The EPO’s approaches to claim interpretation
Clear guidance on claim interpretation is vital to ensure that adequate protection is granted to patent proprietors, whilst providing sufficient legal certainty for third parties. This is enshrined in Article 69 EPC, along with the additional guidance provided by Article 1 of the Protocol on Interpretation of Article 69 EPC. Yet, there are held to be two differing approaches from the Boards of Appeal of the EPO to assessing the scope of protection conferred by a European patent.
Today, Board 3.2.01, in appeal T 439/22, referred questions to the Enlarged Board of Appeal, because it considered that interpretation of the term “gathered sheet” in claim 1 of patent EP 3076804 B1 was pivotal in assessing validity, but that the case law of the Boards of Appeal was divergent such that it could not determine whether the claims were valid.
The referred questions in what will be Enlarged Board decision G1/24 are as follows:
- 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? [see Reasons, points 3.2, 4.2 and 6.1]
- 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? [see Reasons, points 3.3, 4.3 and 6.2]
- 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? [see Reasons, points 3.4, 4.4 and 6.3]
In answering question two in particular, the Enlarged Board of Appeal will hopefully provide some clarity on which of two possible approaches to claim interpretation should be used at the EPO.
The first, “classical approach” requires that the wording of the claims alone be considered in the first instance, with the description and drawings being consulted only for clarification (see for example decision T 0169/20). The alternative, “holistic” approach considers the invention in the context provided by the description and drawings in the first instance (see for example T 1473/19). To add further uncertainty, some EPO Boards of Appeal have concluded that Article 69 EPC can and should be relied on when considering patentability and infringement, but others believe that Article 69 EPC is only relevant for interpreting the meaning of the claims during infringement actions (which the EPO does not decide on).
The UPC’s approach to claim interpretation
In contrast, the UPC Court of Appeal (CoA) appears to have adopted a clear position on claim interpretation in its decision in UPC CFI 2/2023 (the PI action filed by 10x Genomics and Harvard against three NanoString companies):
The interpretation of a patent claim does not depend solely on the strict, literal meaning of the wording used. Rather, the description and 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.
The CoA further stated that “these principles for the interpretation of a patent claim apply equally to the assessment of the infringement and the validity of a European patent”.
Board 3.2.01 also cited these passages of the Court of Appeal decision in T 439/22, in support of the large body of German case law that adopts the “holistic” approach outlined above (see Reasons, point 4.3.4).
The CoA endorsed these principles for the assessment of both infringement and validity in its decision on the rejection of a PI request SES-imagotag SA v Hanshow companies, although that decision related only to the assessment of validity.
Thus, depending on the outcome of the referral to the Enlarged Board of Appeal of the EPO, it is possible that the UPC and EPO could arrive at different conclusions regarding patent validity if claim interpretation is central to the analysis. We dig into the UPC and EPO approaches in more detail in our article [here].
Expected timeline
Typically, the Enlarged Board issues decisions between one and two years after the referral. Therefore, a response is expected in late 2025 or in 2026. The Carpmaels & Ransford team will provide updates as these occur.
