Application of G 1/24 by the Boards of Appeal of the EPO
G 1/24 has been issued on 18.06.2025. There are not a lot of decisions in which G 1/24 and the principles which it established are discussed, but it appears possible to derive some conclusions from those decisions.
This decision follows an appeal in opposition.
In Reasons 3.4.2, the board noted that, according to established case law, it is not permissible to read into the description any additional features implied by the problem to be solved. This has not changed as a result of G 1/24, which expressly refers to existing case law on the interpretation of claims in Reasons 10 of the decision.
G 1/24 can also not be used as a justification for the late filing of requests under Art 13(2) RPBA, cf. Reasons 4.4.1.
In Reasons 4.4.2, the board disagreed with the proprietor that the independent claim as granted must now be interpreted more narrowly in light of the description, with the result that claim1 is to be held as novel vis-à-vis the disclosure of D1.
This decision follows an appeal in opposition.
In Reasons 2.3, last two paragraphs, the board held that in accordance with G 1/24, , it saw no reason to deviate from the wording of the claim and cut down its scope by implying into it additional features which appear only in the description of a specific embodiment. This is particularly true given that the broader/unrestricted interpretation of the wording of the claim also makes technical sense and is also encompassed by the description as a whole.
Therefore, even after consulting the description and the drawings, and taking into consideration the embodiment of a dimension shown in Figure 4, the skilled person would in their act of interpretation of the language of the claim not find that feature X of claim 1 is restricted to the specific example disclosed in Figure 4 of the patent.
The lack of novelty over D1/D1t=JP 2005-334626, not mentioned in the ESR, was thus confirmed.
This decision follows an appeal in opposition.
In Reasons 2.4, when applying G 1/24, the board made clear that the description does not allow to give claims a narrower meaning and cannot be re-interpreted or understood in a more limited way in the light of the specific embodiments of the description.
The board also reminded that considerations of the EBA in G decisions are generally applicable, cf. G 1/19.
This decision follows the refusal of the application.
In Reasons 2.10, the board held that, G 1/24 did not define what it means in individual cases to consult the description and the drawings, but referred in this respect to the case law of the boards, cf. G 1/24, Reasons 1.
G 1/24 does not even expressly require that the definition of a term from the description must necessarily be used for the interpretation of a claim. The relevant question 3 was not answered as inadmissible, and it follows from the answer to question 2 that such a definition cannot be disregarded, since it must be taken into account as part of the description and the drawings.
In the present case, the board referred to the description and drawings in accordance with G 1/24 and explained why, in its view, this reference would not justify a narrower interpretation of the claim wording.
In particular, it took into account that the application does not provide a definition (‘or similar information’) for the disputed terms, regardless of whether or under what circumstances such a definition would then limit the claimed subject-matter.
The present application only gives examples of additional functions, but it cannot be deduced from this how “tasks” and “additional functions” would differ in concrete and fundamental terms from those of D5. Hence, claim 1 of the MR lacked novelty.
This decision follows an appeal in opposition.
In Reasons 1.5.4, the board held that, although the description and figures must be consulted when interpreting the features of the claims, cf. G 1/24, headnote, the description of a specific embodiment may be disregarded in accordance with the principles developed in case law with particular reference to T 2684/17, T 1871/09, T 1473/19, T 1465/23, T 161/24, and T 1999/23, cf. Case Law of the Boards of Appeal, 10th edition, II.A.6.3.4, and cannot, as a rule, be used to restrict the interpretation of an object claimed in more general terms.
This decision follows an appeal in opposition.
In his reply to the appeal, the proprietor referred to G 1/24, and argued that the subject-matter of the patent extends to what, after examination of the description and the drawings, appears to be the subject-matter for which the proprietor seeks protection, i.e. the will of the proprietor.
The board held that the intermediate generalisation was not allowable. This conclusion is not altered by the proprietor’s reference to G 1/24, Reasons 1.5.4. For the board, the description and claims as filed already express “the will” for the very reason that they were drafted by the applicant, and thus, there would not be any need for further speculation on the applicant’s the proprietor’s intentions, i.e. on what else might be the subject-matter to be protected.
Assuming arguendo that “the will” really was to be considered for examining the allowability of an amendment, this concept would identify multiple different wills in the present case.
The fact that in paragraphs [0040] and [0041] of the originally filed description some of the features are introduced by “may”, did not allow an arbitrary combination of features. The notion of “directly and unambiguously derivable” has not been superseded by G 1/24.
The Agfa/Gucci case before the UPC
The LD Hamburg – Order UPC_CFI_278/2023, found that the proprietor could not rely in infringement proceedings on parts of the description which were not any longer covered by the granted claim.
The granted claim had been limited, in order to avoid a novelty objection against the originally filed independent claim. The description had however not been adapted to exclude an embodiment originally covered, but removed from the scope of protection of the granted claim. .
This way of interpreting the claim by the UPC-LD Hamburg, is fully in accordance with G 1/24.
Conclusions to be drawn from the recent Board of Appeal decisions applying G 1/24 and of the UPC
It appears that applicants/proprietors want to use G 1/24 and to refer to the description, in order to read in a claim a different interpretation than that directly and unambiguously derivable by a skilled person from a claimed feature.
The way the boards interpret G 1/24, by referring to existing case law, as suggested in G 1/24, is nipping in the bud all those efforts of applicants/proprietors.
In other words, it is manifest after G 1/24, that the patent cannot be its own dictionary. This is a position which is clearly in contradiction with that of the German Federal Court (BGH). It will be interesting to see whether the UPC will continue to follow the line of the EPO or that of the BGH.
The notion of “directly and unambiguously derivable” has thus not been superseded by G 1/24. Any other interpretation of a claim would be contrary to the criterion of a direct and unambiguous disclosure, i.e. to the “gold standard” as defined in G 2/10.
Possible further consequences
Working within first instance divisions
One direct consequence is that G 1/24 will force EDs and ODs to look at the description before carrying out a documentary search and/or examining an application or an opposition, irrespective of whether a claim is clear as such.
In T 933/23, Reasons 3.2. in reference to G 1/24, Reasons 20, the board praised the ED’s scrutiny and diligence. The ED examined carefully whether the independent claim at stake contained all the essential features of the invention and did not merely formulate the subject-matter for which protection is sought in terms of the effects or problem to be solved (the so-called “result-to-be-achieved”). It also checked whether said claim was properly supported by the description.
It can be expected that the EPO Guidelines for Examination will be amended in due time, but it will not change fundamentally the approach of first instance divisions..
Guidelines B-III, 3.2 have not been amended since the early days of the EPO. According to this part of the Guidelines: “The search covers what appear to be the invention’s essential features and is adapted to take account of any changes in the objective technical problem solved by the invention that may later arise in view of the prior art found so far”.
In case the interpretation of a claimed feature, clear as such for a skilled person, receives a limiting interpretation in the description, the search and examination will be based on the broader interpretation given in the claim.
In case the interpretation of a claimed feature, clear as such for a skilled person, receives a broadening interpretation in the description, the search and examination will be based on the broader interpretation given in the description.
Following G 1/24, it simply means that the search has to be commensurate with the interpretation of the claims given in the description, but this will not mean that any inconsistency between claims and description, when it comes to interpreting claims, will be read into the claim. Such an inconsistency will have to be removed before grant or after maintenance in amended form.
Adaptation of the description to the claims
Although it is not part of the present topic, G 1/24 might have an influence on the decision to come in case G 1/25. In view of diverging case of the boards in this matter, in T 0697/22, Board 3.3.02, referred a series of questions relating to the adaptation of the description to the claims to the EBA.
It does not appear acceptable that
- on the one hand, a claim appears limited in scope for a skilled reader through its wording, but the description allows a much broader interpretation, and
- on the other hand, a claim appears broad in scope for a skilled reader through its wording, but the description allows a much more limited interpretation.
When a feature in a claim is clear as such for the skilled person, it appears contrary to the notion of primacy of the claims, that third parties have to dig deep in the description, in order to check, whether a a feature, clear as such for the skilled person, can receive a different interpretation in the description.
Any inconsistency between claims and description has thus to be corrected before grant or before maintenance of a patent in amended form.
Some adaptation of the description to the claims will always be necessary, for instance
- when some original embodiments do not any longer fall under the granted claims. Those embodiments do not have necessarily to be deleted, but will have to be marked appropriately;
- when the independent claim is limited with features from a dependent claim or with features from the description. In such a situation, the optional character of the corresponding features ought to be deleted.
It is therefore possible to say that G 1/24 has paved the way for G 1/25.
It is only with claims and description aligned with each other, that a common interpretation of claims before and after grant will be achieved.
This will however not hinder national courts and the UPC, to apply Art 69 and Art 1 the Protocol on interpretation of Art 69 EPC, to decide infringement, be it directly or indirecttly, by equivalence or contributory infrigement.
A correct alignment of claims and description will also avoid nurturing Angora cats.
A good example of what can happen is description and claims are not aligned is to be seen in case of EP 3 388 490 B1 before the UPC (Agfa/Gucci),see above. This decision has been quoted in T 0697/22, the referring decision in G 1/25.
Comments
Although lots of amicus curiae in G 1/24 wanted actually that the interpretation of the claims given in the description overrules the clear meaning for skilled person of a claimed feature, those people might be disappointed.
It appears to the contrary that the boards will not give up their usual way of interpreting claims and maintain the primacy of the claims.
It is to be noted that in G 1/24 it has not decided that a limiting or a broadening statement in the description should be substituted to the clear meaning for a skilled person of a claimed feature. In other words, G 1/24 has clearly not decided the patent can be taken as its own dictionary.
In lots of amicus curiae for G 1/24 this position was brought forward, directly or indirectly, as this position is often seen in decisions of the German Federal Court (BGH).
It should be reminded that decisions from national courts or from the UPC are not binding to the boards of appeal of the EPO, Conversely, the boards of appeal of the EPO cannot impose their views on national courts or on the UPC. See for instance T 722/24, commented in this blog.
If an applicant/proprietor wants to have a more limited or a broader interpretation of a claimed feature, he can bring the more limited or broadened interpretation from the description into the independent claim.
Applying G 1/24 will thus not give raise to any loss of scope of protection, it will just avoid third parties having to dig deep in the description to see what interpretation the applicant/proprietor wanted to give a claimed feature.
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