G1/24: Enlarged Board of Appeal harmonises EPO and UPC legislation

In its highly regarded decision G1/24, the Enlarged Board of Appeal favoured the practice of national courts and the UPC over previously established Board of Appeal case law. In doing so, it brought the EPO into line with civil courts on assessing patentability.

The ruling stems from a referral by Technical Board of Appeal 3.2.01 in T 439/22 in opposition proceedings over EP 3 076 804. The patent, owned by Philip Morris, protects a ‘heated aerosol-generating article with thermal spreading wrap’, used for vaping. Judges rejected an opposition filed by Chinese company Yunnan Tobacco in late 2021.

Questions for clarification

In the appeal proceedings, the Board of Appeal submitted the following questions to the EBA in summer 2024:

1. 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.
2. 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.
3. 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.

Regarding the first question, the EBoA stated that Article 69 EPC and Article 1 of the Protocol, being only concerned with infringement actions, could not serve as legal basis for claim interpretation when assessing patentability. Neither did Article 84 EPC serve as an alternative, since it does not provide guidance on how to interpret claims.

Contrary case law

Instead, the EBA referred to existing case law which applied these provisions analogously to examining patentability, from which applicable principles of claim interpretation could be extracted. According to this case law, the starting point and basis for assessing patentability under Articles 52 to 57 EPC is the claims.

On the second question, the EBA ruled that the description and any drawings must always be consulted when interpreting claims, not just in cases of unclarity or ambiguity. This rejected existing BoA case law that saw no need to refer to descriptions and drawings when interpreting a clear claim. The EBA found this contrary to Article 69 EPC principles and national court and UPC practice.

The decision reads: “The Enlarged Board finds it a most unattractive proposition that the EPO deliberately adopt a contrary practice to that of the tribunals that are downstream of its patents. On this point, the Enlarged Board agrees with the harmonisation philosophy behind the EPC.”

Thus the EBA underlines the importance of uniformly applying claim interpretation principles in granting patents as well as revocation and infringement proceedings.

Third question unanswered

The EBA deemed the third question inadmissible, considering it encompassed by question two. This decision sparked debate on LinkedIn and elsewhere, with many displeased that the last question remained unanswered.

Stefan Müller of patent attorney firm 2SPL wrote, “This is a very relevant issue in practice. Often, an examiner interprets a claim term in a particular way. You point to a clear definition in the description, but the examiner replies, ‘If this definition is not in the claim itself, I will not interpret the term as you propose’.”

Rose Hughes, patent attorney at Evolve and IPKat contributor, also regrets the EBoA’s choice not to answer the third question. She argues that, while the EBA found the description and drawings should always be consulted when interpreting claims, there is an important nuance in the final order’s language.

Hughes writes, “The EBA does not stipulate in its decision the descriptions should always be used to interpret the claims. The EBA instead orders that the description should always be consulted to interpret the claims.” However, she understands that consulting the description does not necessarily mean using it to override otherwise clear claim language. “Question 3 in G1/24 may have provided some clarity on this issue”, she writes.

Change of representative

While UK patent attorney firm Reddie & Grose filed the patent application, Philip Morris relied on an HGF team for the opposition proceedings.

Yunnan Tobacco filed the opposition with assistance from EP&C. The Dutch outfit boasts expertise in chemistry, pharma and biotechnology as well as mechanics and mechanical engineering. Patent attorney and partner Marcel Kortekaas, based in The Hague, led the case.