Press Communiqué of 18 June 2025 concerning decision G 1/24 (“Heated aerosol”) of the Enlarged Board of Appeal
The Enlarged Board today issued its decision in case G 1/24. It concluded that the claims are the starting point and the basis for assessing the patentability of an invention, and that the description and drawings must always be consulted to interpret the claims for this assessment.
Background
The referral by Technical Board of Appeal 3.2.01 in T 439/22 of 24 June 2024 concerned, firstly, the question whether Article 69(1), second sentence, EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC are to be applied to the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC. The second question referred to the Enlarged Board concerned whether the description and figures are to be consulted when interpreting the claims to assess patentability and, if so, whether this may be done generally or only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation. The third and final question was whether a definition or similar information on a term used in the claims, which is explicitly given in the description, can be disregarded when interpreting the claims to assess patentability and, if so, under what conditions.
In the case underlying the referral, the patent in suit concerned an article for a vaping device, which contained an aerosol forming material (tobacco). A key issue in the appeal was whether the subject-matter of claim 1 of the patent as granted was novel. Claim 1 as granted contains the feature that the material is a “gathered sheet”. The patent proprietor-respondent argued that if this term is assigned its usual meaning in the art, claim 1 is to be regarded as novel. The appellant-opponent argued that if “gathered sheet” is interpreted in the light of the description, including the definition given therein, then it would have a broader and still technically sensible meaning. This broader interpretation of “gathered sheet” would lead to a lack of novelty. The referring Board found the question whether the definition in the description had to be applied for construing the features in the claim decisive for the assessment of novelty pursuant to Article 54 EPC.
Key considerations
The Enlarged Board held that the departments of the EPO were required to interpret patent claims when assessing the patentability of an invention.
As regards Question 1, the Enlarged Board considered that there was no clear legal basis, in terms of an article of the EPC, for claim interpretation when assessing patentability. Article 69 EPC and Article 1 of the Protocol were arguably only concerned with infringement actions and therefore not entirely satisfactory as a basis for claim interpretation when assessing patentability under Articles 52 to 57 EPC. Article 84 EPC could also be criticised as an alternative legal basis as it addresses the content of the patent application and is formal in nature without providing guidance on how to interpret claims; it only sets out an instruction to the drafter of what needs to be in the claims and an instruction to the EPO to determine whether the claims meet that purpose.
The Enlarged Board considered, however, that there was an existing body of case law which applied the aforementioned provisions in an analogous way to the examination of patentability, and from which the applicable principles of claim interpretation could be extracted.
The Enlarged Board further considered it a settled point in the case law of the Boards of Appeal that the claims were the starting point and the basis for assessing the patentability of an invention under Articles 52 to 57 EPC.
As regards Question 2, the Enlarged Board rejected the case law of the Boards that sees no need to refer to the descriptions and drawings when interpreting a claim, unless the claim is unclear or ambiguous. It found that this case law was contrary to the wording, and hence the principles, of Article 69 EPC. It was also contrary to the practice of the national courts of the EPC states and to the practice of the UPC. Moreover, from a logical point of view, the finding that the language of a claim is clear and unambiguous was an act of interpretation, not a preliminary stage to such an interpretative act.
The Enlarged Board thus held that the description and any drawings must always be consulted when interpreting the claims, and not just in the case of unclarity or ambiguity.
Question 3 was held inadmissible by the Enlarged Board, which considered it to be encompassed by Question 2.
The Enlarged Board also referred to the harmonisation philosophy behind the EPC and noted that the case law of the UPC Court of Appeal on claim interpretation appeared to be consistent with its conclusions.
Order
The order by the Enlarged Board of Appeal reads as follows:
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.
Contact
Nikolaus Obrovski
Jeannine Hoppe
Spokespersons of the Boards of Appeal of the European Patent Office
[email protected]
This press release is a non-binding document for media use.
Further information