In Reasons 11-13 of G 1/24, the EBA referred to decisions T 2684/17 Reasons 2.1.4 and T 1871/09 Reason 3.1, Reason 3.3.3, T 1473/19 Reasons 3.1 to 3.15 and 3.16 to 3.16.2, relating to the manner of interpreting claims in the case law. Further decisions on the interpretation of claims can also be found in CLBA, 11th edition,2025, II.A.6.3.4.
When looking at the decisions following G 1/24, we can distinguish between those dealing with topics directly linked with assessment of the patentability of claims under Art 52-57, and those not linked with the assessment under Art 52-57, like Art 123(2) or Art 84.
We will concentrate in this blog post to decisions relating to the assessment of the patentability of claims under Art 52-57.
No restrictive interpretation of the claims vs. description
The following decisions applying G 1/24, consider that it is not correct to read into the claims limitations that are not present in its wording on the basis of the description:
T 356/23, Reasons 4, T 981/23, Reasons 2.2.3, T 1069/23, Reasons 2.3.1, T 1232/23, Reasons 2.10.3, T 1351/23, Reasons 3.2.2, T 1465/23, Reasons 2.4, T 1819/23, Reasons 3.3, T 1846/23, Reasons 1.5.4,T 1999/23, Reasons 5.9, T 2027/23, Reasons 3.5.4, T 2034/23, Reasons 3.6.2,T 161/24, Reasons 4.5.2, T 412/24, Reasons 3.1.1, T 1402/24, Reasons 2.5.2.
In T 2048/22, Reasons 1.2, consulting the description led the board to consider that pores and perforations indicate the same entity.
In T 2027/23, the board identified three major takeaways of G 1/24:
– First, the wording of the claims forms the “basis” for their interpretation and, for the purpose of interpreting the claims, the description and the drawings should always be “consulted” or “referred to”. G 1/24 is, however, silent as to the very purpose of such “consultation” or “reference”.
In particular, it cannot be inferred from this decision whether the description and the drawings should be “consulted” for the purpose of, for example, deriving “explanatory aids” to claim interpretation (see e.g. UPC_CoA_335/2023, second headnote), confirming the ordinary meaning of a claim feature, determining the function or the purpose of a claim feature, or simply defining the technically skilled reader of a claim, see e.g. T 1924/20, Reasons 2.7), etc.
– Second, discrepancies in claim interpretation practice between national courts, the UPC and the Boards of Appeal are undesirable and should thus be avoided.
– Third, it is up to a patentee to remedy discrepancies between the description and the claims. In other words, patentees are the masters of their fate.
This led the board in T 2027/22 to come to the conclusion in the catchword that, it is not the task of the BA to reach alignment of claims and description by way of interpretative somersaults.
Taking into account a broadening interpretation of the claims in the description
In T 1849/23, Reasons 1.3, the board held that taking into account the description, the claim must be construed in a broader manner, which led to the conclusion that claim 1 as granted lacked N over D4=GB 2 445 649.
In T 439/22, the board held that the term “gathered” in the claim found in paragraph [0035] a broader interpretation, which led to the conclusion that claim 1 as granted lacked N over D1=EP 2 368 449.
The problem with T 439/22
How is “consulted” in G 1/24 to be interpreted
In reasons 2.3 and Catchword 1, the board held that, in interpreting the language used in a claim, “consulting”, “referring to”, “using” and “taking into account” the description and figures are synonyms for the act of deriving the necessary information from the patent as a whole to understand which meaning a person skilled in the art would attribute to the terms used in the claim.
G 1/24 requires a holistic approach
In reasons 2.4 and Catchword 2, the board held that, claim interpretation is the result of both reading the claims and consulting the description and drawings as a unitary process. It considered therefore that G 1/24 provides a holistic approach to the interpretation of the claims.
Broadening and limiting aspects have to be read into the claim
In Reasons 3.4 and 6 and catchword 3, the board concluded that, a skilled person reading the claim in the context of the description and figures will try to take a definition found in the description at face value.
As long as the definition is technically reasonable and complies with the overall teaching of the claims, description and figures, the skilled person will read terms in the claim in the sense of the definition, taking into account both the broadening and limiting aspects.
Comments
T 439/22 is at odds with existing case law
From the above comparison of T 439/22 with all the other decisions having applied G 1/24, it is manifest that T 439/22 is at odds with the latter decisions, as well as with the decisions preceding G 1/24.
It is especially at odds with the decisions quoted in Reasons 11-13 of G 1/24, and in CLBA, 11th edition,2025, II.A.6.3.4.
If the principle of “primacy of the claims” is not to become meaningless, then the interpretation of G 1/24 in T 439/22 is manifestly incorrect.
G 1/24 does by no means hold that a holistic interpretation has has to be adopted. By referring to existing case law, it can even be said that G 1/24 did not suggest a holistic approach.
The patent cannot be its own dictionary
G 1/24 has actually brought the idea that the patent can be its own dictionary to an end.
Two reasons favour this conclusion:
- Firstly, for the legal certainty for third parties, and in respect of the principle of the primacy of the claims, third parties should not have to get deeply involved in the description to discover that, for the skilled person, the interpretation derivable directly and unambiguously from the plain claim wording, can change when “consulting” the description.
- Secondly, besides Art 65 and the London Agreement on translations, in order to obtain a grant or maintenance in amended form, only the claims have to be translated in the two other official languages other than the language of the proceedings.
The patent being its own dictionary appears to be the position taken by the German Federal Court (BGH). Although the EPO can take notice of national case law or that of the UPC, it does not mean that it has to follow it.
The EPO is there to grant or maintain patents which can be challenged in different national jurisdictions or in front of the UPC.
In this respect, the EPO should only grant and/or maintain patents in which the claims, and not the description, define the matter for which protection is sought. Any doubts about the matter for which protection is thought should be lead to an amendment of either the claims or the description. The interpretation should directly and unambiguously derivable from the claim wording and not from the description. Alignment between claims and description can be achieved, either by amending the claims or by amending the description.
In other words, T 439/22 is an oddity and should not be followed.
All the decisions having been issued after publication of G 1/24 have made abundantly clear that the boards should not be obliged to make interpretative summersaults. There exists a clear line of case law which contradicts T 439/22.
The fact that, in matters of validity, the same interpretation is derivable from the description and from the claims does in no way hinder jurisdictions acting in infringement to decide for direct/indirect infringement or infringement by equivalents.
I compare T 439/22 with T 56/21 when the latter considers that the description does not have to be adapted to the claims. If the description is not adapted to the claims, then following T 439/22, a different interpretation of the claim can be hidden in the description.
It is not for nothing that in its provisional opinion in referral G 1/25, the EBA is of the view that many of the conclusions of T 56/21 are inconsistent with decision G 1/24 and its underlying reasoning.
I allow myself to add that that the same applies to T 439/22.
Comments
14 replies on “G 1/24-Does it define a holistic approach or not? The answer is no”
If the description can be used to broaden claims to allow a patent to be invalidated, the principle of primacy of the claims is dead. That is not an issue in and of itself. G1/24 never mentioned primacy of the claims so it is a concept that can be consigned to the dustbin of history. G1/24 said we have to consult the description so that is what we must do. It follows that the claims might mean something different after consulting the description than they did before the description were consulted, as any other result would mean the step of consulting the description was meaningless.
@ Glorious anonymous
I can agree that G1/24 said that the description has to be consulted. However, G 1/24 did not say whatsoever about any conclusions which should be drawn from this consultation.
It thus does thus NOT follow that the claims might mean something different after consulting the description than they did before the description were consulted.
Consulting the description means for the skilled person detecting that the interpretation given to the claim in the description might be different from that the skilled person derives directly and unambiguously from the wording of the claims. Consultation of the description is thus NOT meaningless.
This situation boils down to an inconsistency which gives rise to doubts about the matter for which protection is thought. Any inconsistency or doubt about the matter for which protection is sought has to be resolved before any grant or maintenance in amended form.
The primacy of the claims is enshrined in Art 84: “The claims shall define the matter for which protection is sought”. The direct and unambiguous conclusion is that the description does NOT have the function of defining the matter for which protection is sought.
Besides T 439/22, all decisions applying G 1/24 have made clear that the primacy of the claims is such that, should the applicant/proprietor want the interpretation found in the description to be taken into account, the claim has to be amended accordingly. It could also work the other way round, when the description is brought in coherence with the claim.
I am thus of the firm opinion that it is your prose/concept that can be consigned to the dustbin of history.
PS You are manifestly residing in the UK from the information I can retrieve in my e-mail in-box. You are also the author of the reply to Arjun P. I have a pretty good idea of the pseudo you use when not posting as “Anonymous”.
I deleted your reply to Arjun P. as it was dishonest and did neither correspond to the spirit and the letter of G 1/24 as I have explained. It plainly reflects your views, which, as said above, I cannot agree with. See my comprehensive reply to Arjun P.
When I said the claims might mean something different after consulting the description, I did not say the claims must be read narrowly because of the description. All I was saying is there must be at least some circumstances in which the consultation of the description can affect the meaning afforded to the words of the claims, otherwise there would be no need to consult it at all.
As it happens, the result in T 439/22 was a patent revoked because the description provided a broad definition which led to a lack of novelty which would not have been the case if the description had not contained the broad definition. If a patent can be revoked because of what the description says, the claims do not have the same primacy that they once had under certain strands of case law.
You have previously argued that the broad definition of “gathered” should lead to revocation of the patent so the board gave the result you wanted, although you disagree with their reasoning. Contrary to what you might think, I agree the patent should have been revoked. If a patentee wishes to include a broad definition in the description, they should bear the consequences of that definition. I merely maintain that this conclusion and the “primacy of the claims” cannot be reconciled. Claims either have primacy or they do not, it is not a spectrum. As I said, that is not an issue.
@ Glorious Anonymous
The only circumstance I can imagine as result of consulting the description, is to come to the conclusion that the meaning afforded to the words of the claims is either broader or more limited in the description, and hence not in alignment with the definition of the matter for which protection is sought in the claims, if primacy of the claims should have any meaning.
When carrying a pre-grant documentary search is boils down to search in both cases prior art corresponding to the broadest possible interpretation of the features contained in the claims and the description. This avoids the applicant to say in one case that its claim is limited and the description is not to be taken into account. In the other case, the applicant cannot say, that its claim might be broad, but the description is more limiting.
If a patent can be revoked because of what the description says, it implies to me that the applicant has not been honest with the definition of the matter for which protection is thought. In the opposite case, the applicant is also not honest, as he then wants to fend off broad prior art corresponding to the breath of the claim, but this prior art should not be taken into account as the definition in the description of the matter for which protection is thought is more limited in the description.
Primacy of the claims is one thing, alignment between claim and description is another thing. If description and claims are aligned, no question arises about the primacy of the claim. This is the lesson to be taken from all decisions applying G 1/24 preceding T 439/22.
As far as I am concerned, I never wanted the board to give me a decision which should please me. This is irrelevant. My wish is to see a decision which is logical and not according to which the proprietor is allowed to change the definition of the matter for which protection is thought different in the claims and in the description.
This is why I disagree with the conclusion in T 439/22, that broadening or limiting definitions of the matter for which protection is thought given in the description should be read into the claim. At this rate, primacy of the claims is indeed meaningless. What I say is that after G 1/24, the patent cannot be its own dictionary. And this is exactly what T 439/22 wants to introduce at the EPO.
Thanks for your blog post. I am not a native speaker, can you please explain what you mean with “holistic approach”? If the holistic approach means reading the claims and description, how do I choose if there is a discrepancy? Or maybe the holistic approach means to only consider the description? Thank you in advance.
Dear Arjun P,
A holistic approach means in general that any document has to be looked at as a whole without any distinction between parts. For instance, definitions can be given at a given place in the document, and cannot be ignored if at other places something different could be interpreted.
When it is about patents it means that the claims should be interpreted, not only according to the definition of the matter for which protection is thought that is directly and unambiguously derivable by the skilled person from the plain wording of the claim, but also taking into account definitions of the matter for which protection is thought which have been incorporated in the description. For people promoting a holistic approach in patents, there can thus not be any discrepancy beween claims and description, as they are part from one and the same document. .
The problem with patents is that claims and description have different and distinct functions. Claims define the matter for which protection is thought, cf. Art 84: “The claims shall define the matter for which protection is sought”.
If the definition of the matter for which protection is thought is different in the description than in the claims, then there is a discrepancy between claims and description. The definition in the description can result in a limiting or a broadening definition with respect to the claim. Both are not acceptable.
The requirements for the description are defined in R 42. In R 42, there is no question of defining the matter for which protection is thought.
R 42 (1,c) requires the description to “disclose the invention, as claimed, in such terms that the technical problem, even if not expressly stated as such, and its solution can be understood, and state any advantageous effects of the invention with reference to the background art;”
I take “as claimed” to mean that the definition of the subject matter derivable directly and unambiguously from the plain wording of the claim cannot be given a broadened or more limited definition in the description. If the description allows a different definition of the matter for which protection is thought, then there is a discrepancy between claims and description.
R 42 (1,e) requires the description to “describe in detail at least one way of carrying out the invention claimed, using examples where appropriate and referring to the drawings, if any;”. I interpret the reference to the “invention claimed” in R 42(1,e) the same way as in R 42(1,c).
Mr Thomas,
I do not understand your assertion that G 1/24 has actually brought the idea that the patent can be its own dictionary to an end. G 1/24 has refused to answer Question 3 relating to this issue for the reason that this question was « encompassed within Question 2 ». This means that the answer to Question 3 is to be found in the EBA’s answer to Question 2 i.e. the requirement to consult the description for claim interpretation. Given this requirement, it is logical to conclude that the consultation of the description may influence the interpretation of the claims.
G 1/24 has opened a door by requiring that the description be consulted. But it has not specified the opening angle. The constraint is for the opening angle to be compatible with the primacy of the claims.
A first example is the « gathered sheet » patent of T 439/22. In this case, the definition of « gathered sheet » in para [0035] of the description is worded in such an assertive way, comparable to the definition of terms in an agreement, that the skilled person consulting the description has no choice but interpret « gathered sheet » as defined in the description. This illustrates a case of the patent being its own dictionary, but justified by the extremely assertive wording of the definition of « gathered sheet ».
Another example is the limiting effect of a field of use mentioned in a claim. This issue is of crucial significance for practitioners : if the field of use is a limiting feature, it can be used to show novelty and it is the « art » of the skilled person. Judging from GL F-IV 14.3, this is subject to conditions. Consulting the description in such cases may make it clear that the field of use is indeed to be considered a limiting feature.
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@ Glorious Anonymous
It is not for you to decide which comments ought to be deleted or not. Who do you think you are?
Unless it is inappropriate or badly twisting facts, I see no reason to delete a comment given by a natural person.
Don’t try to come with a fancy name. I always check in the list of qualified representatives under Art 134.
A dictionary definition of “holistic” is useless when it comes to patents as claims and description might be part of one document, but they have distinct functions, so that a holistic approach in the dictionary meaning does not help, cf. Art 84 and R 42.
For the surplus try to understand my reply to Arjun P. I hope that by then the penny will have dropped.
Mr Thomas,
I would like to understand your position as to the deletion of comments. Does your decision depend on whether the comment is given by a « natural person » or under a pseudo ? When you say « fancy name », does this apply to all pseudos ?
And as to content, I note that a couple weeks ago, you answered one of my comments by saying that you have initially thought of deleting it and then changed your mind. This comment was in my view neither offensive nor factually inaccurate. So what triggered your initial reaction ? And if you changed your mind, was it because I give comments under my name ?
I do not challenge your right as the blog master to delete comments. I simply need to understand your « red lines » esp. if I wish to express disagreement with some of your comments.
Your blog is very informative and I greatly appreciate that.
Mr Hagel,
In most of the blogs, comments are only published after approval by the blog master. The present blog is probably one of the few in which comments are published as soon they have been sent by a commenter. I wish to keep it like that, but there are limits.
My position is only to delete comments, which are either offensive or which do not bring anything forward in the discussion at stake.
In principle comments given by a natural person under its proper name, are in my opinion, more respectable than others. Those persons have the courage of their opinion. I can understand that some people prefer not to give their name as the position they take might be at odds with the firm they work for, be it an industry, or being a firm of representatives.
This is the reason why nowadays I comment under my name in various blogs. Not being a representative, I do not have any reason to hide. On the other hand, one’s style can become known and then it does not help to hide behind a pseudo.
I noted that, for instance in Kluwer Patent Blog, some people posting messages specify that it is their personal opinion and not that of their employer. But their name and quality appears at the bottom of their blog post. This is highly respectable.
Being long enough in the business, I happen sometimes to know the person hiding behind a pseudo. The comments of those people are to me quasi comparable to those of people commenting in their name. Some people also post under a pseudo, but they are honest and give their real e-mail address when replying. Those people and comments are on a par with those of persons acting under a pseudo, which are known to me. Comments published under a “fancY name”, e.g. Peter Pan or Charles Procter, are merely comments puplished under a pseudo and will be treated alike.
Even without giving an e-mail address, it is for instance possible to know from which part of Europe comments are sent. By acting on the net, we all leave some traces, whether we like it or not. As said, the style and the vehemence of some people can be quite revealing.
In my post, I try as much as possible to make a clear distinction between the presentation of the decision, and my comments. Comments represent my personal views on the topic, and those views can be challenged. This is part of the game. I am convinced that it is by exchanging views, that we can bring matters forward. I am in general difficult to convince, may be it is due to my family name, but compelling arguments do not leave me indifferent. An exchange in mutual respect is always fruitful, even if positions or views can be different.
I might have been long, but your comment gave me the opportunity to clarify my position.
I appreciate your openness, even if we sometimes disagree.
That is however part of life’s rich tapestry.
Deleted by the author
Mr Hagel,
Les commentaires idiots qui n’apportent rien à la discussion sont supprimés.
Tenez vous le pour dit.
Mr Hagel,
It might be true that in G 1/24, the EBA found question 3 not admissible and merely said that the answer to question 3 was encompassed in the answer to question 2.
However, the EBA also referred to existing case law. All decisions applying G 1/24, besides T 439/22, have, based on this case law, clearly said that, should the applicant/proprietor wants a definition of the matter for which protection is thought disclosed in the description to be taken into account, then the claim has to be amended accordingly. The reverse applies as well, i.e. the definition in the claim can be transfered to the description.
The EBA has never said that “consulting” the description means “that the consultation of the description may influence the interpretation of the claims”. It allows to detect a discrepancy/inconsistency between claims and description.
It also allows to search for broader prior art that that which would be required by a limited definition of the matter for which protection is thought in the claim, Conversely it does not allow to ignore prior art which covers the broad definition found in the claim and ignore the limited definition in the description. At the end of the day, the applicant/proprietor has the choice, either keep the definition in the claim or in the description, but he cannot have both at the same time. In English it is called not having one’s cake and eat it.
I think that G 1/24 has brought a great clarification in the matter and T 439/22 is at odds with it.
This discrepancy/inconsistency gives logically rise to some doubts about the definition of the matter for which protection is thought. Hence the position of the boards in all decisions applying G 1/24, but T 439/22, is in accordance with G 1/24. The boards are not there to resolve the discrepancy/inconsistency by interpretative summersaults, cf. T 2027/23. .
T 439/22 is right in that it has decided that the definition of the matter for which protection is thought found in the description is broader than that in the claim. T 1849/23 already applied G 1/24 when the description allows a broader definition. However, it did not conclude that conversely, when the description contains a more limited definition of the matter for which protection is thought, the latter should be red into the claim.
The logical conclusion of all decisions but T 439/22 is that the patent cannot be any longer its own dictionary. T 439/22 has attempted to reintroduce this notion. This is why I criticise this decision. I am also not sure that T 439/22 has been greeted with great enthusiasm by the boards having developed the case law following G 1/24.
GL F-IV 14.3 does not exist. I think you must have meant GL F-IV, 4.13. I don’t think that G 1/24 has brought or will bring about a change in the interpretation of claims defining a field of use. A field of use is indeed only limiting under certain conditions, e.g. recipient for molten steel vs. recipient for ice cubes.
However, the applicant/proprietor cannot claim at the same time that its claim only applies to a specific and limited field of use, if the description allows to conclude that the field of use is just exemplary and by no means limiting. This is tantamount to a broadening of the definition of the matter for which protection is thought compared with that of the claim. Hence there is a discrepancy/inconsistency between claims and description. This discrepancy/inconsistency has to be resolved.
The area of the patent being its own dictionary is, in my humble opinion dead, and it is rightly so. Why should third parties have to delve deeply in the description to find out that there is a different definition in the latter of the matter for which protection is thought than that resulting from the plain wording of the claim? In this respect, it is irrelevant that the discrepancy/inconsistency implies a broadening or a limiting definition of the matter for which protection is thought.
I would also like to remind that, besides Art 65 and the London Agreement on translations, that only claims in the two other EPO official languages than the language of the proceedings, have to be filed in order for a patent to be granted and/or maintained in amended form by the EPO.