Hot topic, short decision – Enlarged Board of Appeal issues decision in G1/24 (“Heated aerosol”)

The Enlarged Board of Appeal has issued the decision in G1/24 (‘Heated Aerosol’).

The Appeal related to interpreting the claims for the purpose of assessing patentability, and to what extent the description should be used to interpret the claims given the divergent case law in this area. 

The questions referred to the Enlarged Board were:

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 description and drawings shall always be consulted even if the claims are clear

The Board issued a concise answer to questions 1 and 2, firmly rejecting the view that the description and drawings are only needed if the claims are unclear:

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. (headnote; emphasis added)

Parties therefore cannot simply disregard the content of the description when interpreting the claims on the basis that the claims are clear on their own.

The Enlarged Board considered question 3 inadmissible, stating that it was encompassed by question 2 and that an answer to question 3 was not needed to reach a decision in the case underlying the present appeal.

No clear legal basis in the EPC, but principles of claim interpretation can be extracted from the case law

The short decision in G1/24 spares much of the discussion on the underlying points of law and case law, instead relying on the referring decision T 0439/22 (see 11 of G1/24). In their discussion of question 1, the Enlarged Board acknowledged that neither Article 69 EPC nor Article 84 EPC provide clear legal basis for assessing the patentability of the claims in view of the description and figures, but instead indicated the legal basis is established through case law (see 9-10 of G1/24).

A stricter approach to description amendments pre-grant?

The Enlarged Board’s decision is interesting when read in the context of the description amendments required to varying degrees by EPO examiners. Despite the “unequivocal” lack of legal basis for requiring description amendments found in T 0056/21 (a decision in which a widely expected referral to the Enlarged Board failed to materialise), we have seen many EPO examiners rejecting that decision as inconsistent with other decisions and pushing for extensive amendments to the description. The decision in G1/24 will no doubt give EPO examiner’s further ammunition for requiring description amendments pre-grant and applicants can likely expect a more stringent implementation of this practice.  However, questions remain as to how this decision will impact opposition proceedings.

Harmonisation key to avoid “a most unattractive proposition”

Notably the Enlarged Board’s decision also emphasises the importance of harmonising EPO practice with that of national courts and the UPC, stating that “The Enlarged Board finds it a most unattractive proposition that the EPO deliberately adopt a contrary practice to that of the tribunals that are downstream of its patents”, also referring to the UPC Court of Appeal’s approach in NanoString Technologies v 10x Genomics. This overarching aim was perhaps a key driver behind the Enlarged Board’s decision in G1/24.