The background case
The G 1/24 referral arose from the interlocutory decision T 439/22 issued by the Technical Board of Appeal (TBA) on June 24, 2024 in proceedings related to European Patent No. 3 076 804 in the name of Philip Morris Products S.A. This patent relates to “heat-not-burn” tobacco products. Claim 1 of EP 804 recites a heated aerosol-generating article, requiring i.a. an aerosol-forming substrate comprising a “gathered sheet” of aerosol-forming material (e.g., a sheet of tobacco) circumscribed by a wrapper (e.g., an aluminum foil).
The central dispute revolved around the interpretation of the term “gathered sheet”, and its impact on the novelty of the claimed subject matter, as a prior art document disclosed a cartridge comprising a “spirally wound” sheet of aerosol-forming material. A narrow interpretation of the term, based on its generally accepted meaning in the field of tobacco industry, might imply specific configurations (e.g., folds) which would distinguish it from a spirally wound sheet. But a broader interpretation of the term, based on an explicit definition provided in the patent, could potentially encompass a sheet of tobacco rolled up into a cylinder (i.e., a spirally wound sheet)
“[0035] As used herein, the term ‘gathered’ denotes that the sheet of tobacco material is convoluted, folded, or otherwise compressed or constricted substantially transversely to the cylindrical axis of the rod.”
The Opposition Division adopted what the TBA termed a “classical approach” to claim interpretation, considering that the term “gathered sheet” had a clear meaning in the art (i.e., the narrower interpretation), and that it was therefore unnecessary to consult the broader definition provided in the patent to interpret this seemingly clear term.
On appeal, the TBA identified divergent approaches in EPO case law regarding the principles of claim interpretation for assessing patentability
The specific facts of this case provided a perfect scenario to test the boundaries of EPO’s claim interpretation principles, and the TBA decided to refer three questions to the EBA:
- Is Article 69 (1), second sentence EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC to be applied on the interpretation of patent claims when assessing the patentability of an 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?
Key findings of the EBA G 1/24 decision
The EBA had accustomed us in the past to lengthy decisions, but this time pleasantly surprised us with a short decision that provides a clear and straightforward answer to these questions of claim interpretation.
On the first question, the EBA considered that neither Article 69 EPC, nor Article 84 EPC, are entirely satisfactory as a basis for claim interpretation when assessing patentability. As a consequence, the EBA considered:
“(…) that there is no clear legal basis, in terms of an article of the EPC, for claim interpretation when assessing patentability. Given the above, the strictly formal answer to Question 1 would be ‘No’.” [reasons No. 9]
Nonetheless, this does not mean either that one should invent new principles of claim interpretation from scratch. Whether Article 69 or Article 84 EPC is taken as a basis, does not affect the principles that must be applied.
On the second question, the EBA acknowledged that it is settled case law before the EPO that the claims are always the starting point and the basis for assessing the patentability of an invention [reasons No. 13]. However, whether the description and drawings must always be referred to when interpreting the claims, or only in the case of unclarity or ambiguity, has given rise to diverging case law and is therefore the central issue at stake in this referral [reasons No. 13 in fine].
The answer of the EBA on this issue is clear and unambiguous:
“The description and any drawings are always referred to when interpreting the claims, and not just in the case of unclarity or ambiguity.” [reasons No. 12]
By adopting this position, the EBA explicitly rejected the “classical approach” of the Opposition Division in the underlying case, as well as all prior EPO case law that saw no need to refer to the description and drawings when interpreting a claim, unless the claim is unclear or ambiguous.
Beyond being contrary to the wording of Article 69 EPC, the EBA justified their position by a need for harmonization of practice at the European level:
“It is also contrary to the practice of the national courts of the EPC states and to the practice of the UPC (‘). [reasons No. 15]
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. On this point, the Enlarged Board agrees with the harmonization philosophy behind the EPC (‘).” [reasons No. 16]
On the third question, the EBA considered that it was encompassed within Question 2 and therefore found it inadmissible as a separate answer to it was not necessary.
Conclusion
In the course of the proceedings before the EBA, third parties filed 28 amicus briefs with a majority giving positive answers to Questions 1 and 2, and considering that the definition of a term given in the patent may not be disregarded.
The EPO President, however, supported a rigid application of EPO practice, calling for the primacy of the claims, with the description and figures only playing a secondary role. According to the President, if a term requires to consult the patent specification to be understood, this term must be objected as being unclear to under Article 84, and the claim must be amended to reflect the meaning and scope of the term. On the latter, the EBA aligned with the President, stating that:
“The above considerations highlight the importance of the examining division carrying out a high quality examination of whether a claim fulfils the clarity requirements of Article 84 EPC. The correct response to any unclarity in a claim is amendment.” [reasons No. 20]
However, the President’s position calling for a strict approach has not prevailed and the EBA has instead chosen harmonization and logic.
In their non-binding preliminary opinion issued in February 2025, the EBA had expressed the view that the description and figures “can be referred to” for claim interpretation, but did not endorse any mandatory consultation nor specific conditions under which they shall be consulted. It would seem that the Opponent’s proposal for a new “diamond standard” (the use of the description and drawings to interpret the claims without condition in line with the wording of Article 69 EPC) has resonated with the EBA, although they did not adopt this terminology (nor even mentioned it in their decision).
Finally, the EBA concluded by citing the UPC case law:
“The Enlarged Board notes that the current case law of the UPC, as exemplified in Headnote 2 of the order of the UPC Court of Appeal of February 26, 2024 in NanoString Technologies -v- 10x Genomics, (as rectified by the order of March 11, 2024), appears to be consistent with the above conclusions.” [reasons No. 19]
The UPC had indeed showed no ambiguity on this question, ruling that the description and the drawings must always be used as explanatory aids for the interpretation of the patent claim, and not only to resolve any ambiguities in the patent claim.
The issuance of this decision G 1/24 puts an end to an eager anticipation and to the fear held by some stakeholders that the EPO would not be able to show flexibility and adopt the position of the UPC, which was nevertheless necessary in the context of harmonizing European practice. But it has now been done, and it might pave the way for potential future harmonization.
View the EPO’s press release.
