28 March 2025. So we wait with interest as to the answers given in the final decision and the specific details on the reasoning behind these answers, given the brief nature of this preliminary opinion, hopefully to give useful guidance on claim interpretation before the EPO.
If you would like to discuss this matter in more detail, please contact the author or your usual Barker Brettell patent attorney.
