Some Thoughts on G 1/24

A few months ago I attended an online seminar hosted by the EPO in which the question of interpretation of claim features was discussed. What was interesting about this was the clear difference between how the EPO Boards of Appeal interpret claim features compared to national courts. The difference was about whether the description of a patent should be used to interpret how broad a particular claim feature should be. If the views of an English judge, a Dutch judge and a member of the Enlarged Board of Appeal are anything to go by, the view from the EPO is that a broad claim feature should not be given a narrower interpretation based on what the description states, while national courts will tend to interpret a broad claim feature narrowly based on the description. 

Grok's idea of an Angora cat
(see Jacob LJ's comments here)

This difference in interpretation, while on the face of it perhaps surprising, make some sense when considering that the EPO Boards of Appeal can only determine questions of validity, while national courts determine infringement as well, although this does not fully explain it. If a broadly interpreted claim before the Boards of Appeal is found to be invalid, e.g. for lacking novelty or inventive step, it doesn't make any difference if a particular feature in the description provides a narrow interpretation that could make it valid unless that feature is put in the claim. This is similar to practice before the Examining Division or Opposition Division, where an explanation of what a claim feature means will usually result in that needing to be included in the claim wording. 

If the same claim is put before a national court, the judge will usually be assessing the claim features for infringement as well as for validity, so if the feature is instead interpreted narrowly this may still result in effectively the same outcome, i.e. the claim is only valid if interpreted narrowly as if the narrow interpretation were included in the claim itself. Infringement can then be assessed based on the narrow interpretation, which may result in a claim that is valid but not infringed. The question is whether this difference in interpretation matters. Should interpretation of claims be aligned between the EPO and national courts, or is a difference something that can be allowed to continue given that their roles are different? 

The seminar I mentioned only covered the question of interpretation of broad claim features, but it's also worth considering what would happen if a claim feature is instead interpreted narrowly on the face of the claim language alone but could (or perhaps should) be given a broader interpretation based on the description. The EPO's current way of dealing with this difficulty is to require applicants to ensure that the language of the description is in conformity with that of the claims, using Article 84 EPC as a (possibly flawed) justification for this. This approach is much contested, with applicants often finding it difficult to comply with EPO practice without introducing problematic amendments, which may themselves fall foul of other provisions such as added matter under Article 123(2) EPC. The Boards of Appeal have also disagreed over the past few years on whether such amendments are even required, with the latest contribution in T 56/21 coming down firmly on the side of no amendments being necessary at all. Practice at the EPO has nevertheless been evolving towards a more strict view of making the description be entirely consistent with the claims. The practice itself is, however, not always strictly enforced and there will be many granted patents that contain inconsistencies between what the claims state compared with what is stated in the description. 

The issue of claim interpretation is now one that is sufficiently important for questions to be raised to the Enlarged Board of Appeal, which was done in decision T 439/22. The issue in the decision under appeal relates to whether the term "gathered sheet" in claim 1 of the opposed patent should be interpreted narrowly according to how the skilled person would view it or if it should be given a broader meaning based on what the description stated. The Opposition Division rejected the opposition based on the term having a narrow meaning, while the opponent argued that it should be interpreted more broadly, which would result in it encompassing the prior art. The patent in question therefore stood or fell based on whether the description should be used to impart a broader meaning to an otherwise clear claim feature.

The questions now being raised to the Enlarged Board are the following:

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?

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?

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?

On question 1, the issue of whether Article 69 EPC should be used by the EPO at all, or if this is just a guide for national courts, may be key to resolving any inconsistency in approach. Since courts across Europe, and now including the UPC, need to be aligned as far as possible with how they interpret granted patents for infringement as well as validity, even though Article 69 EPC is primarily concerned with interpretation for infringement, interpretation for validity at the EPO should ideally be in line with this. In general therefore, the principles in Article 69 may be relevant to patentability, but should not be a primary concern during examination when assessing patentability of an invention under Articles 52 to 57 EPC. As it turns out, T 56/21 has already decided on this specific point and concluded that Article 69 EPC should not be relevant when considering patentability during examination. Instead, Article 84 EPC should be the key requirement during examination, while Article 69 EPC should only be of concern when considering infringement. Following this approach, the answer to question 1 should be a clear no, because Article 84 should instead apply during examination. Personally I would have considered an answer that was more like a yes but with the proviso that Article 69 should not be a primary concern during examination (which appears to be what happens in practice anyway).

Question 2, which does relate to Article 84 rather than Article 69, may be answered by way of a hypothetical example. If, for example, a claim has wording that on the face of it would appear to be clear to the skilled person but the supporting description provides a broadening interpretation by way of a range of examples intended to be covered by the claim wording, it does not seems to me to be correct to take only the narrow wording of the claim and ignore the broader interpretation from the description because this would enable the applicant/proprietor to argue for a narrow interpretation to obtain grant or maintenance of the patent, following which they could argue for a broader interpretation for infringement (known as the 'Angora cat' problem). File wrapper estoppel would not be an appropriate counter to this, because this is not uniformly applied across Europe. The converse, however, should not be a problem because, if a term in a claim is broad and would clearly be understood as such by the skilled person but the description imparts an unambiguously narrower interpretation on the term, granting such a claim would not adversely affect third parties because any infringement issue is for the national (or UPC) courts to decide, i.e. whether such courts interpret the term for infringement broadly or narrowly. The answer to question 2 should therefore be that the description and figures should always be consulted when interpreting features in claims to assess patentability, particularly if these impart a broader scope to any features than would be apparent to the skilled person from the claim wording alone. Article 84 could be used to resolve this, because a narrow claim term that is given a broader meaning in the description could be seen as unclear due to the narrow meaning not being supported, which would require an amendment to be made either to the claims or to the description. 

On question 3, the answer could be found by considering what purpose the definition provides. Article 84 is often used to require that unclear terms in a claim for which there is a clarifying feature in the description need to be amended before grant to make them clear because the general view during examination is that the claim wording needs to be clear by itself. The claim wording may therefore need to be amended during examination to incorporate a definition from the description if it would be unclear otherwise. However, if the claim features are clear in themselves, a definition explicitly given in the description for a particular term used in the claims can only result in a narrower definition of the term so, following from the answer to question 2, can be disregarded for assessing patentability if the term, interpreted more broadly without the definition, is still patentable. If the claims are not patentable without the explicit definition, the definition (or something else) should be incorporated into the claims. The answer should therefore be that such a definition could be disregarded if the claim is clear by itself and still patentable, otherwise the definition may need to be incorporated into the claim. How this is done will depend on whether the situation is for an application undergoing examination, in which case a clarity objection can be raised and an amendment made as a result, or if the situation is for a patent during opposition, in which case clarity cannot be raised on the claims as granted. Instead, during opposition the claims should be interpreted in a way that can make sense to the skilled person and patentability assessed based on that, preferably without imparting a narrow definition from the description because this would again raise the Angora cat problem. If it turns out that the patent is invalid based on this assessment, it will then be up to the patentee to decide what amendments may be needed to make it patentable. 

The above are only a preliminary few thoughts from me on the questions, which could quite reasonably be answered differently. My mind is not yet set on the matter, so it would be interesting to see if anyone has any thoughts to contribute.