G 1/24 Enlarged Board affirms description’s role in claim interpretation at the EPO

GJE has been eagerly awaiting the decision in G 1/24 from the European Patent Office’s Enlarged Board of Appeal, which was announced yesterday. The referral relates to fundamental principles for claim scope interpretation, and the board’s decision has far-reaching implications that will be relevant to all European patents and patent applications. A summary of the decision and its implications is provided below.

Recap to the referral decision

The referral to the Enlarged Board of Appeal, made in decision T 439/22, focused on the interpretation of the term “gathered sheet” which featured in claim 1 of European Patent No. 3076804.

The term “gathered sheet” was considered to have a generally accepted meaning in the relevant technical field. However the description of the patent provided a definition that was broader than this generally accepted definition. This prompted a number of questions about whether the definition in the description should be used to interpret the scope of the claims, and more generally, to what extent and under which circumstances should the description and drawings be used to construe the claims for deciding on patentability.

In February, the Enlarged Board issued a preliminary opinion and in March a hearing was held in which the referred questions and relevant legal basis and principles were considered.

Decision

The Enlarged Board has now provided its decision. It concludes that the claims are the starting point and the basis for assessing the patentability of an invention under Articles 52 to 57 EPC and that the description and drawings must always be consulted to interpret the claims when assessing patentability.

The decision implies that Article 69(1) EPC, concerning the extent of protection conferred by a European patent or application, should be applied, not only when assessing the extent of protection conferred by a granted patent, but also when assessing the patentability of the claims. The decision also suggests that the description and drawing should be consulted in every case, regardless of whether the claims appear prima facie to be clear in themselves or not.

Impact of the Decision

For the referred case, T 439/22, the decision of the Enlarged Board does not answer the specific question relevant to that case (asking whether an explicit definition in the description should be disregarded). Nevertheless, the decision on the other questions implies that the scope of claim 1 of EP3076804 should be interpreted in line with the broader definition of the term “gathered sheet” indicated in the description.

More generally, the decision appears intended to avoid potential discrepancies between interpreting the scope of the claims when assessing patentability and the scope of protection conferred by those claims.

For applicants, the decision reinforces that care is needed when drafting the description and drawings, to ensure that disclosures therein such as definitions of features, do not alter the interpretation of the claims in an unintended way.

The implication of the decision for third parties is that, when assessing the patentability of a given application or patent, the document as a whole should be taken into account, rather than simply taking the claims at face value.

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