Preliminary Opinion Issued for the Enlarged Board of Appeal Case G 1/24 Regarding Use of the Description When Interpreting the Claims

The Enlarged Board of Appeal (EBA) has issued its preliminary opinion in case G 1/24. The case concerns the extent to which the description and figures should be referred to when interpreting the claims for assessing patentability. The preliminary opinion is short and the EBA is not bound by the opinion, but it provides an initial insight into the EBA’s thinking.

The three questions referred to the EBA by the Board of Appeal in T 0439/22 are set out below, together with comments on the EBA’s preliminary opinion in relation to each question.

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 on the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC?

Question 1 asks whether the legal provisions applied to claim interpretation when determining the scope of protection conferred by a European patent should also be applied to claim interpretation when determining whether subject matter is patentable (e.g. whether it is novel and inventive). In the provisional opinion, the EBA does not yet propose an answer to the question, but rather provides some points for further consideration.

First, the EBA recognises the “interest in uniform application of the principles of claim interpretation” in pre-grant and post-grant proceedings, including proceedings before the national courts and the Unified Patent Court (UPC). Historically, the EPO has not had to be as concerned about, e.g., infringement and revocation proceedings before the national courts. However, with the advent of the UPC, the EBA appears to have uniformity of law in all pre-grant and post-grant proceedings very much in mind.

Second, the EBA considers question 1 to raise at least two interrelated points: first, whether the legal provisions applied for claim interpretation when determining the scope of protection are to be applied to claim interpretation when assessing patentability; and, second, if there is adequate legal basis to apply such provisions to claim interpretation when assessing patentability. The EBA does not provide any further comments on these two points. We wait to see the EBA’s conclusions and further analysis once the decision issues.

 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? 

In the provisional opinion, the EBA simply states that in their current opinion “the description and the figures can be referred to in the course of claim interpretation.” We will have to wait to see whether there are any limitations on the circumstances under which the description and figures can be referred to when interpreting the claims. The EBA appears to rule out completely ignoring the description and figures when interpreting the claims.

Interestingly, the UPC’s Court of Appeal (in a decision in case UPC_CoA_335/2023) made a general statement of principle, followed in subsequent UPC decisions, 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” (emphasis added). See here for further discussion of that decision. It will be interesting to see to what extent the decision from the EBA is in-line with the statement from the UPC’s Court of Appeal.

 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 did not find question 3 admissible, and simply stated that “an answer to it is not required for the referring Board to reach a decision on the case before it.”

The oral proceedings for G1/24 are scheduled for 28 March 2025. A link to the livestream for members of the public will be published here on 21 March 2025. Of course, we will have to wait a bit longer to get the EBA’s full analysis and conclusions since, following the oral proceedings, the EBA will need time to prepare the reasoned decision.