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EPO Enlarged Board of Appeal to Consider the Use of the Description When Interpreting the Claims

The Board of Appeal in case T 0439/22 plans to refer questions to the Enlarged Board of Appeal (EBA) to clarify the extent to which the description should be referred to when interpreting the claims.

In particular, recently published minutes of oral proceedings held on 10 April 2024 indicate that the Board has concluded that a referral to the EBA was necessary. Although the minutes from the oral proceedings are brief, an earlier non-binding preliminary opinion issued by the Board sheds some light on their thinking.

Specifically, the Board considered the case to hinge on the question of whether the description is to be taken into account when interpreting a claim that contains allegedly clear wording. The Board noted that there are two contradictory lines of case law on this issue, which essentially state that either (i) the description is used to interpret the claims, regardless of whether or not the wording of the claims is clear; or (ii) the description is used to interpret the claims only where the subject matter and/or technical context needs clarifying.

For the present case, in the Board’s preliminary view, if position (i) is followed, such that the claim interpretation is in light of the description, then the claim would not be considered novel. On the other hand, if position (ii) is followed, such that the description is not referred to due to the claim being clear, then the claim would be considered novel. Thus, in view of the diverging lines of case law, the Board considered a referral necessary to ensure uniform application of the law.

The Board also considered the matter to be a point of law of fundamental importance. In particular, the Board stated that “a narrow interpretation of the claim language ignoring a definition giv[en] in the description would also conflict with a broader interpretation by national courts or the UPC when having to deal with the granted claim later during the li[f]e of the parent”. Thus, the Board is keeping in mind the potential impact on post-grant proceedings, including the UPC.

Interestingly, the UPC’s Court of Appeal in a recent decision in case UPC_CoA_335/2023 made a general statement of principle that “the description and drawings of a patent 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”. See here for further discussion of that decision. Thus, it would seem that the UPC’s Court of Appeal would agree with position (i) outlined above

The formal referral, including the specific questions referred, is expected to be published in the near future. It remains to be seen whether the EBA will accept the referral and, if so, whether the questions will be modified by the EBA before they are answered.