1.3. Norme utilisée pour apprécier s'il est satisfait à l'article 123(2) CBE

In T 873/24, in each of the originally filed sets of claims of the application, the parent and the grandparent application, the titanium to nitrogen ratio was explicitly defined by expressing their respective amounts in weight percent, as being in excess of 3.42, thus resulting in a weight ratio. In contrast, claim 1, feature F1.3 of the patent in suit did not specify that the amounts of titanium and nitrogen had to be expressed as weight percent in order to determine the ratio. Appellant 2 argued that subject-matter had been added since the application as filed (as well as the parent and grandparent applications) only disclosed a ratio based on weight but not a generalisation of the ratio by omission of the unit, as claimed.

According to the board, the case hinged on the extent to which the information found in the description might influence the interpretation of claim 1 and on what possible interpretations of the claim needed to be originally disclosed.

The board observed that most decisions acknowledged that the principles of G 1/24 as to the role of the description in claim interpretation also applied to the assessment under Art. 76(1) and 123(2) EPC. Generally, most decisions adopted a two-step approach, first interpreting the amended claim and then assessing whether the amended claim contained added subject-matter. The board identified three approaches regarding the extent to which the description was relied upon during this first step of interpreting the amended claims. Under the first approach, the description was consulted only to define the skilled person. Under the second, there was no broadening or limitation of claims based on the patent specification. The third was a holistic approach permitting broadening and/or narrowing the interpretation in view of the patent specification. The board noted that the three approaches led to a different outcome when applied to the case in hand. Under the first and second approaches, the amendment to claim 1 would be deemed to add subject-matter. The third approach would lead to the conclusion that feature F1.3 fulfilled the requirements of Art. 123(2) EPC..

After addressing the admissibility of the referral (see abstract under Art. 112(1) EPC), the board referred the following questions to the Enlarged Board (referral pending under G 1/26 – "Coated steel strips").

"1. May a decision be considered to be "required" for the purposes of Article 112(1) EPC, if the referring Board demonstrates that the point of law in question arises out of the context of the case pending before it and, in the circumstances of the proceedings, it is reasonable for the Board to examine it and decide on it next.

2. (a) Does the fact that the claims are the starting point and the basis for assessing the patentability of an invention generally preclude a feature which is only disclosed in the description or the drawings of a patent from being read into the meaning of a granted claim, in particular if this leads to a restrictive reading of terms used in the claim.

2. (b) If the answer to question 2.a) is no: is claim interpretation the result of both reading the claims and consulting the description and drawings as a unitary process and does the claim being the starting point and the basis for assessing the patentability rule out only those interpretations which can be derived from the patent as a whole but would clearly contradict the general technical understanding of the terms used in the claim.

3. (a) When assessing compliance with Article 123(2) EPC, must a term used in a claim be assessed against all interpretations that make technical sense to the skilled reader on the basis of the claim alone.

3. (b) If the answer to question 3.a) is no: is it sufficient that only the interpretations of the subject-matter of the claim established against the background of the patent specification as a whole are directly and unambiguously derivable from the application as filed?"

In T 241/25 the patent related to an apparatus for indicating flex of a distal end of a catheter, for example, for implanting a prosthetic aortic valve in a human heart.

The board agreed with the opposition division’s conclusion that the feature of the flex activating member comprising an externally threaded portion in claim 1 of the main request extended beyond the content of the earliest application as filed. Considering the disclosure in the earliest application as filed, the board explained that, for the skilled person, it was the externally threaded surface portion of the rotatable member including the internally threaded surface portion, and not any externally threaded surface of the flex activating member, that had to cooperate with the flex indicating member in order to indicate flex. In other words, the earliest application as filed inextricably linked the externally threaded portion of the rotatable member with other claimed features. Not claiming this portion of the rotatable member amounted to a non-allowable intermediate generalisation.

The opponent also argued that claiming a pull wire in claim 1 of the main request was an unallowable intermediate generalisation because an adjustment knob and a resilient steerable section of the claimed elongated shaft had been impermissibly omitted. The board observed that merely referring to an embodiment of the original disclosure and stating that an unallowable intermediate generalisation of this embodiment had been added was not a substantiated objection. An objection to an intermediate generalisation in a claim required (i) identifying the features which were impermissibly omitted from the claim and (ii) explaining why the omission introduced added subject-matter. According to established case law this explanation needed to show that the omitted features were inextricably linked with (some of) the claimed ones according to the original disclosure. Only in this way was it possible to (i) identify the objection and (ii) understand the reasoning supporting the objection (see CLB, 11th edn., 2025, II.E.1.9.1; as well as, for instance T 1762/21, T 824/23 and T 1888/22). The board did not find the objection convincing and it concluded that the definition of a pull wire in claim 1 of the main request did not amount to an unallowable intermediate generalisation. The board explained that the omitted features were not inextricably linked to the feature that the wire is a pull wire. Whether an adjustment knob and a resilient steerable section together with the pull wire might provide further advantages to effectively steer and then extract the catheter, as the opponent argued, was of no relevance.

In addition, the opponent argued that the omission in claim 1 of the main request that the movement of the flex indicating member relative to the handle portion was to indicate an amount of flex of the distal end portion of the elongated shaft was an impermissible intermediate generalisation. The board disagreed, observing that claim 1 of the main request recited that the flex activating member caused the flex indicating member to move relative to the handle. In the claim, the fact that this movement indicated flex was implied by the definition of the flex indicating member as part of an apparatus for indicating flex. No other movement of the flex indicating member was defined. Hence, the board concluded that no intermediate generalisation was present.

The opponent raised a further objection of added subject-matter against claim 3 of the main request. The board explained that claim 3 of the main request specified that "the flex activating member (154) and the flex indicating member (156) are separate members". It was common ground that the earliest application as filed did not provide a literal basis for this feature. The board observed that to assess whether the claim comprised added subject-matter, the feature had first to be interpreted in view of the patent as a whole (T 367/20, T 873/23). In view of what was already defined in claim 1, the board understood that the term "separate" in claim 3 had to mean something different from simply distinct. The technically meaningful interpretation was that, according to claim 3, the two members in question were held at a distance from one another, for example, by means of an intermediate element. With this construction, claim 3 found no basis in the earliest application as filed.

In conclusion, the feature of the flex activating member comprising an externally threaded portion in claim 1 and the feature of the flex activating member and the flex indicating member being separate members in claim 3 of the main request extended beyond the content of the earliest application as filed. Hence, the ground for opposition in Art. 100(c) EPC prejudiced the maintenance of the patent on the basis of the main request.

In T 2488/22 the board recalled that the established criterion for assessing whether amended subject-matter extends beyond the original disclosure is the "gold standard". Regarding claim interpretation in the context of added subject-matter, the board was of the view that, notwithstanding the reference in the second sentence of the Order in G 1/24 to the specific context of assessing patentability of an invention under Art. 52 to 57 EPC, the description and drawings also had to be consulted when interpreting the claims for the purpose of assessing compliance with other requirements of the EPC. The board observed that, first, it did not seem logical to forbid the skilled reader from consulting the description and the drawings when interpreting claims in any context other than the assessment of patentability under Art. 52 to 57 EPC. Second, and more important, the claimed subject-matter had to be interpreted in a uniform and consistent manner. It could not be the case that claims were interpreted differently when assessing patentability under Art. 52 to 57 EPC on the one hand, and when assessing compliance with any of the remaining requirements of the EPC on the other (see e.g. T 177/22 or T 1473/19).

At the same time, the board noted that neither the Order nor the reasoning of G 1/24 contained any indication as to the possible outcome of consulting the description and drawings, or as to any impact such consultation might have on the interpretation of the claims. In particular, there was no basis in G 1/24 for concluding that a claim had to be interpreted in a more limited manner on the basis of features found in the embodiments of the description. The board explained that it was established case law, both before and after G 1/24, that a claim should not be interpreted on the basis of features of embodiments in the description so as to give it a meaning narrower than the wording of the claims as understood by the skilled person (see CLB, 11th edn. 2025, II.A.6.3.4). In other words, "consulting" the description and the drawings should not result in reading limitations into a claim which were not included in, or could not be derived from, the wording of the claim.

The board pointed out that the skilled person read the claims (and any other parts of the application or the patent) with a mind willing to understand. Consulting the description and the drawings could result, for example, in setting the claimed subject-matter in a particular technical context. Based on this context, the skilled person could reject interpretations of the claims that did not make technical sense. What the proprietor suggested, however, was to limit the interpretation of granted claim 1 to the embodiment described in the description and the drawings, even if the wording of the claims left room for other interpretations. The board disagreed, explaining that the very essence of assessing added subject-matter consisted in determining whether it possibly comprised embodiments that were not derivable from the description, the drawings and the claims of the application as originally filed. The proprietor's argument led to a tautology: if an amended claim was interpreted so that its subject-matter was limited to what could be derived from the application as originally filed, the comparison of this claim to the content of the application as originally filed would inevitably lead to the conclusion that the claimed subject-matter did not extend beyond the content of the application as originally filed. The board observed that, in such a case, both Art. 123(2) and 100(c) EPC would be deprived of any meaning or purpose.

The board concluded that the skilled person, having consulted the description and the drawings, would interpret granted claim 1 based on what could be derived from the wording of the claim, excluding any interpretation that would not make sense in the technical context of the application/patent, but including all other technically reasonable interpretations encompassed by the wording of the claim.

In T 1052/23 the board explained that an amended claim the wording of which was not literally included in the (earlier) application as originally filed, as in the case in hand, must generally be interpreted by using a mind willing to understand and by consulting the description and the drawings, prior to assessing whether the claimed subject-matter can be directly and unambiguously derived from the (earlier) application as filed. The board agreed with the two-step approach applied in T 2048/22 and T 873/23.

The board did not agree with the patent proprietor's narrower interpretation of claim 1, according to which a "selection" or "switching" step between two types of shapes of the printing features of the same printing plate was included. The board observed that, as held by many boards following G 1/24, the consultation of the description did not mean that restrictive features that were contained in specific embodiments in the description could limit the wording of the claims, see for example T 1232/23, T 1465/23, T 1846/23, T 1069/23, T 1351/23, T 412/24, T 2034/23 and T 1402/24. The board was of the view that also the more general statement in paragraph [0008] of the patent relating to the background of the invention and merely pointing to an advantageous method and apparatus would not prompt the skilled person to a narrower interpretation of claim 1.

The board consulted the description when interpreting claim 1 and interpreted it in a broad, technically reasonable manner. According to the board’s interpretation, claim 1 did not include the aspect of controlling the top shapes of the printing features on a same printing plate by selecting the first or second illumination intensity, so that the claim was not restricted accordingly. Omitting this essential aspect, which was included in the relevant independent claims of the parent application and presented throughout its description as a core feature of the invention, led to a broadening of the claim which therefore encompassed subject-matter that was not originally disclosed in the parent application as originally filed. Consequently, the omission amounted to an unallowable amendment and to an extension beyond the content of the parent application as filed.

With respect to dependent claims 5 and 6, the board was of the view that the features of said dependent claims were not disclosed in the claims of the parent application as originally filed. They were taken from the description, but from a specific technical context. Claim 5 and 6 as granted constituted unallowable intermediate generalisations of specific examples provided in the parent application as originally filed.

Therefore, the board concluded that the subject-matter of claims 1, 5 and 6 extended beyond the content of the earlier application as filed so that the ground for opposition under Art. 100(c) EPC prejudiced the maintenance of the opposed patent as granted.