In 2024 referral G1/24 was made to the Enlarged Board of Appeal (EBA) seeking clarity on the basis for interpreting patent claims when assessing patentability. The referral arose from Technical Appeal Board decision T0439/22. The EBA’s decision on G1/24 issued on 18 June 2025.
The two questions considered by the EBA were:
- 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?
In T0439/22 a particular term (“gathered sheet”) was used in both the claims and description. The Applicant argued for the term to be understood within a narrow meaning – as generally understood within the art. The Opponent argued for the term to be construed broadly in view of the description – which would render claim 1 lacking in novelty.
In answer to Questions 1 and 2, the EBA found that the case law contained the following principles:
- The claims are the starting point and the basis for assessing the patentability of an invention under Articles 52 to 57 EPC. (The EBA noted that the strictly formal answer to Question 1 would be “No” as Article 69 and the Protocol related to infringement).
- The description and drawings shall always be consulted to interpret the claims when assessing the patentability of an invention under Articles 52 to 57 EPC, and not just in the case of unclarity or ambiguity.
This guidance from the EBA should provide much needed clarity in both examination and opposition proceedings before the EPO. Previously, the Guidelines for Examination in the EPO, required a claim to be amended such that, in cases where the description gives a specific meaning to words used in the claims, the meaning is clear from the wording of the claim alone. A clarifying amendment to the Guidelines might now be expected to bring the Guidelines into alignment with G1/24.
The decision of the EBA will hopefully serve to bring about a uniform application of the law. It is well founded in common sense as it requires a consistency throughout the claims and the description of a European patent. This is important at the initial drafting stage. However, it is equally important during examination when embodiments may have been removed from the scope of the claimed invention. It is also important at the grant stage where the Examiner often suggests amendments to the claims or description. Throughout the process, the Applicant and the Representative have an obligation to ensure that the patent is drafted in the knowledge of G1/24.
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Referral G1/24: Referral to the Enlarged Board of Appeal – G 1/24 (“Heated aerosol”) | epo.org
T0439/22: T 0439/22 (Gathered sheet) 24-06-2024 | epo.org
Decision G1/24: Decisions sorted by number | epo.org
