G 1/24 (Regarding the application EP 14806330.8)

The following questions are referred to the Enlarged Board of Appeal, both to ensure the uniform application of the law [see point 3] and because a point of law of fundamental importance arises [:

1. Should Article 69(1), second sentence EPC, and Article 1 of the Protocol on the Interpretation of Article 69 EPC be applied to the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC?
2. When interpreting claims to assess patentability, may the description and figures be consulted, and if so, should 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?
3. When interpreting claims to assess patentability, may a definition or similar information on a term used in the claims, which is explicitly given in the description, be disregarded, and if so, under what conditions?

The issue leading to this referral was that a term in claim 1 (“gathered sheet”) had a clear and agreed meaning in the relevant industry. Using this meaning, the subject matter of the claim would be novel.

However, the description of the patent included a broader definition of this term, which—when applied to the interpretation of the claim—would result in the subject matter of the claim being entirely anticipated by the state of the art.

The Board of Appeal summarized the previous decisions of the Boards of Appeal of the EPO as well as the most relevant national courts, including very recent decisions of the UPC, and found conflicting decisions, primarily: (a) giving primacy to the wording of the claim, (b) using the description only in cases of ambiguity, or (c) allowing the description to serve as the dictionary for the claim.

Consequently, they have now referred the case to the Enlarged Board of Appeal.

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