The Enlarged Board of Appeal (EBA) has now issued its preliminary opinion in the referral G1/24, which relates to the role of the description when interpreting patent claims. Oral proceedings have been scheduled for 28 March 2025.
The referral arises from the pending appeal T 0439/22 involving Philip Morris’ European patent EP3076804. The patent is for a cartridge in a “heat-not-burn” smoking device, whereby tobacco is heated instead of being burnt. During opposition, whether the claims lacked novelty turned on the interpretation of the term “gathered” in the claims. The description provided a broad definition of this term, which conflicted with the narrower meaning which is normally used in the industry.
The Opposition Division applied what the EPO Technical Boards of Appeal (TBA) characterised as the “classical approach” to claim interpretation, which follows the principle that only if claim terms are unclear from reading the claim on its own should the description be consulted to further construe the claims. This approach effectively prohibits consulting the description if the claims are clear on their own.
In contrast, the TBA also identified a divergent line of case law, of which T1473/19 is an example, which states that when the description provides definitions for terms in the claims these “cannot be left unconsidered”. So, there is a clear discrepancy at the EPO in claim interpretation. The outcome of this appeal depends on which line of interpretation is taken, hence the need for a referral.
Three questions were referred to the EBA:
- 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?
- 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?
- 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?
In their preliminary opinion, the EBA found that Questions 1 and 2 were admissible but Question 3 was not.
On Question 1, the EBA recognised the interest in uniform application of the principles of claim interpretation both in patent grant proceedings before administrative departments and also in post-grant revocation and infringement proceedings before the courts of the EPC contracting states, including the Unified Patent Court. The EBA considered 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 to interpretation of the claims.
Responding to Question 2, the EBA stated that it is currently of the opinion that the description and figures can be referred to for claim interpretation. However, it has not yet commented on the limits on when the description should be used to support claim interpretation.
The reason Question 3 was deemed inadmissible was because an answer to it is not required for the referring board to reach a decision on the case before it.
We will have to wait for the outcome of the scheduled oral proceedings to learn the EBA’s detailed thoughts on Questions 1 and 2. Until then, usual good patent practice applies. When drafting patent applications, careful consideration should always be given to defining terms in the patent claims, especially those that may be considered key terms. This can help to mitigate clarity issues arising during prosecution.