New questions referred to the EPO Enlarged Board of Appeal – G 1/26

New questions have been referred to the Enlarged Board of Appeal at the European Patent Office by the Technical Board in T 873/24. Based on the minutes for T 873/24, we expected this new referral to focus on claim interpretation in the context of added subject matter, but the scope of the referred questions appears to be broader than this. These questions follow on from Enlarged Board Decision G 1/24, relating to whether the description and drawings should be used to interpret patent claims when assessing the patentability of an invention.

The questions are referred under G 1/26 (“Coated steel strips”), and are as follows:

1.     May a decisionbe considered to be “required” for the purposes of Article 112(1) EPC, if the referring Board demonstrates that the point of law in question arises out of the context of the case pending before it and, in the circumstances of the proceedings, it is reasonable for the Board to examine it and decide on it next?

2.    (a) Does the fact that the claims are the starting point and the basis for assessing the patentability of an invention generally preclude a feature which is only disclosed in the description or the drawings of a patent from being read into the meaning of a granted claim, in particular if this leads to a restrictive reading of terms used in the claim?

2.    (b) If the answer to question 2.(a) is no: is claim interpretation the result of both reading the claims and consulting the description and drawings as a unitary process and does the claim being the starting point and the basis for assessing the patentability rule out only those interpretations which can be derived from the patent as a whole but would clearly contradict the general technical understanding of the terms used in the claim?

3.    (a) When assessing compliance with Article 123(2) EPC, must a term used in a claim be assessed against all interpretations that make technical sense to the skilled reader on the basis of the claim alone?

3.    (b) If the answer to question 3.(a) is no: is it sufficient that only the interpretations of the subject-matter of the claim established against the background of the patent specification as a whole are directly and unambiguously derivable from the application as filed?

For more information about the referral, please see the EPO’s announcement. For further background, see the Board of Appeal’s decision that refers the questions to the Enlarged Board of Appeal.

We will be following the progress of this referral, so stay tuned for further updates. To find out more, feel free to email us at gje@gje.com.