Decision Harmonises EPO Practice with
National Courts and Unified Patent Court (UPC)
Recently the Enlarged Board of Appeal (EBoA) of the European Patent Office (EPO) has issued its relatively short, but for the most part decisive, G 1/24 decision providing authoritative guidance on how the claims should be interpreted to assess patentability under Articles 52 to 57 EPC. This decision reconciles divergent case law of the Boards of Appeal, and we are pleased to observe that the EBoA has committed to harmonising the EPO’s approach to that taken by the downstream national and multinational courts.
The order in the decision sets out the following. 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.
Background: Divergence in BoA Interpretive
Approaches
The referral arose from T 0439/22, where the outcome of an appeal hinged on whether the description was to be taken into account, even when interpreting a claim that contained an allegedly clear term.
The Board of Appeal (BoA) highlighted two divergent lines of case law for interpreting the claims to assess patentability.
Approach 1: The description and drawings are consulted only if the claim is unclear or ambiguous when read in isolation.
Approach 2: The description and drawings are always consulted.
The Referred Questions
With a view to resolving the divergence and ensuring uniform application of a fundamental point of law, the BoA referred three questions to the EBoA.
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?
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?
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?
The Enlarged Board’s Reasons
The divergent approach to claim interpretation in the case law arises because of a lack of consensus on the legal basis for the interpretation of claims when assessing patentability. Cases following Approach 1 suggest there is basis in Article 69 EPC and the Protocol thereto (Extent of Protection); the other cases according to Approach 2, point to Article 84 EPC (Clarity and Support).
The EBoA concluded there is no clear legal basis in the European Patent Convention but emphasised the EPO’s harmonization philosophy. Article 69 EPC is not directly applicable to the assessment of patentability, and Article 84 EPC is a formality relevant to the requirement of clarity and support that does not provide guidance for interpreting the claims.
It reasoned that determining the clarity of claims itself necessarily involves a degree of interpretation, and not consulting the description contradicts the interpretive principles of Article 69 EPC and that which is applied by the national courts and the Unified Patent Court (UPC).
In a sensible conclusion, the EBoA thus rejects the line of case law adopting Approach 1, calling out that it is a most unattractive proposition that the EPO deliberately adopt a contrary practice to that of the tribunals that are downstream of its patents.
The EBoA referred to the landmark case in NanoString Technologies -v- 10x Genomics, noting that its conclusions appeared to be same as those reached by the Court of Appeal of the UPC. It is pleasing to see in practice the role that the UPC may continue to play in driving harmonizing of patent practice across Europe, and that the EPO is keen to continue with its harmonization philosophy.
The EBoA also commented on the requirements of clarity and support and the role of the Examining Division, referring to a letter from the President of the EPO. The EBoA emphasised that clarity issues should be addressed through amendment. However, it remains to be seen how the EBoA’s comment, referring to the President’s endorsement of the EPO’s approach to adapting claims and the description to resolve inconsistencies, will be interpreted by the BoAs.
Takeaways from the Decision
- Claims remain the starting point for assessing patentability under Articles 52 to 57 EPC.
- The description and drawings shall always be consulted to interpret the claims when assessing patentability under Articles 52 to 57 EPC – not only if person skilled in the art finds a claim to be unclear or ambiguous when read in isolation.
- Question 1 was answered in the negative, but the EBoA acknowledged that its endorsed approach is analogous to the approach taken under Article 69 EPC and the Protocol thereto.
- Question 2 was answered affirmatively: the description and drawings are always consulted.
- Question 3 was not answered, as the EBoA deemed the response to Question 2 sufficient for the referring Board to decide the case before it.
The referring Board’s forthcoming decision in T 0439/22 will be closely watched for further guidance on the extent to which a patent can serve as its own dictionary, given that the EBoA provided no answer to Question 3.