G 1/24 has now been issued, and concludes “The description and any drawings are always referred to when interpreting the claims, and not just in the case of unclarity or ambiguity.” With this simple proclamation, the Enlarged Board of Appeal (EBA) provides clear guidance on the fundamental issue of claim interpretation which has caused much controversy at the EPO in recent years. As such, G 1/24 looks set to be one of the most consequential EPO decisions of the decade. It will probably also be one of the shortest at just 12 pages!
Patent attorney reading description to interpret claims, After Rembrandt, Public domain, via Wikimedia Commons
For some background to the decision, see our post here. We also discussed the preliminary opinion and hearing here, which already pointed towards the conclusion above.
The first question was “Is Article 69 (1), second sentence EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC to be applied to the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC?”. The EBA at reason 6 took a pragmatic approach on the question debated between the Boards as to whether Article 69 EPC or Article 84 EPC provided the relevant legal basis: “neither are entirely satisfactory as a basis for claim interpretation when assessing patentability”.
In doing so, they accepted the criticisms that different Boards had made of relying on each article, namely:
- “Article 69 EPC and the Protocol are arguably only concerned with infringement actions” (reason 7);
- Article 84 EPC “provides no guidance on how to interpret claims. It only sets out an instruction to the drafter of what needs to be in the claims, and an instruction to the EPO to determine whether the claims meet that purpose” (reason 8).
They then concluded at reason 9 that in fact the EPC contains “no clear legal basis… for claim interpretation when assessing patentability”. But critically this didn’t prevent them answering question 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?
On this point, the EBA accepted at reason 10 that “whether Article 69 EPC or Article 84 EPC is taken as the basis for claim interpretation does not appear to affect the principles that are applied” and extracted the following principles from the various decisions of the boards (reason 12):
- The claims are the starting point and the basis for assessing the patentability of an invention under Articles 52 to 57 EPC.
- The description and any drawings are always referred to when interpreting the claims, and not just in the case of unclarity or ambiguity.
In their view 1) is a “settled point” while there is divergence on 2), e.g. as to whether ambiguity is necessary before the description and drawings are considered. They took the view that restricting the reliance on the description and drawings only to special situations is contrary to Article 69 EPC. Perhaps mindful that relying on Article 69 EPC isn’t entirely consistent with their position above, the EBA additionally justify their conclusion by reference to the practice of the national courts and the UPC, and therefore the “harmonization philosophy behind the EPC” (reason 16). As they put it: “The Enlarged Board finds it a most unattractive proposition that the EPO deliberately adopt a contrary practice to that of the tribunals that are downstream of its patents.” Bravo!
Reason 17 explains that the notion that ambiguity should influence claim interpretation would put the cart before the horses: “The finding that the language of a claim is clear and unambiguous is an act of interpretation, not a preliminary stage to such an interpretative act”.
Finally, as for question 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?”, this was found inadmissible essentially because it was already answered in response to question 2 (reason 1).
All in all, this seems to us to be a very reasonable and pleasantly unsurprising decision. Any other conclusion would likely have caused significant issues in harmonizing the EPO with national courts and the UPC.
That said, while there is great appeal in the simplicity of the decision and reasoning, it leaves some important questions unanswered. For example, the decision seems to take no position in the debate on adaptation of the description (see here). It also potentially opens the door to broad claims being interpreted more narrowly based on the description for validity, something which has always faced strong resistance from the EPO. It remains to be seen how the Technical Boards of Appeal will implement this decision in practice and whether they will deviate from the current principle that claims in examination should be given the broadest sensible meaning. Finally, a decision that allows and even requires interpretation of the claims in every case of course opens the door for skillful attorneys and their favorite pet, the famous angora cat. It will always remain a challenge to come to consistent claim interpretations between different deciding bodies, but at least everybody will apply the same basic principles from now on.
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My first thought on reading this so-called decision was that it is ultra vires as not being within the competence granted to the enlarged board by Article 22 EPC. Without a reference to the law, i.e the EPC, and how that law should be understood, this is more like a wish that the enlarged board thinks is correct.
Kant, you might as well level the same accusation at all departments of the EPO regarding how they interpret the disclosures of all other documents in proceedings before the EPO (ie priority documents, prior art, etc.). This is because the same interpretative approach is used for those documents, namely the entire document must be considered when seeking the meaning of a particular statement referred to (see T1871/09, Reasons 3.1).
Also, my understanding is that general principles of (international) law – such as the principle that a document must be interpreted as a whole – represent permissible sources for interpretation of an international treaty under the Vienna Convention.
Forgive me, but I do not think that it is only the decision in G 1/24 which “requires interpretation of the claims in every case”. Unless I am mistaken, interpretation of the claims is the mandatory first step in every procedure before the EPO, as well as in all court proceedings relating to validity and/or infringement.
Whilst I may be alone in my views on the topic, I actually think that the decision in G 1/24 will lead to the creation of FEWER Angora cats than under prior EPO case law and practice. The reason for this is that the harmonisation of pre- and post-grant claim interpretation approaches means that there will be fewer opportunities for patentees to use contradictory arguments between pre- and post-grant proceedings. Whilst I do not doubt that some patentees will nevertheless try their luck, it should not take long for repeated failures of those patentees (to persuade courts to adopt broader interpretations) to have a dissuasive effect on others thinking of trying the same trick.
Dear Thorsten,
There is nothing much is to say when the EBA states that “The claims are the starting point and the basis for assessing the patentability of an invention under Articles 52 to 57 EPC”. Otherwise claims could be left out.
What is however surprising is that the EBA, which should help out interpreting the EPC, comes up with the statement that neither Art 69(1) and the Protocol nor Art 84 are good enough to allow a proper interpretation of the claims and that the answer to question 1 should actually be NO, but comes up with a statement which appears to come out of nowhere.
It does not completely appear from nowhere but has been inspired by the CoA UPC when it say in the 10x Genomics case “the description and the drawings must always be used as explanatory aids for the interpretation of the patent claim and not only to resolve any ambiguities in the patent claim”.
In the second part of the order th EBA says “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.
This is quite different from your statement that “The description and any drawings are always referred to when interpreting the claims”. There is no guidance whatsoever how this “consultation” has to be carried out.
The wording of the EBA does not say that the description and the drawings have to be “referred” to, or “must always be used as explanatory aids”. Description and drawings have merely to be “consulted” whatever this might mean. When reading the description, it has been consulted.
The present decision does not solve any of the problems it was meant to solve, besides the fact that the description should not just be consulted when the claim is unclear or ambiguous. By the way, this has always been the case. But should the claim be clear, what will it bring to look at the description?
It will allow to weed out statements which do not align with what the claims are saying, and leads to the point, heavily disputed by representatives, of the necessary adaptation of the description to the claims. You cannot under the pretext that the description is the own dictionary of the claims, accept that the claim say A+, the description says A- or all the shades between A+ and B or between A- and B.
Only if the claims are adapted to the description, will we end up with fewer angora cats. See the Agfa/Gucci case before the LD Hamburg of the UPC.
If the EPO does not carry out its duties properly, we will end up with more angora cats than before. Do you honestly think that you can expect first instance divisions making long developments on how the claims should be interpreted? They simply do not have the time for this, and there is no need in view of the technical baggage which can be expected by examiners. This is necessary for legally qualified judges which first have to understand the technicalities of a case.
G 1/24 is of the same vein as G 2/21, as unprecise as unprecise can be, and it will be interesting to see how different boards interpret G 1/24, as it has been the case with G 2/21.
You find G 1/24 short and sweet, I find it short and bitter. Another possible comparison, you find the glass half full, I find it half empty.
For the surplus I refer to the presentation on my blog of G 1/24 and to the comments which followed. They have quite a different tone than here.
Hi Daniel,
Thanks for your comments.
Our statement that “The description and any drawings are always referred to when interpreting the claims” comes from the Headnote and reason 18 of the decision.
As for the number of Angora cats also raised by Concerned Observer above, you’re right that this may push more work onto the EPO examiners, at a time when they are already very busy. This seems to be hinted at by the enlarged board at reason 20. It also provides more of a motivation for third parties to file observations highlighting discrepancies.
But for me the fact that skilful attorneys might try to abuse this downstream of the EPO does not justify reaching a different conclusion than the enlarged board on claim interpretation, but rather a reason for the UPC/national courts to be vigilant.
Adam
Adam,
Even with a description carefully and comprehensively adapted to the EPO’s exacting standards, a patentee having enough brass neck might still try to litigate based upon a “creative” interpretation of their claims. I therefore agree with you that the tools to solve the problem of Angora cats lie in the hands of the courts and not the EPO.
Dear Adam,
Thanks for your clarification. I am probably not as far from your line of thoughts as you might think.
When I used to be an examiner, I could never just look at the claims before doing any action. To me it has always been a bare necessity to read the description first in order to understand what the claims could mean, and not start with first, or only, looking at the claims. How on Earth do want to search or examine if you do not known on what the claims have been built.
However, I realised pretty soon that not all examiners shared my opinion, mainly for production purposes. If you skip the description you start quicker with the search and examination is as well faster. But what are you then searching or examining?
When assessing added matter, you need to read or consult the description to spot the problem. When added matter creeps up in opposition, it is a clear sign that the claimed features have not been properly assessed with respect of the original disclosure. Another possibility is that the examiner took for correct (or simply swallowed) what the applicant/representative said in this matter.
One benefit of G 1/24 could well be that examiners are now forced at least to read the description before starting search and examination, and once more before grant or before maintaining in amended form. I would welcome this, and interpret Reasons 20 the same as you do. It is a decent reminder to the president that quality is not what he claims to be, but it has to be seen in the work delivered.
In a comment on my blog, Max Drei said “How on Earth did the EPO’s ED let that one [gathered] through to grant?” I do agree with Max Drei, that if the ED had done its job properly before grant in the case leading to G 1/24, there would not have been the necessity for a referral.
The same applies in the Agfa/Gucci case before the UPC LD Hamburg. There, the applicant limited its claim to avoid a lack of novelty, but the ED directly granted in reply on the basis of amended claims, but without checking the description. The ED left a statement in the description, out of which Agfa tried to make a nice Angora cat. Luckily, the LD did not go along. So UPC/national courts have to be vigilant. The work of national courts would also be simplified if the EPO would grant patents which are as solid as possible.
When after appeal on opposition, roughly 50% of patents are revoked, and 35% are maintained with limitations, mainly on the basis of prior art present in the EPO search files, and only the rest survives an opposition, it is difficult not to conclude that there is a quality problem at the EPO. But the last published KPI are wonderful…
As a representative, you will most probably not agree with me, but one consequence of G 1/24 should be the necessity to adapt the description to the claims before grant or after maintenance in amended form. It is only if claims and description are aligned with one other that the culture of Angora cats can be nipped in the bud. See gathered and Gucci. There is a referral in the pipeline on this topic, see EP 2 124 521 B1 (T 697/22), commented in my blog.
Next to the standard criteria, novelty and inventive step + added matter, clarity of the claims and alignment of the description to the claims, will then allow the same interpretation of claims before and after grant.
Daniel
There seems to be a lot of confusion and debate about the meaning of the ruling in G 1/24 and, in particular, the legal basis for that ruling.
For me, the ruling seems pretty clear-cut. This is because I believe that the EBA’s key findings were that:
(a) neither of Articles 69 and 84 EPC provides adequate legal basis for any method of claim interpretation (Reasons 6 to 9); and
(b) the general principles that should be applied can be found in existing case law (Reasons 10).
It is perhaps fair to criticise the EBA for failing to set out the principles to which it refers. However, at least for me, it is clear that the EBA is referring to the general principle of interpretation that a document must be interpreted as a whole. This is evident from at least:
– the case law cited in Reasons 11 (which case law, in particular, includes T1871/09, Reasons point 3.1); and
– the reference in Reasons 15 to “the principles … of Article 69 EPC”.
The latter point stood out to me in particular because, in section 2 of my 14 November 2024 amicus brief, I cited the general legal principle underpinning Article 69(1) EPC as a reason for reformulating Q1 of the referral (to refer to the general principle of law that a document must be interpreted as a whole).
None of this is reinventing the wheel in any way. Indeed, the very same general legal principle underpins the so-called uniform concept of disclosure at the EPO (a concept, I might add, which itself underpins EPO case law and practice concerning issues such as added matter, novelty and entitlement to priority).
Regarding the national court / UPC angle, the structure of the EBA’s decision indicates that this was only a secondary consideration which helped to confirm its conclusions based upon fundamental legal principles.
I do understand the disappointment of those who earnestly wished for a different outcome. I also understand the inclination to see the UPC as a key motivating factor behind the EBA’s decision. But, for me, it all boils down to plain logic and general legal principles. Nothing more and nothing less.
The general principle is one thing, but this should not lead the applicant/proprietor to conceal in the description features/interpretations meaning something different than the ordinary meaning of a claimed feature, be it limiting or generalising.
Plain logic forbids such tricks, nothing more and nothing less.
Only if this job is carried out, and this is the job of any granting authority, it will be possible to give a claim the same interpretation pre – and post-grant.
This will leave post grant jurisdictions to decide on infringement by equivalents, but not have to cope with Angora cats.
I have no axe to grind, whether for a client who is a patent owner or one who is an opponent. I just want to see the EPO burnishing rather than trashing its reputation as creator of i) the world’s best body of law on patent validity, and ii) the world’s highest quality of issued patents. I am deply sceptical of the idea that all will be well, going forward, so long as EPO Examiners are allowed enough time to read descriptions before they adjudicate the claims.
I like the idea of Applicants being encouraged to “be careful what you ask for” ie that Applicants have an incentive to police themselves. You know, like they do on Art 123(2) EPC because of the appalling prospect of losing everything in the 123-2-3 fatal trap. Imagine the dialogue between US and EPO atorney when the USA sends instructions to amend claim 1 US-style!!
Suppose, for example, that Applicant deliberately carries a deliberately ambiguous Angora Cat claim through to issue. What should be the deterrent to such conduct? In the USA, the risk is that the duly issued claim is found indefinite. But what is the negative consequence here in Europe? Is there any at all. Indeed, as it stands today, is there not a perverse incentive to freight claim 1 with as many AngoraCats as possible?
How to curb such mischief? The UPC could tell the patentee that the only enforceable scope is on the basis of a narrow interpretation of the claim but that its validity will be judged on its broadest possible construction. Call it, if you like, a “reverse doctrine of equivalents” to balance up the Protocol scales so they are neutral between patent owner and public. Is that do-able, or is it no more than fantasy?