Keywords: patents, European Patent Office (EPO), description, claims, Enlarged Board of Appeal (EBA), G1/24, claim interpretation

Headline

Last year, the EPO’s Enlarged Board of Appeal (EBA) completely overturned the general approach that the EPO had taken for decades in interpreting patent claims. Instead of insisting that the claims must be inherently clear and interpreted without reference to the description, in decision G1/24 the EBA decided that the description and drawings must always be ‘consulted’ to interpret the claims- and certainly when assessing patentability. This constituted a minor earthquake for European patent professionals since it was such a fundamental change. But how does it change the drafting and prosecution of European patent applications on a day-to-day basis? As is usually the case, the seminal decision sets out the new legal landscape, but it is for subsequent decisions to help provide the roadmap. In this article, we review the landmark decision G1/24 and also discuss some of the subsequent decisions of the EPO’s Boards of Appeal relevant to G1/24. We also try to pick the bones out of all of this and provide some practical advice, although it is clear it will be some time before a truly settled position is reached.

Background

There have been many schools of thought about how claims of an EP patent application should be interpreted and how far applicants must go in amending the description.

Indeed, the two burning questions are:

1) Should the claims should be interpreted for assessing patentability by reference to the description, or are there are only specific scenarios in which the to do so?

2) Should the description always be amended to align with the scope of the claims?

The recent decision, G1/24 deals with these questions, but whether this decision provides clarity or further confusion, is itself up for debate. In fact, the second question has now triggered a separate referral - G1/25 (see our article linked here on this matter).

What is G1/24 all about?

The initial referral was from case T 0439/22, where the opposed patent in question related to a heated aerosol-generating material for use with an electrically operated aerosol-generating device. Claim 1 specified that the material is a “gathered sheet”.

Opponent’s argument: if "gathered sheet" was interpreted in light of the description, it would have a broader meaning, which would thus lead to a lack of novelty.

Patentee’s argument: if the term “gathered” was assigned its alleged “usual meaning” in the art, claim 1 would remain novel.

So, which interpretation is correct? And how does this impact how/whether the description should also be amended accordingly?

What is the legal basis for interpreting claims?

First we take a look at what the legal basis there is surrounding claim interpretation.

Art. 84 EPC: “the claims shall define the matter for which protection is sought" and "shall be clear and concise and be supported by the description"

Art. 69 EPC: “the extent of protection conferred by a European patent or a European patent application shall be determined by the claims”, supplemented by Article 1 of the Protocol on the Interpretation of Article 69 EPC which essentially states that the extent of protection is not defined by a strict, literal meaning of the claims, but also in light of the description/drawings. However, at the same time the claims should not be interpreted so broadly to serve only as a guideline. In other words, there is a fine balance between these two extreme positions. It is noted that Art. 69 and its Protocol applies to the assessment of the extent of the protection and not to the interpretation of the claims when assessing patentability.

What do previous decisions say about the legal basis for claim interpretation?

· T 0438/22: Art. 69(1) EPC only applies post grant, while Art. 84 EPC is used for examination. Description should be adapted in line with the claims.

· UPC Nanostring: Art. 69(1) EPC always applies when interpreting the claims

· T 056/21: The description only needs to be referred to when there is ambiguity in the language of the claims and there is no legal basis in the EPC for forcing description amendments

Clearly, there were conflicting views at the EPO about how to interpret claims for patentability.

What were the questions referred to the EBA for G1/24…and what were the answers?

1. 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?

No - Art.69 EPC is used to determine the extent of protection and concerns the effects of a patent and not interpretation of claims in opposition or prosecution. Meanwhile, Art. 84 EPC is designed to guide drafting not interpretation.

Thus, it was decided, there is no clear legal basis under the EPC for claim interpretation when assessing patentability. Practically, however, consistent principles have been developed through case law which are analogous to the principles of Art.69 and Art.84 EPC and are already used by the EPO.

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?

Yes - The description and any drawings are always to be consulted when interpreting the claims for patentability, not only where there is lack of clarity or ambiguity.

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?

Inadmissible as considered encompassed in Question 2.

The key takeaway then is that the claims and description should be looked at together when interpreting the claims. This would appear to align closely with the UPC’s approach, perhaps intentionally to avoid divergence that could influence applicants’ choices between the Unitary Patent and national validations.

However, what does “always consulting the description” actually mean in practice…?

Applying G1/24 to the original T0439/22 case For the T0439/22 case, the EBA said the definition of “gathered sheet” in the description had to be used , ultimately resulting in a broader interpretation and lack of novelty.

The EBA found no reason to ignore the definition provided by the patentee in the specification, commenting that the choice to define “gathered” in the description indicated this term did not have a commonly accepted meaning in the art in the first place.

But how has G1/24 been applied elsewhere?

We take a look below at how G1/24 has influenced other decisions by the Boards of Appeal so far.

· T 1561/23: "G 1/24 does not even explicitly require that the definition of a term from the description must be used for the interpretation of a claim". Definitions in the description do not override the claim language unless they are explicitly clear and relevant. So, it seems like it’s important to consider a) context of the term in the description (i.e. is it a specific embodiment or is it something more generic) and b) whether the definition provided is clear and meaningful to actually be relied upon to interpret an integer in a patent claim. In our view, this might help to avoid situations in which the patent applicant might too easily be able to pick and chose the interpretation of the claims as it suits them in order to avoid prior art.

· T 2027/23: "a claim should not be interpreted, based on features set out in embodiments of an invention, as having a meaning narrower than the wording of the claim as understood by the person skilled in the art".

· T 0412/24: "a sensible claim construction cannot be reinterpreted on account of the description being 'consulted' or 'referred to'"

· T 2034/23: "consultation of the description does not, however, mean that claimed features must always be construed as narrowly as any specific embodiments of the invention found in the description".

· T 0873/24: this case has resulted in yet another referral to the EBA. The case shows there is an interface between G1/24 and added subject matter. This interface is currently unclear (hence the referral) and it could give rise to unexpected consequences.

· T 0439/22: this is the case which resulted in the G1/24 referral. It has now been considered further in opposition-appeal proceedings, and our comments are provided below.

· G 1/25: a new referral to the EBA to determine the EPO’s future approach on whether the description should be amended in line with the claims. We will keep you advised as matters progress.

These decisions suggest that the description should be referred to but that it does not have to be used to narrow or broaden the meaning of a term in the claims. Thus, the requirement from G1/24 to always consult the description might seem to have been applied somewhat “loosely” here compared to in T0439/22.

Where does this leave us with claim interpretation?

In light of the above, what seems clear-cut is that the description and claims do need to be looked at jointly as part of the overall disclosure.

What remains unclear however is to what extent the description should be relied on.

Perhaps in order to answer this question most reasonably, context is key.

In the T0439/22 case, a broader definition which didn’t contradict the usual meaning in the art was explicitly given in the description, and thus in the context of the whole disclosure and technological field, this definition carried weight and was relied on accordingly.

In other words, the specific inclusion of a broader definition of a term in the description is a deliberate act which cannot simply be dismissed when it might be more preferable to do so. Such an approach would leave us in a realm of legal uncertainty.

In other cases however, where the description is simply illustrating how a term might be used or implemented (e.g. via specific embodiments and examples), such a narrow read onto the scope of the term would indeed seem unjustified. “Consulting the description” in these circumstances might therefore look more like seeking guidance on how to interpret a term rather than replacing the meaning of a term in the claims with a rigid definition from the description.

A really sticky situation arises when there are contradictory definitions in the description vs well-known definitions in the art. In such a case, the issue snowballs beyond just claim interpretation, gathering sufficiency and clarity problems along the way.

How did this all affect the description amendments in T0439/22?

In T0439/22, to avoid revocation, the patentee deleted the paragraph containing the “gathered” definition.

The definition read:

“…the term 'gathered' denotes that the sheet of tobacco material is convoluted, folded, or otherwise compressed or constricted substantially transversely to the cylindrical axis of the rod.”

On the one hand we have a definition here which broadens the ordinary meaning of “gathered” by including additional possible configurations which caused a lack of novelty.

On the other hand however, by deleting the definition, the limiting rod shapes with compression transversely to the cylindrical axis is also lost. In other words, the deletion permits other configurations (e.g. non-rod) to be included in the scope of the claim, thereby unallowably broadening the scope after grant. The message here seems to be, think very carefully about how a definition is drafted and think about any unintended consequences and upshots.

Had this definition been deleted before grant, then the patentee would not have been able to reintroduce it, falling into the inescapable Art.123(2)-(3) trap.

Thus, could aligning the description with the claims increase the risk of added-matter issues arising down the line? Whether or not we should continue to amend the description in line with the claims will be determined by decision G1/25 in due course.

Final thoughts and impacts

T 0439/22 makes one thing abundantly clear: when a description contains a definition that departs from the usual meaning in the art, the EPO is unlikely to treat it casually, but will rather view it as a deliberate inclusion.

Before including additional definitions, practitioners should duly consider:

-What is the “accepted” definition in the art? And is there any evidence of this?

• Taking these points into account, is a further definition even needed?

-Is the proposed definition unnecessarily broad/vague or overly limiting?

• Could this then undermine the claims later down the line?

-Can the claims themselves be drafted clearly enough without the need to rely on description definitions? 

What these decisions have at their core provided clarity on, is just how important it is for the claims to be clear in themselves without need to consult the description. In our view, it would be unwise to think of G1/24 as a ‘get out of jail card’ to put right issues with patentability and claim drafting. Also, any definitions used in the description should be drafted very carefully.

If you would like to discuss the best way to provide clearly drafted claims and whether or not to include definitions in the description of your patent or patent application, please contact us. Wynne Jones can advise on effective strategies for drafting patent applications carefully and in line with EPO practice.

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Ashleigh Kirs (European Patent Attorney)

Ian Lambert (Director, UK Chartered and European Patent Attorney)