Enlarged Board of Appeal referral on claim interpretation

As discussed in the article Does the description matter when the patent has been granted?, two referrals on claim interpretation have been on the way to EPO’s Enlarged Board of Appeal.

In decision T 439/22 of 24 June 2024, a referral has been made in order to clarify the legal basis for interpreting patent claims for the purpose of assessing patentability, whether and under which circumstances the description and figures may be taken into account when interpreting a patent claim and the extent to which a patent can serve as its own dictionary.

The exact referral questions in G 1/24 (“Heated aerosol”) are:

1. 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?

2. 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?

3. 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?

The Enlarged Board of Appeal has not yet decided whether to accept the G 1/24 referral as admissible, but the EPO appears at least to realise the importance of this referral. They have issued a statement to the effect that “the EPO will continue examination and opposition proceedings while the referral on claim interpretation is pending before the Enlarged Board of Appeal​”, and that they are “awaiting the decision of the Enlarged Board of Appeal and will immediately implement its findings in the practice of examining and opposition divisions”.

The issue of whether the description affects the interpretation of what is otherwise considered to be a clear claim is highly relevant in relation to the requirement to adapt the description to the granted claims (where according to the EPO Guidelines, embodiments that are no longer covered by the claims must be deleted from the description, or the fact that such embodiments are not covered by the claims must be prominently stated). This is a problematic requirement, since it is often not straight-forward to identify whether an embodiment is in fact covered by the claims, and any errors made in this regard may limit the scope of the claims in an unjustified way. This is especially true if the outcome of the referral in T 0439/22 is that the description is to be taken into account even when interpreting a claim that contains an allegedly clear wording. Thus, the current requirement to adapt the description to the granted claims may affect both claim interpretation and the scope of protection under the doctrine of equivalents in subsequent infringement proceedings.

No formal referral has yet been made in T0056/21 (where the applicant refused to delete “claim-like clauses” in the description, and the Examining Division therefore refused the application). It is possible that the Board of Appeal is waiting for the outcome of G 1/24 before issuing their decision.

If you would like to discuss options for protecting your invention, please get in touch with the author or your usual Barker Brettell patent attorney.