In its highly anticipated decision G 1/24, the EBA firmly sided with the line of EPO case law that interprets the claims always in the context of the description and drawings when assessing patentability, and rejected the diverging approach that saw no need to refer to the descriptions and drawings unless the claim was considered unclear or ambiguous. More details on these are in our article analysing EPO and UPC case law leading up to the referral, and our subsequent article reporting on the various amicus curiae briefs that were filed: a large part of the divergence was on the question of whether Article 69 EPC and Article 84 EPC should be legal basis for interpreting claims when assessing patentability.
The EBA’s order reads as follows:
“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 drawings shall always be consulted to interpret the claims when assessing the patentability of an invention under Articles 52 to 57 EPC, and not only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation.” (Headnote; our emphasis)
Notably, the EBA was unsatisfied with both Article 69 EPC and Article 84 EPC as legal basis for this issue:
- The EBA commented that “Article 69 EPC and the Protocol are arguably only concerned with infringement actions before national courts and the UPC” (Reasons 7)
- The EBA furthermore observed that “Article 84 EPC addresses the content of the patent application and is formal in nature, does not mention the invention and 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” (Reasons 8)
Instead, the EBA extracted its principles of claim interpretation from existing EPO case law, even though that applied the above articles to the interpretation of claims when assessing patentability. The EBA also took note of the practice of the courts of EPC states, and specifically cited the UPC Court of Appeal’s decision in NanoString Technologies v 10x Genomics (see Headnote 2 of UPC_CoA_335/2023; cited at Reasons 19 of G 1/24). In doing so, the EBA emphasised the “harmonisation philosophy behind the EPC”, which strongly suggests that the EPO will not ignore UPC case law:
“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. On this point, the Enlarged Board agrees with the harmonisation philosophy behind the EPC (see G 5/83, Reasons 6, and G 3/08, Reasons 7.2.2).” (Reasons 16, our emphasis)
This might also serve as a reminder to the UPC to pause before deliberately diverging from settled EPO case law
The EBA concluded its decision with a reminder concerning the importance of granting only those claims that comply with Article 84 EPC, which requires that the claims shall be clear and concise and be supported by the description. According to the EBA, “[t]he correct response to any unclarity in a claim is amendment. This approach was emphasised in the Comments of the President of the EPO (see para 87, 109 and last sentence of para 135 of these comments)” (Reasons 20; our emphasis). The President of the EPO in the paragraphs cited by the EBA had emphasised that, for legal certainty, “examiners should require applicants to amend the claims so that the meaning is as clear as possible from the claim wording alone and to adapt the description to these claims” (EPO President’s comments, paragraph 87; our emphasis). Indeed, the EBA’s comment is not limited to amendment of the claim – but encompasses also amendment of the description, thus possibly opening the door (again) for more extensive description adaptations. There may yet be a referral to the Enlarged Board of Appeal regarding the requirement to adapt the description to the claims, and in the meantime, we will see whether EPO examiners take the EBA’s and the President’s comments as instructions to tighten the screws on Article 84 EPC during examination of pending applications. This is likely to be particularly relevant in cases where using the patent application as its own ‘dictionary’ would require a significant departure from any accepted meaning of a term in a claim.