With decision T 439/22 of 24 June 2024, a referral was made to the Enlarged Board of Appeal seeking to clarify the legal basis for interpreting patent claims for the purpose of assessing patentability, whether and under which circumstances the description and figures may be taken into account when interpreting a patent claim and, finally, the extent to which a patent can serve as its own dictionary.
Specifically, the following questions have been referred to the Enlarged Board of Appeal:
- 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 the invention under Articles 52 to 57 EPC?
- 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?
- 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 EPO has continued examination and opposition proceedings while the referral on claim interpretation is pending before the Enlarged Board of Appeal. The EPO has directed that Examining and opposition divisions should therefore continue to apply the practice set out in the Guidelines for Examination in the EPO, according to which they will, so far as possible, require a claim to be amended such that, in cases where the description gives a specific meaning to words used in the claims, the meaning is clear from the wording of the claim alone.
The oral hearing has now been scheduled for 28 March 2025 and the public will be able to follow the proceedings online via livestream. The decision from the Enlarged Board can be expected to issue a few months after the hearing.
