Today is the day of the highly anticipated oral proceedings on G 1/24. The referral relates to a highly fundamental question of patent law, namely how the claims of a patent should be interpreted. KatFriend, Greg Corcoran, takes us through the background to the referral, details of the latest flurry of submission and suggests the key points to look out for in the hearing today. Over to Greg! "Today, Friday 28th March, the Enlarged Board of Appeal (EBA) will hear representations from the parties to the proceedings and the European Patent Office (EPO) for the Referral G 1/24 relating to use of the description in claim interpretation, as first reported here. This Referral has received an unusually high-level of interest, not least because the decision could impact the practice of all European patent practitioners. Over thirty Amicus Briefs were received, including two late filed and two from the same party (the epi). The President filed Comments, which some may consider controversial. The Preliminary Opinion of the EBA was unusually brief, with many commentator reports having a greater word count than that of the Opinion itself. In preparation of the hearing today, here are some highlights of the proceedings so far. Background to the case The Referral derives from an opposition to a Phillip Morris patent (EP 3076804) for a smoking article. The Opposition decision was appealed, asking the Board of Appeal if a definition in the description of the patent could be used for a broader interpretation of the claim-term "gathered" than would be known to a person skilled in the art. The divided case law The Referring Board noted in its Interlocutory Decision, T 439/22, that split case law existed for interpreting claims in view of the description, which refer to both Arts 84 and 69 EPC. Tuning in to G 1/24, IPKat is all ears! The first line of case law, e.g. T 223/05, advocates that Art 84 EPC, not Art 69 EPC, applies in EPO proceedings: a patent claim should essentially be read and interpreted on its own merits rather than with the aid of the description and drawings. If the claim wording is clear to a person skilled in the art in view of the common general knowledge, reference to the description is unnecessary. Exceptionally, reference to the description and drawings may be made when a claim lacks clarity. A particular meaning present only in the description (and not the claims) cannot be used to interpret an apparently broad term of a granted claim to have narrow scope. Limiting reference to the claims on their own, or with the description, if necessary, is alleged to ensure that for a person skilled in the art the claims would be clear and unambiguous (Art 84 EPC). This ensures a proprietor cannot adopt a narrower interpretation during prosecution than after grant, preventing the ‘Angora cat’ phenomenon. In the second line of case law e.g. T 1473/19, “Article 69 EPC and the Protocol are the only provisions in the EPC containing rules for the interpretation of patent claims” and the “claims must satisfy the requirements under Article 84 EPC so that they can fulfil their purpose of enabling the protection conferred by the patent to be determined under Article 69 EPC (cf. G 2/88, Reasons 2.5)”. The description is generally taken into account for claim interpretation, unlike in the first established line of case law. Although account should be taken of the description and drawings when interpreting a claim (Art 69(1) EPC), the claims have primacy for determining the extent of protection. This recognises that features cannot be read in claims that are only present in the description. Some commentators note that the Referring Board cites the UPC Court of Appeal decision Nanostring v 10x Genomics when referring to G 2/88 and G 6/88 (which it argues applies Art 69 EPC to patentability). Nanostring is now leading UPC case on claim interpretation. Could it be that the Referring Board is suggesting that the EPO follow the UPC or at least take note of developments in UPC practice? What lies at the heart of the split case law is how Arts 84 and 69 EPC are applied by the EPO for claim interpretation, i.e. prior to grant and opposition. The referral questions and provisional answers Thus, the Referring Board decided that a referral was required in view of the divergence in case law to determine the relevance of cited prior art should the claim be broadened by referring to “gathered” in the description. The Referral Questions, simplified for brevity, are: Question 1) Is Art 69 (1) EPC and the Protocol of Interpretation legal basis for claim interpretation? Question 2) Should reference be made to the description and the drawings when interpreting claims? Question 3) Can a specification be a dictionary of definitions for the patent? Amicus Briefs, The President’ Comments and Pegram’s Third Party Observations Twenty-eight amicus briefs were filed, which is an unusually high number, by parties with interests over the full range of technical fields. In response to the Referral Questions, most briefs gave positive replies to the first Question; all but one were positive in response to the second Question; and, for the third Question, most stated a definition of a claim term in the description may not be disregarded. It should be noted that over a third of the Briefs cited T 56/21 which was decided shortly before the deadline for filing the briefs. A referral about the practice of amendment of the description had been expected from this case; yet the Board of that case decided amendment of the description on allowance was inappropriate and a referral was unnecessary, as reported here. The President of the EPO filed his Comments at the same time as the amicus briefs. His arguments differed from any of the briefs, arguing the EBA should account for the established EPO practice under Art 84 EPC of amending the description in compliance with the allowed claims prior to grant. He considers this practice as essential for ensuring consistent claim interpretation. He cites T 438/22 that affirms the practice of amendment of the description (as reported here) and which is divergent case law relative to T 56/21. The President could be asking the EBA to check the impact of its decision against the established EPO practice. Yet others interpret the President’s Comments as asking the EBA to extend the Referral Questions to encompass the practice of amending the description. Noting the deadline for filing amicus briefs had elapsed, John B Pegram filed third party observations, arguing, if the EBA were to extend the Referral Questions in view of the President’s arguments, interested third parties should be given the right to be heard. Preliminary Opinion The EBA published its Preliminary Opinion on 6 February 2025, (see IPKat). Of the three Referral Questions, the EBA appears most interested in the first Question. Simplifying the provisional answers for brevity: Provisional Answer 1: The EBA recognises the interest in uniform claim interpretation in EPO and Board of Appeal proceedings (including pre-grant) and in post-grant national court proceedings, including the UPC. The EBA identifies two sub-questions: A. Should the principles of claim interpretation of Art 69(1) second sentence EPC and Article 1 of the Protocol be applied for claim interpretation when assessing patentability (Articles 52 to 57 EPC); B. Are Article 69(1) EPC and Article 1 of the Protocol the legal bases for the principles referred to in question A)? Provisional Answer 2: The EBA views the description, and figures can be used for claim interpretation. Provisional Answer 3: This question is inadmissible. An answer is not required for the underlying case. Through his support of the practice of amendment of the description, Art 84 EPC, the President seeks uniform claim interpretation. The President is one of the parties with such an interest that the EBA acknowledges this in the introduction to its first answer. Therefore, if the EBA has decided to ignore the President’s Comments, this is not communicated in the Preliminary Opinion. The EBA may still respond to the President's arguments. Later Filings Normally the next filing in proceedings would be the final pleadings of the parties. Yet there are three further third-party filings: a. Further Third-Party Observations: of 13 February present the development of Art 69 EPC evidenced by the travaux préparatoires of the EPC. Art 69 EPC is inapplicable pre-grant because the article was developed exclusively for infringement post-grant, and the reference to ‘applications’ is for ‘provisional protection’ i.e. rights conferred after publication but before grant. This appears to support the Respondent’s arguments. b. The epi filed their Second Amicus Brief on 18 February 2025 in response to the President’s Comments, noting: the Referral Questions does not directly address the adaption of the description, Art 84 EPC. The epi notes Art 84 EPC does not stipulate that the description must only contain subject matter which supports the claims. Yet it considers it is not necessary to address the question of amendment of the description in order to answer the Referral Questions. Despite taking a position inconsistent with that of the President, the epi observes that in practice there are strongly held views for and against the practice of amendment of the description. The epi criticises a rigid application of EPO practice as advocated by the President, noting that the patent from which the Referral derived, despite having clear claims (Art 84 EPC) during assessment of patentability, demonstrates a problem can exist when interpreting claims applying Art 69 (1) EPC and the Protocol. Such interpretation might lead to an extent of protection deviating from the subject matter for which protection is sought, and which is assessed for patentability relative to the prior art. It presents examples that demonstrate retaining the description unrelated to the claimed invention would not be detrimental to claim interpretation post-grant, but would even assist a person skilled in the art to understand the context of the invention. Retaining such non-supporting disclosure would not automatically result in a lack of clarity, because a person skilled in the art would not rely on such disclosure for claim interpretation. If such disclosure later broadened claim scope, applying Art 69(1) EPC second sentence during patentability would ensure such broader scope would need to be patentable. The epi repeats Pegram’s arguments and argues interested third parties had not made representations about the question of amendment of the description because this question is extraneous to the Referral. Without pleadings from all sides and views, the epi takes the position that a decision in the present proceedings on the question of amendment of the description would be premature. c. Amicus Brief of 20 February 2025 from Mewburn Ellis (Mewburn). Mewburn represented Hoffman-La Roche in the appeal T 56/21 from which a referral on amendment of the description had been expected. As explained earlier, that Board finally decided that a referral was not necessary because adaption of the description had negative consequences post grant. The President explicitly criticised this decision at para 72 and 73 of his Comments, citing T 438/22 to affirm EPO practice. The President’s own Comments appear to undermine the argument that the EPO practice of amending the description has sure footing, by highlighting that the practice relies on one limb of divergent EPO case law. Mewburn arguably shows that T 56/21 serves not to demonstrate that a referral on the question of amendment of description is unnecessary, but that a new referral would be appropriate. Mewburn observes that the Preliminary Opinion is silent whether the EBA will consider the question of amendment of description. They ask that, if the EBA decides to consider the President’s question, third parties are given the opportunity to file Amicus Briefs before the EBA’s consideration of the President’s question. Final Arguments of the Parties The Respondent builds on earlier arguments that the Referral is inadmissible, and the first Question really relates established practice for clarity (Art 84 EPC). The Respondent proposes to reformulate the first Question to refer to the full Protocol, including Art 2 on equivalence. They reason then that Art 69 EPC may only apply post grant. T56/21 features the same argumentation that Art 69 is inapplicable in the EPO proceedings for patentability. However, the Respondent asks that the President’s request (to consider amendment of the description) is not considered in the proceedings. The Appellant argues that Art 69 EPC applies for patentability (see G 6/88 cited in the Referral, T439/22) so that how the EPO, Courts and public interpret the claims results in the same understanding of the claimed subject matter. Art 69 EPC is the only provision of the EPC that specifically addresses claim interpretation, and this provision explicitly states that the description and drawings must be used to interpret the claims, without condition. The Appellant supports Pegram’s arguments that amendment of the description is not part of the Referral (paragraph 157), yet it positively supports amendment of the description, noting that sometimes the practice may be ‘insufficient’ (paragraph 21). Curiously, the Appellant seems not to support Pegram’s argument that third parties should be given the right to be heard if the EBA decides to consider the President’s arguments (paragraph 156). The Appellant applies the general principles of EU Administrative Procedural law (paragraphs 24 to 43) which is applicable in most but not all EPC contracting states, as a guide for the legal principles on interpretation (Art 125 EPC) to support its arguments for harmonised claim interpretation, in applying Art 69 EPC. It observes such an approach: would increase certainty in court decisions; is enabled by the commencement of the UPC; and would result in higher quality granted patents, which is in-line with the interests of the EPO. Points to Note for the Hearing There are many points at play in these proceedings. In view of the Preliminary Opinion, it is likely that the proceedings will focus on the first Referral Question: if the principles of Art 69 (1) EPC and its Protocol are applied to claim interpretation for patentability and if these provisions provide legal basis. The parties to the proceedings and the EPO (which will also participate in the hearing today) appear to have differing views. Some key issues appear to be: Will the EBA decide that the principles of Art 69 EPC and its Protocol (or even as legal basis) should be applied pre-grant for claim interpretation to assess patentability in place of Art 84 EPC? Will the EBA accept the Appellant’s arguments that the EPO should harmonise its approach to claim interpretation with the UPC? This appears to be the legal issue upon which this Referral appears to turn, and it is only supported by the Appellant. Will the Respondent’s efforts to reformulate the first Referral Question to incorporate Art 2 of the Protocol succeed? Should the EBA accept this argument, the Referral could be swiftly concluded but given the Preliminary Opinion’s acknowledgement of the interest in consistent interpretation before the EPO and the Courts, this outcome is perhaps unlikely. How will the EBA respond to the President’s argument that the decision should account for the practice of amendment of the description? The parties to the proceedings, the two late filed Amicus Briefs and Pegram in his Observations argue that the EBA should not account for this practice when answering the Referral Questions. If the EBA does consider the President’s argument, would third parties be able to file new Amicus Briefs? There is no precedent so that outcome appears unlikely and third parties appear not have attempted to add substantial arguments, as such, in response to the President’s argument; rather the two late filed amicus briefs mainly argued against the EBA considering Amendment of the Description when answering the Referral Questions. In any event, the EBA will answer the Referral Questions as is necessary to address the issues from the originating appeal: which is unrelated to amendment of the description. It will be interesting to see the EBA’s approach on this point. Is reference to amendment of the description completely avoidable? It is unclear if the decision can avoid reference to the amendment of the description entirely because the decision is highly likely to refer to Art 84 EPC. Further the Appellant explicitly refers to EPO practice in its arguments (paragraph 21). If the EBA decides not to consider the question of amendment of the description, it will be interesting to see how it formulates its decision in view of the Appellant’s arguments without consequences for the practice of amendment of the description. Summary These and other questions will be considered by the Enlarged Board of Appeal in the hearing today at 10am CET. The hearing can be followed by livestream using the link supplied here: Oral proceedings in case G1/24 ("Heated aerosol"). The decision is expected later this year." Related IPKat Articles BREAKING: Referral to the Enlarged Board of Appeal on claim interpretation confirmed (G1/24) - The IPKat Deletion of claim-like clauses: Board of Appeal finds legal basis for adaptation of the description from "the EPC as a whole" (T 0438/22) - The IPKat Board of Appeal back-pedals on referral in view of "unequivocal" lack of legal basis for the description amendment requirement (T 56/21) - The IPKat GuestPost: A referral broadened? To have one’s cake, to eat it...or not yet to get it (G 1/24) - The IPKat
