EBA's preliminary opinion in G1/24: "the description and the figures can be referred to in the course of claim interpretation"
The Enlarged Board of Appeal (EBA) has issued its preliminary opinion in the closely watched referral G1/24 relating to the role of the description in claim interpretation. The preliminary opinion provides the EBA's initial view on the three referred questions ahead of oral proceedings scheduled for 28 March 2025. The EBA's thoughts on the three questions are very brief, and only Questions 1 and 2 are considered admissible.
Legal background: Claim interpretation
The referral in G1/24 originated from T 0439/22 and relates to fundamental questions regarding claim interpretation at the EPO. The question at the heart of the referral in G1/24 is whether, and to what extent, the description should be taken into account when interpreting the claims. The referred questions particularly seek clarity on the relationship between Article 69(1) EPC and Article 84 EPC. Article 69(1) EPC states that "the extent of protection conferred by a European patent or a European patent application shall be determined by the claims" whilst "the description and drawings shall be used to interpret the claims". Article 84 EPC states that "the claims shall define the matter for which protection is sought" and "shall be clear and concise and be supported by the description". The Board of Appeal in T 0439/22 found disparity in the case law on how and if the provisions of Articles 69 and 84 should be applied to claim interpretation.
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| And then there were two |
Case background: G1/24 - spiralled or gathered?
The referral stems from pending appeal T 0439/22 concerning Philip Morris' European patent EP3076804. The patent, which survived opposition at first instance, relates to a cartridge for a "heat-not-burn" smoking device where tobacco is heated rather than burnt.
The central issue in the appeal is whether the claims lack novelty. The dispute hinges on the interpretation of the term 'gathered' in the claims, which specify that the cartridge comprises 'gathered' smoking material. The prior art discloses a cartridge comprising 'spirally wound' smoking material. The description provides an unusually broad definition of 'gathered'. The Board of Appeal noted that this definition appeared to conflict with the normally narrower meaning of the term in the tobacco industry.
The Opposition Division had applied what the Board of Appeal termed the "classical approach" to claim interpretation, following the principle that the description should only be consulted to construe unclear claim terms. Under this approach, recourse to the description is prohibited when interpreting otherwise clear claim language. Nonetheless, the Board of Appeal identified a divergent line of case law, exemplified by T 1473/19, which holds that definitions provided in the description "cannot be left unconsidered".
The outcome of the appeal turns on this point of claim interpretation. Considering the description's broad definition would favour the Opponent's novelty attack, whilst interpreting the claim term 'gathered' according to its normal meaning without reference to the description would support the Patentee's case for novelty.
The questions referred to the EBA are as follows:
Question 1: Application of Article 69(1) EPC during examination
The first referred question asks: "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?". In other words, Question 1 asks whether Article 69(1) EPC is relevant during pre-grant examination and opposition.
Question 2: Role of description and drawings
The second question asks: "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 other words, Question 2 asks whether the description should be used to interpret the claims, and if so, whether this should only be to resolve otherwise unclear claim language. There is a significant body of Board of Appeal case law finding that the description should only be consulted if the claim language would be unclear to a skilled person.
Question 3: Definitions in the description
The third question asks: "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's preliminary opinion
The EBA's initial view is that Questions 1 and 2 are admissible, whilst Question 3 is deemed inadmissible.
On Question 1, the EBA notes the interest in the "uniform application of the principles of claim interpretation both in patent grant proceedings [...] and also in post-grant revocation and infringement proceedings before the courts of the EPC contracting states, including the Unified Patent Court". So far, the UPC has taken the approach of considering the patent as a whole such that the description should always be used to interpret the claims. The EBA considers Question 1 to raise at least two issues that need addressing. First, whether the principles of Article 69 EPC and the Protocol should be applied during examination, and second, whether they provide the legal basis for the principles to be applied the interpretation of the claims.
For Question 2, regarding whether the description and figures may be consulted when interpreting claims, the EBA's preliminary view is that "the description and the figures can be referred to in the course of claim interpretation" (r. 2). The EBA's thoughts on this question are very brief and so we await the final decision for the EBA's analysis.
The EBA's preliminary view is that Question 3 is inadmissible. Again, the EBA's reasoning is very brief. The EBA merely notes that "an answer to it is not required for the referring Board to reach a decision on the case before it" (r. 3).
Final thoughts
The EBA in its preliminary opinion has also chosen to so-far ignore the intervention of the President of the EPO that the referral should be broadened to consider the question of description amendments (IPKat). Instead of the referral being broadened, from the preliminary opinion of the EBA, it appears that it may in fact be narrowed. However, the normal note of caution that this is only the preliminary view of the EBA applies, and we await the final decision following the March hearing.
Further reading
- GuestPost: A referral broadened? To have one's cake, to eat it...or not yet to get it (G 1/24) (Jan 2025)
- BREAKING: Referral to the Enlarged Board of Appeal on claim interpretation confirmed (G1/24) (July 2024)
- Will we have a referral on using the description for claim interpretation or is the Board of Appeal jumping the gun? (T 439/22) (Jan 2024)
- EPO tries to have its cake and eat it on claim interpretation (T 0169/20) (March 2023)
Reviewed by Rose Hughes
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Wednesday, February 12, 2025
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It's really only Q2 that matters. Q1 is a bit of a distraction and doesn't really matter, although in my view A69 should only be used, and was only ever intended to be used, as guidance for national courts post-grant, while it is A84 that should matter during prosecution and opposition. Q3 becomes inadmissible due to being redundant because Q2 can be answered by the description being used in some circumstances to interpret the claims. What we now only need to know from the EB is what these circumstances are. I suspect the EB already have their view established on this. They will of course go through the motions of hearing the parties at the oral proceedings but I doubt this will make any difference. My guess is that they will say it's only necessary to consult the description if a term in the claims would be unclear to the skilled person. I think that is wrong, and I have examples to show why, but what I think probably doesn't matter.
ReplyDeleteBy the way, as a bit of self-promotion, I will be speaking at the DPMA on 28 February on this subject at the UNION-IP Roundtable, along with some distinguished people from the EPO and European courts. It's not too late to book!
https://www.union-ip.org/union/WebObjects/union.woa
That description and figures can be taken into account is not surprising, as this is regularly done be it in first instance or even in appeal. This does not mean that it ought to be done systematically. It might depend on the circumstances and whether the EBA decides upon the primacy of the claims or not.
ReplyDeleteWhat is actually interesting is that Question 1 has been subdivided in two questions.
One way of interpreting the differentiation brought in the statement about question 1 is the EBA is that it might have doubts whether Art 69(1), second sentence, and Art 1 of the Protocol are the legal bases for the principles that are to be applied to the interpretation of claims when assessing the patentability of an invention under Art 52-57.
The limitation in the referred question to Art 52-57, especially to Art 54, actually ignores the effect of the novelty criterion on added matter under Art 123(2) or the validity of the priority. I have some doubts that the EBA will sacrifice its clear position about “directly and unambiguously derivable” on the altar of harmonisation. This position goes through its case law like the red thread.
I see this in contrast to the general statement about the interests of a common interpretation in grant/opposition and infringement. This statement is actually non-committal, as long as it is not known how it will be filled with content.
The only surprise comes from the fact that the EBA considers question 3 as not admissible.
We might indeed get some more idea depending on the questions raised during the coming OP.
The EBA's provisional opinion does not mention Art 84 EPC. For Q1, the issues that the EBA wants to discuss are:
ReplyDelete- first, whether Article 69(1) EPC and Article 1 of the Protocol should be applied to the interpretation of patent claims when assessing the patentability of an invention; and
- second, whether those provisions are the legal bases for the principles to be applied to the interpretation of patent claims when assessing the patentability of an invention.
Good point - quote corrected
Delete