In the present blog, we will concentrate on the impact of G 1/24 on the Guidelines.
The EPO has called for comments, but the position taken in the new Chapters F-IV, 4,1 and 4.2 will most probably not be amended by the comments.
The new parts of the Guidelines
4.1 Clarity
Art. 84 provides that the claims must define the matter for which protection is sought. It further provides that the claims must be clear and concise and supported by the description.
In view of the function of claims in defining the matter for which protection is sought, their clarity is of the utmost importance for reasons of legal certainty. The meaning of the terms of a claim must, as far as possible, be clear for the skilled person from the wording of the claim alone (see also F-IV, 4.2). There should be no doubt as to which subject-matter is covered by the claims. The skilled person should be able to establish the scope of the claim without undue burden. Otherwise, the claim lacks clarity.
The requirement that the claims must be clear applies to individual claims, i.e. to independent and dependent claims alike, and also to the claims as a whole. Given the differences in the scope of protection which may be attached to the various claim categories, the division must ensure that the wording of a claim leaves no doubt as to its category.
The correct response to any lack of clarity in a claim is amendment (G 1/24; see also F-IV, 4.2 and F-IV, 4.3).
4.2 Interpretation
The claims are the starting point and the basis for assessing the patentability of an invention under Arts. 52 to 57. The description and any drawings are always referred to when interpreting the claims, and not just in the case of a lack of clarity or ambiguity (G 1/24).
However, when assessing patentability, the description and drawings cannot be relied on to read into the claim a restrictive feature not suggested by the wording of the claim.
If, on the other hand, the description provides a special broad definition of a term used in a claim, the claim must be interpreted in the light of that broad definition when assessing patentability, provided this interpretation is technically meaningful.
Otherwise, each claim must be read giving the words the meaning and scope which they normally have in the relevant art.
If, in particular cases, the description gives the words a special meaning by explicit definition or otherwise the division will, so far as possible, require that the claim to be amended in such a way that the meaning is clear from the wording of the claim alone.
Comments
It is now manifest that the Guidelines have taken over the boards decisions applying G 1/24.
Limiting interpretations in the description will be ignored and the prior art cited against the claim will correspond to the broad interpretation resulting from the wording of the claim itself.
Broadening interpretations of the claims will lead to corresponding broad prior art being cited against the apparently limited claim.
Claims which find a different interpretation in the description will be considered lacking clarity and will require amendment.
Clarity can only be given, if the interpretation of the claim from its wording corresponds to that found in the description.
Neither boards of appeal, nor national or supranational courts will have to carry out interpretative summersaults when dealing with claims granted by the EPO.
The idea of the patent being its own dictionary will also belong to the past, as the interpretation of the claim in the description will be coherent with that resulting from the wording of the claim.
I see here a first step in the harmonisation of the interpretation between the EPO and judicial bodies acting post-grant or post-opposition.
Although it is not said in words, the new Guidelines will require divisions of first instance to read the description before searching and during examination and opposition. Otherwise, they will not be able to notice the difference in interpretation.
The Chapter 4.3 Inconsistencies has not (yet) been amended, but is likely to be amended in the 2027 edition of the Guidelines following issuance of G 1/25.
At the end of the day, by applying G 1/24, claims and description will be adapted to each other.
Such a fundamental inconsistency between claim and description will belong to the past.
Properly applied by first instance divisions, the new Guidelines alone will force applicants/proprietors to delete before grant or maintenance in amended form, the optional character of a feature incorporated as a limitation in an independent claim.
As an example, when the claim says “spade”, the description will not be allowed to also cover any “earth moving implement”. The same applies the other way round.
Comments
6 replies on “Proposed amendments to the Guidelines F-IV 4.1 and 4.2 to enter into force on April 1st 2026”
“The idea of the patent being its own dictionary will also belong to the past” but the guidelines suggest that the patent IS its own dictionary when the EPO can use it to kill a patent, ie, when there is a broad definition in the description. What am I missing?
@ Anonymous,
I have a question in reply to your comment: when is patent used as its own dictionary? This expression is normally used either by the applicant/proprietor in procedures before the EPO or by judicial bodies and/or the proprietor acting in post-grant or in post-opposition procedures.
In case the description allows a different interpretation than that resulting from the plain wording of a claim, the patent can be qualified as its own dictionary. The interpretation in the description can be broader or more limited than that of the claim.
I come back to my example “spade” in the claim and ”earth moving implement” in the description, which is way broader than what the claim means. Conversely, if “earth moving implement” figures in the claim and the description mentions ”spade”, then the interpretation of the description is way more limited than that resulting from the plain wording of the claim.
When the description allows a broader interpretation than that of the claim wording, the applicant/proprietor will insist that it is the claim’s interpretation which should prevail, i.e. broader prior art should not be held against the limited claim.
When the description allows a more limited interpretation than that resulting from the claim wording, the applicant/proprietor will insist that it is the limited interpretation of the description which should prevail over the broad prior art which can be held against the broad claim.
With this technique, using the patent as its own dictionary, the applicant/proprietor will always win. This is not correct as later the proprietor managed to nurture a first class Angora cat.
What all the decisions following G 1/24 say, and what the new Guidelines say now, is that the inconsistency between claim and description has to be resolved by amendment of the claim. If “earth moving implement” is brought into the claim instead of “spade” or conversely “spade” is brought into the claim instead of “earth moving implement”, then claims and description will contain the same feature, either “spade” or “earth moving implement”.
One this step is carried out, the proprietor will not be able to give a different interpretation of the feature when looking at the claim or when looking at the description. The patent will thus not be any longer its own dictionary, allowing different interpretations playing claim and description against each other.
Judicial bodies deciding in post-grant and post-opposition procedures, will then not have to battle with different interpretations possible in view of the inconsistency between claims and description.
A “spade” in the claim will become a “spade” in the description, and an “earth moving implement” in the claim will become an “earth moving implement” in the description. No more, but no less. To me it is as simple as this.
It was high time that, for legal certainty of third parties, to stop the applicant/proprietor always wining.
What has stared with G 1/24 should be completed by G 1/25, as in both cases description and claims are on a par. The basic interpretation will be same whether one looks at the claim or at the description.
This will not hinder judicial bodies acting in post-grant or post-opposition proceedings to decide upon direct or indirect infringement or infringement by equivalents as foreseen in Art 69 and its Protocol of interpretation.
I might have been long, but I think it was necessary. Has the penny now dropped?
Another section of the guidelines should be significantly revised for compliance with G 1/24.
According to GL F-IV 4.7.2, the interpretation of terms such as « about », « approximately » or « substantially » refers to the error margins in the measurement of a value or range or to the manufacturing tolerances of a structural unit of an apparatus.
This interpretation is inconsistent with the requirement in G 1/24 that the description be consulted for claim interpretation. It misses the fact that terms such as « about » or « substantially » may be perfectly clear for the skilled person in view of the function of a structural element as disclosed in the description.
I will take the example of a substantially hemispherical container which, according to the description, is required to be rotatable vs. a planar support surface . The meaning of « substantially » is clear for the skilled person : the shape of the container may depart from a strictly hemispherical geometry as long as it is capable of rotating vs. the support surface.
Note that the deletion of the term « substantially » in the claim by the ED at the Rule 71(3) stage may raise a 123(2) issue, if there is no explicit support in the description for a strictly hemispherical geometry.
Mr Hagel,
Thanks for your comments.
I am however not convinced that the Guidelines F-IV 4.7.2 need amendment. I am of the opinion that a feature in a claim as well a statement in the description can be can be perfectly clear as such, but still allow different interpretations of the scope of protection. And this is what has to be avoided as expressed in the decisions following G 1/24.
I have had second thoughts about the wording in the new sections F-IV, 4.1 and 4.2.
I am not too happy that in the new sections F-IV, 4.1 and 4.2, reference is made to a lack of clarity in general. I would reserve the term lack of clarity to a claim in which the boundary of the claimed subject-matter is actually unclear, for instance due to a lack of essential features, a relative term or an expression as substantially or about if those introduce an unclarity. . .
When there are different scopes of protection derivable from the description or from the independent claim, I would prefer to speak about lack of support. What is defined as scope of protection in the independent claim might not be supported by the interpretation given in the description, or vice-versa, but both the independent claim and/or the description can be crystal clear. In th case you bring forward, there is no possibility to come to a different interpretation of what claimed with respect of whaat is to be found in the description.
In some of the comments I made on IPKat I used the concepts of “spade” vs. “earth moving implement”. Both notions are clear as such, but have quite a different scope of protection. One is hand driven, the spade (or a rake), and the other, excavator or bulldozer, is motor driven. One cannot be compared directly with the other as far as scope of protection is concerned. To me it can also become a problem in case of functional features in a claim or in the description.
In reasons 6 of G 1/24, the EBA even considered that neither Article 69 EPC and Article 1 of the Protocol, nor Article 84 EPC are entirely satisfactory as a basis for claim interpretation when assessing patentability.
This is why I consider the reference, in F-IV, 4.1 and 4.2, to Art 84 EPC as a whole not really satisfactory. Your example actually confirms my reservations.
I can agree with you that in the example you gave a mere deletion of substantially at the R 71(3) stage might result in added matter. I would as applicant resist such a deletion for this reason. Better a claim which comprises substantially or about, if the skilled person can make head or tail of this expression, than a claim in which it is deleted and brings added matter.
The amendments carried out at the R 71(3) stage by EDs are a story on their own, and I would not bring this topic in a discussion on the application of G 1/24.
Mr Thomas,
Thank you for your answer.
The example I cited is a real-life case which I came across when auditing files as a member of a SQAP panel. As a matter of fact, the applicant did not challenge the deletion of « substantially » in claim 1.
I wanted to point out that a term such as « substantially » which may at first glance be unclear becomes clear for a skilled person when the description is consulted, because the description explains the functional feature linked to the hemispherical geometry, namely, that the container must be rotatable vis-à-vis the support surface.
The key aspect is that the meaning of « clear » refers implicitly to the person skilled in the art. This is why I do not understand with your position that it must be assessed separately for the claims and for the description.
Mr Hagel,
I have no doubt that the term “substantially” might have a precise meaning in certain contexts, and its deletion might be prejudicial for the applicant/proprietor. The example you have given leaves no doubt about your position. In the context given, “substantially” should not be deleted.
I wish to stress that I have never said that the assessment of a feature must be different between the claim and the description or that it must be assessed separately for the claims and for the description. This would be clearly against G 1/24.
What I expressed is the fact the terms “clarity” or “lack of clarity” should not be used with two different meanings:
– clarity, or lack of clarity, as such for the claimed subject-matter;
– lack of clarity of the scope of protection when taking on the one hand, the interpretation resulting from the claim wording, when on the other hand, the description allows a different scope of protection, i.e. broader or more limited.
Both situations can be held as inducing a lack of clarity, either for the subject-matter of the claim as such, or for the scope of protection.
All decisions applying G 1/24 relate to the second type of lack of clarity, and this difference is not clearly established in the new versions of the Guidelines F-IV, 4.1. and 4.2, as there is merely question of “clarity” in general.
In those new parts of the Guidelines, I miss a clear distinction between the two types of lack of clarity. This is why I say, that the description or the claims can be crystal clear for the subject matter they define, but may imply quite a different scope of protection. This is what is no longer acceptable after G 1/24.