Claim interpretation at the EPO: comments from stakeholders
04
Dec
2024
We review the amicus curiae briefs and letter from EPO president on pending referral G1/24

The Enlarged Board of Appeal of the EPO is due to consider the extent to which the description and figures may be used for claim interpretation when assessing patentability. As we have previously reported, there is an apparent divergence in the case law, which can cause legal uncertainty for patentees and third parties and so clarification on this matter is welcomed.

In this article, we assess the views of stakeholders and interested parties in the 28 amicus curiae briefs that were submitted to the Board, along with a letter from the president of the EPO. Those submitting briefs included law firms, industry bodies and large companies such as Ericsson, Bayer, BASF, Fresenius Kabi and Siemens. Oral proceedings in the referral (numbered G 1/24) have now been scheduled for 28th March 2025, and we should receive the Enlarged Board’s answers to the referred questions a few months after this date.

Question 1: 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?

This question was the most divisive of the referred questions.

Over 60% [1] of respondents thought the answer to this question should be “yes” (percentage values exclude briefs that gave a balanced view rather than indicating a yes or no answer.) Many felt like this question did not need to be answered because it has already been answered in G 6/88 where it was explicitly stated that: “For the purpose of determining their technical features, the claims must be interpreted in accordance with Article 69(1) EPC and its Protocol”.

In addition to this, many respondents believed that for practical reasons the answer to this question must be “yes”, because if this question were to be answered in the negative then patentees would be able to rely on narrow standard definitions in the claims to secure grant but then rely on broader definitions of claim terms in the description to bring infringement proceedings. A few respondents also highlighted that answering this question in the negative would not only lead to legal uncertainty for third parties but also lower the quality of patents granted by the EPO as there will be cases where a national court could immediately revoke a granted EP patent due to lack of novelty.

About 35% of respondents thought the answer to this question should be “no”. The majority of those who answered “no” to this question focussed on the fact that there is no legal link between Article 69(1) EPC and patentability. Some highlighted that the main purpose of drafting Article 69(1) EPC was to harmonise possible divergent interpretation of EP patents by national courts and to provide them with guidance. Therefore, Article 69(1) EPC relates solely to the assessment of infringement and cannot be applied to an unrelated context (i.e., patentability). Many commented that it is not the task of the EPO, as a patent examining authority, to concern itself with infringement proceedings. Interestingly, it seems that innovators that hold patents mostly answered “no” to this question.

The president of the EPO agreed with the minority of respondents and commented that the wording, systematic context, purpose and history of Article 69(1) EPC and its Protocol speaks against its direct application when assessing patentability. However, he thinks that in practice the EPO cannot interpret the claims and description in a manner which is not transparent or would affect legal certainty towards third parties.

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?

Almost all respondents (92%) answered Question 2 with “yes” and thought that the description and figures should be consulted generally and not just when the person skilled in the art finds a claim unclear or unambiguous.

In terms of minority views, D.X. Thomas, a previous examiner and director at the EPO, was the only respondent who considered that the description and figures may be consulted, but not generally. He concluded that, due to the primacy of the claims, the description and figures may be used pre-grant for the assessment of clarity and support and, since clarity cannot be challenged after grant, the description and figures can only be used post-grant for the assessment of Article 123(3) EPC.

Somewhat in agreement with this view, the president of the EPO highlighted that the majority of the case law supports the primacy of the claims and so the description and drawings play a secondary role. However, he thinks that the EPO should be consulting the drawings and description to understand the meaning of claimed features throughout the grant process. He explained that the EPO should not allow any unclear or ambiguous feature to remain in the claims and such issues must be addressed during prosecution via amendment (rather than interpretation) and that this should be followed by an amended description where necessary.

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?

Roughly 40% of respondents answered this question with a clear “no” as they thought a definition or similar information in the description should not be disregarded when interpreting the claims in any circumstances. Many thought this answer must be “no” for consistency with their answer to Question 2.

However, most respondents (around 60%) qualified their answer by giving exceptions for when definitions or similar information in the description may be disregarded. The most common exception was when there is a clear contradiction between a term in the claim and the information on this term in the description.

The president of the EPO commented that the EPO should take into account the generally accepted definition and any definition given in the description when conducting a search or assessing patentability, but for legal certainty the EPO should require the claims to be amended in a way so that their meaning is clear from the claims alone.

We look forward to further developments and will publish significant updates as they arise.

Footnotes

[1] percentage values exclude briefs that gave a balanced view rather than indicating a yes or no answer.