G 1/24 (Regarding the application EP 14806330.8) – DECISION

G1/24 Summary

Question 1:
Article 69(1) EPC states: “The extent of the protection conferred by a European patent or a European patent application shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims.” This provision is not directly applicable in examination or opposition proceedings.

However, the Enlarged Board of Appeal endorsed the practice of the Boards of Appeal to apply Article 69(1), second sentence, by analogy during examination and opposition.

Question 2:
The Enlarged Board of Appeal concluded that the description and any drawings must always be referred to when interpreting the claims in the examination or opposition phase, not only in cases of ambiguity or lack of clarity.

Question 3:
This question concerned the relevance of definitions of terms in the description. The Enlarged Board considered it to be effectively answered by its response to Question 2. Accordingly, no further comments were provided on this point.

Our assessment:

A key aspect of the decision is the Enlarged Board’s affirmation that claims should be interpreted in the same way during examination and opposition as in infringement proceedings.

Clarity of the claims

Even so, a lack of clarity of the claim is not a precondition for consulting the description or the drawings, the requirements of Art. 84 EPC (clarity of the claims) might become more relevant.

Somewhat surprisingly, in item 20 of the decision, the Enlarged Board of Appeal stated:

“The above considerations highlight the importance of the examining division carrying out a high-quality examination of whether the claims fulfill the clarity requirements of Article 84 EPC. The correct response to any lack of clarity in a claim is amendment.”

This statement is unexpected, since the Enlarged Board had previously confirmed that the claims must be interpreted using the description in all cases—regardless of whether the claims are clear or not. In light of this, the comment on the duty of the examining division to place strong emphasis on clarity appears somewhat out of place in the context of this decision.

The statement might be caused by the  EPO President, who supported a rigid application of EPO practice, calling for the primacy of the claims, with the description and figures only playing a secondary role. According to the President, if a term requires to consult the patent specification to be understood, this term must be objected as being unclear under Article 84 EPC, and the claim must be amended to reflect the meaning and scope of the term. However, the President’s position calling for a strict approach has not prevailed and the Enlarged Board of Appeal has instead chosen harmonization and logic.

As a consequence of the statement of the Enlarged Board of Appeal highlighting the importance of the clarity of the claims, we now expect the examining divisions to raise the bar regarding the clarity requirements during examination.

With respect to the specific case underlying decision G1/24, the decision of the Enlarged Board of Appeal is not entirely conclusive. It will now be up to the Technical Board of Appeal to decide whether the skilled person would interpret the claims of the opposed patent in the narrow sense proposed by the patentee, or whether the Board will follow the opponent’s reasoning and consider the description to provide a reasonable basis for broadening the meaning of the claim to encompass the prior art—potentially leading to a finding of lack of novelty. This question will have to be decided by a case by case basis in the future.

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