New referral G 1/26 on claim interpretation

A new referral to the Enlarged Board of Appeal (EBoA) of the EPO, relating to claim interpretation is now pending. Also this referral relates to decision G1/24 (see our news item on decision G1/24), as according to this decision, the description is to always be used to interpret the claims. The first referred question relates to the possibility to refer a question to the EBoA.

Basis and grounds for the referral

The decision at the base of this referral, T873/24, relates to a coated strip of steel. The content of titanium, but not nitrogen, in the strip is given in weight percentages. Furthermore, the ratio titanium-nitrogen is given.

The patent under opposition is based on a second generation divisional application. The applications as filed of the earlier generations indicate, in their claims, that this ratio is based on weight. This is also mentioned in the application as filed of this divisional, in a dependent claim.

However, in the granted claim it is not specified what the ratio is based on. According to the opposition division, the ratio cannot be based on anything else than the weight percentages, when taking into account the claim as a whole, as well as the description. The patetee agrees with this interpretation, the opponent does not.

According to the opponent, the fact that the claim does not contain any information as to what the ratio is based on, is a deliberate broadening of the scope of protection by the patentee. The Board of Appeal (BoA) agrees. According to the BoA, the arguments by the opposition division and the patentee, that the ratio can only be based on weight, are not convincing. The patentee also agrued that the alleged broadening would be supported by the application as filed, but also this argument did not convince the BoA.

Decisions by the boards after G1/24

The Board goes through decisions taken after G1/24, and concludes that the interpretation of this decision varies. In a small number of decisions, the description is only used for defining the skilled person’s knowledge, while in a larger number of decisions it has been concluded that it is not possible to extend or limit the scope of protection of a claim without such feature(s) being present in the claim. It has not been deemed acceptable to interprete a feature of the claim in a broad manner, based on the description, when the feature itself is both clear and technically credible for the skilled person.

The Board also found a third approach to decision G1/24, which they call holistic approach. In this approach, the patent as a whole is used to determine how a skilled person would understand the terms used in the claims. In this approach, the claims are read and the description and drawing consulted in a uniform manner.

The Board concludes that based on the two first interpretations, the claim does extend beyond the application as filed, while application of the third approach would lead to a conclusion of no added subject-matter. Therefore, the BoA can refer the question to EBoA, since the decisions of the Boards diverge.

This referral has an impact on numerous proceedings, but no proceedings are interrupted because of this referral.

Questions asked

The new referral asks the following questions.

1. May a decisionbe 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?

Related links:

G1/26: https://www.epo.org/en/case-law-appeals/communications/referral-enlarged-board-appeal-g-126-coated-steel-strips

T873/24: https://www.epo.org/en/boards-of-appeal/decisions/t240873ex1

G1/24: https://www.epo.org/en/boards-of-appeal/decisions/g240001ep1?term=%22G%200001%5C%2F24%22%20

News item on Decision G1/24: https://www.laineip.fi/en/decision-g1-24-the-description-is-always-to-be-used-to-interpret-the-claims/