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G 1/24 – all clear when it comes to clarity of claims?

T. Körner (CH)

Short summary of facts and decision

The referral under Art 112(1) EPC to the Enlarged Board of Appeal (EBoA) of three questions on points of law arose from an appeal (T 0439/22) against a decision in opposition proceedings against European patent No. 3 076 804 (application No. 14806330. 8), in which the referring Technical Board of Appeal (TBA) had to decide whether novelty of claim 1 had been correctly assessed in the opposition proceedingsT 0439/22, interlocutory decision of 24 June 24, item I of the Summary of Facts and Submissions, last paragraph. The central question for the decisionibid., item 1.4 of the Reasons for the Decision was whether a (technical) term (“gathered sheet”) in claim 1 should be understood according to its clear and agreed meaning which was widely adopted in the relevant industryibid., item 1.1 of the Reasons for the Decision, 5th paragraph (in which case claim 1 would be novel over prior art document D1) or whether it should be interpreted in the light of the description, which contains an explicit and broader definition of the same term in the technical context of the patentibid., item 1.3 of the Reasons for the Decision, 1st paragraph (in which case claim 1 would lack novelty over D1). Following extensive considerations, the following questions were referred to the EBoA:

1. Is Article 69 (1), second sentence EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC to be applied to 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?

The EBoA gave the following answer to both Questions 1 and 2:

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.

Question 3 was considered inadmissible and received no explicit answer.

Comments

re Questions 1 and 2

Question 1 is formulated in such a way that it may only be answered with YES or NO. Although the answer given under paragraph (para) 9 of the ReasonsAll references to “para” from now on are references to the paragraphs from the Reasons for the Decision in G 1/24. is “formally” NO, the decision given in response to Question 2 is also presented as the final answer to Question 1 in the Order of the decision (cf. para 21).

The wording used by the Order differs slightly from the corresponding wording of Article 69(1) EPC, second sentence. Whereas the latter requires that “the description and drawings shall be used to interpret the claims”, the order commands that “the description and drawings shall always be consulted to interpret the claims” (emphasis added).

One may thus be tempted to draw the conclusion that the difference in wording may indicate that, while the description shall always be consulted, it may nevertheless be at least partially disregarded. In the authors opinion, it is questionable that it was the EBoA’s intention to give such an impression for several reasons: First, the wording in the Order corresponds literally to the wording in Question 2 of the referral. Second, the decision gives no indication whatsoever that disregarding description and drawings may be an option and what conditions would need to be fulfilled for being allowed to do so. Last but not least, it would lead to contradictions in the EBoA’s reasoning for not answering Question 3, which will be discussed below.

re Question 3

According to established case law, claims lack clarity within the meaning of Art 84 EPC if the exact distinctions which delimit the scope of protection cannot be learnt from them (T 165/84, T 6/01)Case Law of the Boards of Appeal, 11th edition, July 2025 – Chapter II.A.3.1. While the referral may thus be considered to relate to a clarity issue, the fundamental problem is an inconsistency between claim 1 and the description, wherein the description provides a definition for a term from claim 1 which deviates from said term’s clear and agreed, widely adopted meaning. Of the three questions referred to the EBoA, only Question 3 specifically addresses this particular problem.

Nevertheless, the EBoA evaded providing an answer to Question 3, which it considered to be encompassed in Question 2, and inadmissible given that an answer was not necessary for the referring TBA to decide on the present case in view of the answer given to Question 2. This is all the more surprising insofar as one may wonder whether the answer to Question 2 did not also render obsolete the need to answer Question 1 for the decision to be made by the referring TBA.

While the Order requires the description and drawings (author’s note: in their entirety) to always be consulted when interpreting the claims for the purpose of assessing patentability, this does not necessarily seem to preclude (cf. the considerations above) that at least parts of the description, in particular an (isolated) explicit definition or similar information relating to a term used in the claims, may possibly be disregarded when interpreting the claims.

If this was permissible, clarity with respect to conditions for doing so would be essential to avoid diverging case law and unequal treatment of parties to proceedings and/or stakeholders. The absence of such conditions could be considered to imply that (at least parts of) the description and drawings could be ignored at will. This would contradict both lines of case law as identified under paras 12 and 15, would be irreconcilable with the considerations under para 16 and, last but not least, would be likely to contradict the principle of equal treatmentCase Law of the Boards of Appeal, 11th edition, July 2025 – Chapter IV.C.6.1.

As consequence of the EBoA not answering Question 3, no indication is given under what conditions (parts of) the description and drawings may possibly be ignored – neither in the form of generic considerations nor in specific relation to the case at hand. Question 3 explicitly asked for such conditions. By stating that an answer to Question 3 was not necessary for the referring TBA to reach a decision in the case before it, the EBoA implies that such conditions do not exist – if they did, the referring TBA would need to know them to comprehensively decide the case.

It may further be concluded that a definition or similar information relating to a term used in the claims which is explicitly given in the description may under no circumstances be disregarded when interpreting the claims to assess patentability – despite the fact that such an approach may lead to peculiar results, at least in cases of unusual, contradictory, incorrect, or even misleading definitions.

As the EBoA considered Question 3 to be encompassed in Question 2, it follows in turn that there is no room for consulting but nevertheless disregarding the description and drawings – not even parts of them.

Considerations regarding assessment of clarity

The decision of the EBA provides a (confirmative) answer to the question of whether the description and drawings of a patent must always be considered to interpret the claims when assessing patentability. Although only Question 1 explicitly refers to patentability under Articles 52 to 57 EPC, the order, the headnote and para 4 seem to leave no doubt that the decision is limited to the interpretation of claims under these Articles.

The question (which has been answered inconsistently in the case lawibid. – Chapter II.A.6.3.5) of how clarity of claims pursuant to Art. 84 EPC is to be determined or examined is not touched upon in the referred questions or anywhere else in the referral. An individual answer to said question is not required, given the Order requires the description and drawings to always be considered when interpreting claims for assessing patentability – irrespective of whether the claims are found clear or not from the perspective of a person skilled in the art. Nevertheless, para 17 addresses the question of the clarity and unambiguity of claims and states that “the finding that the wording of a claim is clear […] is an act of interpretation – and NOT a preliminary step to such an act of interpretation.” Para 20 quotes points 87, 109 (and 135 on unanswered Question 3) of the comments of the President of the EPO, all of which address diverging claim interpretations due to insufficient support by or inconsistencies with the description, and concludes that “the correct response to any unclarity [under Article 84 EPC] in a claim is amendment” (emphasis added).

Somewhat disappointingly, however, the decision does not address in any way whether the description and drawings must be taken into account when assessing the clarity of the claims under Article 84 EPC.

There are only two possible answers to this question: YES or NO.

Unfortunately, both answers seem to lead to contradictions with the reasoning in the decision discussed here.

A negative answer prima facie contradicts the considerations in para 17, according to which “the finding that the wording of a claim is clear […] is an act of interpretation”. This contradiction could be resolved by assuming the existence of two different approaches to claim interpretation, each with different rules: a first approach (mentioned exclusively in para 17) for assessing the clarity of claims and a second, different approach (referred to throughout the rest of the text of G 1/24) for assessing patentability. In any case, it would then be difficult to understand to what extent the first approach could be regarded as anything other than “a preliminary stage to such an act of interpretation,” as is ruled out by the reasoning in para 17.

If the answer is YES – i.e. the description and claims are always referred to when assessing the clarity of the claims under Article 84 EPC – the question arises as to whether there is still any room for a (preliminary) assessment of the clarity of the claims as such (or, as stated in the decision, “when considered in isolation”), as called for in the comments of the President of the EPO (in particular in points 87 “to amend the claims so that the meaning is as clear as possible from the claim wording alone” and 135 “… so that their meaning is clear from the wording of the claims alone”), to which para 20 explicitly refers. If this were to be affirmed, rigorous criteria for such an assessment “in isolation” would need to be defined in detail. Should the description and, where applicable, drawings also be taken into account in this assessment, albeit to a limited degree? If yes, what are the exact limitations? If not, how may the technical field and, where applicable, the relevant skilled person be determined?

Even if the description and drawings are only to be referred to when claims are found unclear or ambiguous (I would leave out “or ambiguous), rigorous criteria as mentioned above would be needed for a preliminary stage assessment of this question.

In both cases, any requirement to amend claims (ultimately) found to be clear in the light of the description and drawings (and thus in accordance with the criteria applied in all further proceedings before the EPO and, where applicable, in proceedings before downstream national or international courts), solely for the purpose of making them as clear as possible based on their wording alone, would then at least seem to contradict the principle of procedural economy. More seriously, applicants and/or patent proprietors might be forced to accept unnecessary but significant risks with regard to their property rights as a result of amendments deemed necessary by the Examining Division in the examination procedure, particularly in view of the EPO’s generally very strict interpretation of Art. 123 (2) EPC in conjunction with the potentially inescapable trap posed by Art. 123(3) EPC. Furthermore, it would be questionable, at the very least, whether there is any legal basis for the Examining Division to insist on such amendments (Article 84 EPC does not refer to the claims as such, and certainly does not require that the claims be as clear as possible); if not, this could be considered arbitrary. Finally, insisting on such amendments might, in a significant number of cases, lead to a violation of the requirement for conciseness of the claims, which is also contained in Art. 84 EPC.

Conclusions:

  1. Article 69 (1), second sentence EPC and Article l of the Protocol on the Interpretation of Article 69 EPC are not applicable to the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC (cf. para 9) – despite the fact that by relating its answer that the description and drawings shall always be consulted when assessing patentability of an invention under Articles 52 to 57 EPC also to Question 1, the EBoA prima facie creates the opposite impression.
  2. By considering Question 3 to be encompassed within Question 2, the EBoA seems to imply that a definition of or similar information on a term used in the claims which is explicitly given in the description shall always be considered. No indication is given of any conditions and/or circumstances under which such a definition or similar information may be disregarded.
  3. By the same considerations, the EBoA seems to rule out that the description and drawings – and possibly even any parts thereof – may be disregarded when interpreting the claims to assess patentability.
  4. While the questions and answer relate to interpretation of claims when assessing patentability under Articles 52 to 57 EPC, also touches upon the issue of claim interpretation in the context of clarity under Art.84 EPC.
  5. The decision emphasizes, through reference to the Comments of the President of the EPO, the importance of the clarity of the claims based on their wording alone, and endorses enforcement of corresponding requirements in examination proceedings – not only in case of inconsistencies between claims and description, but in response to any unclarity in a claim. Such requirement, however, appears to be in contradiction with the principles of claim interpretation as established by the EBoA in its decision, irrespective of whether or not the description and drawings shall (always) be consulted when assessing the clarity of the claims.

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