The much-awaited decision of the Enlarged Board of Appeal concerning the extent to which the description can be used to interpret the claims when assessing patentability issued yesterday.
The Enlarged Board’s order confirms that claims must always be interpreted in light of the description and drawings, not just when they 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.
In the Written Decision, the Enlarged Board answered 2 out of 3 of the referred questions. Question 3 was ultimately found to be inadmissible, although this was because it was rendered moot by the answer to Question 2 (see reason 1). In brief, the questions were answered as follows:
Q1. 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?
No- the Enlarged Board confirmed that there is no clear legal basis, in terms of an article of the EPC, for claim interpretation when assessing patentability (see reason 9). However, the Enlarged Board noted that a body of case law has developed nonetheless to provide guidance and so make this less of an issue.
Q2. 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?
Yes- the Enlarged Board emphasises that the claims must be the starting point and the basis for assessing the patentability of an invention under Articles 52 to 57. This is described to be a settled point in the case law of the Boards of Appeal (see reason 13). However, the description and any drawings must always be referred to when interpreting the claims, and not just in the case of unclarity or ambiguity (see reason 14). It is interesting to see that the Enlarged Board referenced the case law of the Unified Patent Court and clearly wish to ensure harmonisation (see reason 16).
Our detailed commentary on this decision will follow in the coming days. Meanwhile, if you have any queries about how G1/24 could affect your patent requirements, please get in touch with your usual contact at Boult.
