The referral concerns the following three questions:

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?

Article 69(1) EPC (Extent of protection) is located in Chapter III (Effects of the European patent and the European patent application) of the articles of the European Patent Convention (EPC) and states that “the extent of the protection conferred by a European patent or a European patent application shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims.”

The legislator of the EPC 1973 and the revised EPC 2000 foresaw separate provisions of Substantive Patent Law: Articles 52-57 EPC in Chapter I (Patentability) and Articles 63-70 EPC in said Chapter III (Effects of the European patent and the European patent application).

This separation has led to somewhat different measures to be applied during examination of the European patent application before the EPO and later during litigation before national courts in the contracting states, where national parts of the granted European patent are, according to Article 2 EPC, “subject to the same conditions as a national patent granted by” the contracting states.

This dichotomy may enable the applicant of a patent application to argue a narrower scope of the claim in order to obtain a patent, and later, as the proprietor of the granted patent, to argue a larger scope of protection in order to enforce the patent against an infringer.

Famously, Lord Justice Jacob in the Supreme Court of the United Kingdom final appeal relating to UK part of European patent EP0455750 said that “Professor Mario Franzosi likens a patentee to an Angora cat: When validity is challenged, the patentee says his [sic] patent is very small: the cat with its fur smoothed down, cuddly and sleepy. But when the patentee goes on the attack, the fur bristles, the cat is twice the size with teeth bared and eyes ablaze” (European Central Bank v Document Security Systems [2008] EWCA Civ 192, [5].)

Whereas the vivid analogy of the Angora cat was originally used in national proceedings regarding patent infringement and revocation before a court of a contracting state, it is comprehensible to extend the concept of a common scope of protection to the examination to the patent application, for the sake of legal certainty.

However, the EPC was conceived and agreed upon after years of intense negotiations during a diplomatic conference of 03 October 1973 and revised once on 29 November 2000. As legislator, the contracting states clearly intended to separate the provisions governing patentability and the provisions governing the effects of the European patent and the European patent application.

The Enlarged Board of Appeal has preliminary recognised the interest in uniform application of the principles of claim interpretation both in patent grant proceedings before the administrative departments of the EPO and the Boards of Appeal, and also in post-grant revocation and infringement proceedings before the courts of the contracting states and the Unified Patent Court (UPC).

The oral proceedings ended at 14:27 CET, and the Enlarged Board of Appeal will issue a written decision in due course.

Whereas Article 69 EPC prescribes that the description and drawings shall (“must”) be used to interpret the claims, in contrast, “[consulting] the description and figures … when interpreting the claims to assess patentability” seems less stringent and more reasonable.

Thus, it may be expected that the Enlarged Board of Appeal follows the legislator’s intention, and it is hoped that Article 69(1) EPC, second sentence EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC, are not to be applied on the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC, as this would strengthen trust in the European patent system as such.

It appears that questions 2 and 3 that are not expressively linked to Article 69 EPC allow the Enlarged Board of Appeal to provide guidance, without bending the EPC.

Useful links

• EPO news, Oral proceedings in case G1/24 ("Heated aerosol") before the Enlarged Board of Appeal: https://dycip.com/epo-news-oral-proceedings-g124
• EPO decision T 0439/22 (Gathered sheet) 24-06-2024: https://dycip.com/epo-t043922
• EPO European Patent Register EP3076804, HEATED AEROSOL GENERATING ARTICLE WITH THERMAL SPREADING WRAP: https://dycip.com/epo-ep3076804
• England and Wales Court of Appeal (Civil Division) Decisions, [2008] EWCA Civ 192: https://dycip.com/2008-ewca-civ-192
• European Central Bank v Document Security Systems Inc: https://dycip.com/central-bank-document-security