Always Consult the Description: G 1/24 on Claim Interpretation
The Enlarged Board of Appeal has definitively ruled in G 1/24 that the description and drawings must always be consulted when interpreting claims for patentability, rejecting the 'clear in itself' doctrine.
Picture defending a vaping device patent where the novelty of a "gathered sheet" of tobacco hinges entirely on whether the opposition division reads the claim in isolation or flips to the description. The proprietor insists the term has a strict, established meaning in the prior art, preserving novelty. The opponent points to a broader definition in the specification that would render the claim anticipated. This exact tension over when and how to consult the description prompted the referral in T 439/22, leading the Enlarged Board of Appeal to issue G 1/24.
Why did the Enlarged Board reject Article 69 EPC and Article 84 EPC as legal bases?
The first question referred to the Enlarged Board asked whether Article 69 EPC and its Protocol, or alternatively Article 84 EPC, provide the legal basis for interpreting claims when assessing patentability under Articles 52 to 57 EPC. The Enlarged Board found neither option satisfactory.
Article 69 EPC and its Protocol are systematically located in the chapter concerning the effects of a European patent. The Enlarged Board noted that these provisions are directed at infringement proceedings before national courts and the Unified Patent Court. Conversely, Article 84 EPC is purely formal. It dictates the required content of a European patent application but provides no substantive guidelines for interpretation. Strictly speaking, the Enlarged Board concluded that there is no explicit statutory basis in the European Patent Convention for claim interpretation during examination or opposition. However, this absence does not invalidate the existing principles developed by the boards of appeal, which have applied the spirit of these articles by analogy.
How did the Enlarged Board resolve the ambiguity threshold?
The core dispute in the underlying vaping device case centered on whether the description can be consulted generally, or only if the skilled person finds a claim unclear or ambiguous when read in isolation. The Enlarged Board firmly rejected the latter approach.
According to the decision, concluding that the text of a claim is clear and unambiguous is already an act of interpretation. It is logically inconsistent to treat clarity as a preliminary hurdle that must be failed before interpretation can begin. Consequently, the Enlarged Board established a definitive rule: the description and any drawings must always be consulted when interpreting claims for the assessment of patentability, not just in cases of ambiguity. Because this answered the broader issue, the Enlarged Board deemed the third referred question, concerning whether explicit definitions in the description can be ignored, inadmissible as it was already subsumed within the second question.
Why did harmonization with the UPC influence the outcome?
The Enlarged Board placed significant weight on the broader European patent ecosystem. Restricting the consultation of the description to ambiguous claims contradicts the established practice of national courts across the Contracting States.
More notably, the Enlarged Board explicitly referenced the Unified Patent Court, citing the Court of Appeal order in NanoString Technologies v 10x Genomics. The Enlarged Board stressed that it would be highly regrettable for the European Patent Office to deliberately adopt an interpretation practice that diverges from the courts enforcing its granted patents. Harmonization remains a fundamental philosophy underlying the European Patent Convention.
What must practitioners change after G 1/24?
The "clear in itself" defense is no longer viable in opposition proceedings. Patent proprietors can no longer argue that an opponent is barred from using the description to interpret a seemingly clear claim term like "gathered sheet". The description is now a mandatory interpretive lens for every feature.
However, this does not give applicants a free pass during prosecution. The Enlarged Board explicitly endorsed the view of the President of the European Patent Office that examining divisions must conduct a rigorous examination under Article 84 EPC. If a claim lacks clarity, the appropriate remedy is to amend the claim itself. Patent attorneys must draft claims with the absolute certainty that the description will be read into them, ensuring that the specification supports the intended scope without accidentally broadening clear terms into the prior art.
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Further Reading
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