6.2.1 Decision G 1/24

In G 1/24 (OJ 2025, A60) the Enlarged Board considered the points of law referred to it in T 439/22 of 24 June 2024 (OJ 2024, A104). The first question was whether Art. 69(1), second sentence, EPC and Art. 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 Art. 52 to 57 EPC. The second question was whether the description and figures may 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 question was whether a definition or similar information on a term used in the claims, which is explicitly given in the description, may be disregarded when interpreting the claims to assess patentability and, if so, under what conditions.

As regards the first question, the Enlarged Board held 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 Art. 1 of the Protocol on the Interpretation of Article 69 EPC are arguably only concerned with infringement actions before national courts and the UPC. Using Art. 84 EPC as an alternative basis for interpretation of the claims could also be criticised. It addresses the content of the patent application and is formal in nature, it does not mention the invention and provides no 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 noted, however, that the boards of appeal have applied the wording of these articles in an analogous way to the examination of patentability under Art. 52 to 57 EPC. There was thus an existing body of case law from which the applicable principles of claim interpretation could be extracted.

As regards the second question, the Enlarged Board stated that the description and any drawings are always referred to when interpreting the claims, and not just in the case of unclarity or ambiguity. In adopting this position, the Enlarged Board rejected the case law of the boards of appeal 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 Art. 69 EPC. It was also contrary to the practice of both the national courts of the EPC contracting states and the UPC. The Enlarged Board ruled against adopting a contrary practice to that of the tribunals that are downstream of its patents and agreed with the harmonisation philosophy behind the EPC already underlined in G 5/83, OJ 1985, 64, and G 3/08 of 12 May 2010, OJ 2011, 10. A further reason for rejecting the above line of case law was a logical one. The finding that the language of a claim is clear and unambiguous is an act of interpretation, not a preliminary stage to such an interpretative act. The Enlarged Board held that the third question was inadmissible, as it was encompassed within the second question.

In addition, the Enlarged Board highlighted the importance of the examining division carrying out a high-quality examination of whether a claim fulfils the clarity requirements of Art. 84 EPC and stated that the correct response to any unclarity in a claim was amendment.

The Order by the Enlarged Board in G 1/24 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."