Following on from our previous article on the appeal case T439/22, the European Patent Office (EPO) Board of Appeal (“the Board”) has now confirmed a referral to the Enlarged Board of Appeal (“the Enlarged Board”) on if, and under what circumstances, the description of a patent specification can be used to interpret the language of a claim.

As discussed in our previous article on the topic, the outcome of the present case depends on if the description should be used to interpret terms in the claims that are at face value deemed clear, and the case therefore hangs on how the language of the claim is interpreted.

The Board has now referred the following questions to the Enlarged Board: 

1. Is Article 69 (1), second sentence EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC to be applied on the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC?

2. 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?

3. May a definition or similar information on a term used in the claims which is explicitly given in the description be disregarded when interpreting the claims to assess patentability and, if so, under what conditions?

In their interlocutory decision dated 24 June 2024, the Board identifies a divergence in the case law of the boards with respect to the use of the description to interpret claim features in the assessment of patentability, and whether the description can only be used to interpret claim features when the claims as read in isolation are found to be unclear or ambiguous. The Board has therefore referred the above-mentioned questions to ensure the uniform application of the law in view of this divergence in case law.

In addition, the Board identifies a difference in approach to claim interpretation between the EPO and national/multinational courts. The Board considers that this is a point of law of fundamental importance that requires a decision of the Enlarged Board, due to it being an important principle that claims should be interpreted in a consistent manner through both the procedures before the EPO and post-grant proceedings before national/multinational courts.

This referral therefore promises to clarify the approach taken by the EPO towards claim interpretation, which will have important consequences towards European patent practice. We await confirmation on whether the Enlarged Board will accept the referral as admissible and, if it does accept the referral, the eventual decision of the Enlarged Board.

Read previous article here: Claim interpretation using the description: Potential referral to the EPO Enlarged Board of Appeal (secerna.co.uk)