CASELAW-EPO - reviews of EPO Boards of Appeal decisions

1. Introduction

The boards have by now issued a series of decisions following the issuance of G 1/24, and in this present blog entry, an attempt is made to draw some conclusions about the case law so generated.

They only express the views of the author gained from the analysis of numerous decisions.  

2. How to apply G 1/24 in view of G 1/25

With G 1/25, Reasons 10, the board has explained how to apply G 1/24, as suggested in T 439/22, Reasons 3.4 and 6.

The EBA held that a skilled person reading the claim in the context of the description and drawings 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 drawings, the skilled person will “read” terms in the claim in the sense of the definition, taking into account both the broadening and limiting aspects.

3. What should be understood under “read into the claim”

Under “read”, it appears manifest that the definition of the matter for which protection is sought found in the description, be it broadening or limiting, is not merely “intellectually” or “virtually” inserted in the claim, but replaces the limiting or broadening definition found in the claim.

The EBA has not gone as far and stated this expressis verbis, but it is manifest that this way of reading was intended by the EBA. Otherwise the applicant/proprietor could insist that only the wording of the claim he filed, and he agrees with, is to be taken into account.  

According to Art 113(2), the applicant/proprietor decides on the text in which an application or patent ought to be examined, granted or maintained, but for the safety of third parties the applicant/proprietor cannot be allowed to leave in the depth of the description features which do not tie up with the definition of the matter for which protection is sought found in the claim.

G 1/25 has reminded us that Art 84 is not only valid for the claims, but also applies to the description in that the claims ought to be supported by the description. If the claims have to be supported by the description, the latter cannot contain statements,broadening or limiting, which are at odds with the definition of the matter for which protection is sought in the actual claim.

By replacing in the claim the broadening or limiting statement found in the description, support of the claim by the description is automatically achieved. In this respect, G 1/25 is the logical continuation of G 1/24.

3.1 “Embodiments”, “examples” or “aspects”

Whether the applicant has avoided using terms like “embodiments”, “examples” or “aspects” does not change the situation. The same goes when the word “invention” is not used in the description.

When reading the description and comparing it with the claim, the skilled person will easily detect different “embodiments”, “examples” or “aspects” of the “invention”, falling, or not, under the definition of the matter for which protection is sought in the actual claim.

4. All or nothing and anything in between

This possibility of reading into the claim a feature found in the description, be it broadening or limiting, is only valid when the broadening or limiting aspects are applicable to all embodiments originally disclosed.

If a broadening or limiting feature is only valid for some embodiments, the limiting or broadening feature cannot be read into the claim in the meaning of G 1/25 and G 1/24.

4.1 Broadening interpretation “read” into the claim

This is what happened in T 439/22-2 in which a broadening statement in the description, led to a lack of N of the granted claim. § [0035] allowed a broader definition of the matter for which protection is thought and therefore lacked N over a prior art filed by the opponent.

4.2 Limiting interpretation “read” into the claim

In T 1141/24, Reasons 2.1.9-2.1.11, the board held that a specific item (hydraulic unit) could not be omitted, as it was present independently of the way the actuation of another item occurred (tiltable plant cultivation module).

4.3 Limiting interpretation not “read” into the claim

In T 1249/24, Reasons 1.3, the board held the interpretation of the OD was too restrictive and agreed with the opponent that feature F can be interpreted in a broader manner. In this decision, the board confirmed the notion of the broadest possible interpretation of claim features by the skilled person.

When T 2027/23, was issued, G 1/25 was not yet issued, but, in Reasons 3.5.6, the board made clear that in case of a limitation only found in a specific embodiment in the description, the board considered that it had no authority for interpreting a claim more narrowly than the wording of the claim as understood by the skilled person.

In T 0356/23, Reasons 4, the original description was rather broad and the board considered that following G 1/24, that recourse to the description does not mean that limiting features which result solely from certain embodiments in the description can restrict the subject-matter claimed in more general terms in the claim. This decision confirmed T 2027/23. The board also quoted a number of decisions going into the same direction:  T 1232/23, Reasons 2.10.3; T 1465/23, Reasons 2.4; T 1846/23, Reasons 1.5.4; T 1069/23, Reasons 2.3.1; T 1351/23, Reasons 3.2.2; T 412/24, Reasons 3.1.1; T 2034/23, Reasons 3.6.2; T 1402/24, Reasons 2.5.2.

The same applies to T 0633/25, Reasons 1.4.2-1.4.8 with respect of “periodically”.  

5. Explanatory function of the description

5.1 Broader interpretation taken into account

In T 2043/23, Reasons 2.10, the board held that the description served an explanatory and confirmatory function by assisting the skilled reader in recognising an embodiment already encompassed by the claim wording, without altering the scope of the claim.

Although G 1/24 is not mentioned as such in T 1230/25, Reasons 1.3.3, the board concluded that, after consultation of the description, the feature “modulation” in the claim had to receive a broader interpretation than that resulting from its plain wording.

In T 1849/23, Reasons 1.3, the board held that, when the description is taken into consideration, the claim has to be interpreted in a broader manner than that resulting from a possible strict literal reading of the claim.

All those decisions are different from T 439/22-2, Reasons 3.4. This difference was noted in T 2043/23, Reasons 2.9.

5.2 Limited interpretation taken into account

In T 1141/24, see above, the context of the whole disclosure was determining for the boards considerations and the limiting interpretation was taken into account.

5.3 In case of an ambiguity between claim and description

In T 2047/23, Reasons 2.1+2.2, several constructions of claim 1 would objectively occur to a skilled reader:

• an “abstract mathematical construction, and
• a  “practical implementation”

For the board the “abstract, mathematical” construction remains an equally valid interpretation of the claim’s language, even after “consulting” the description and the drawings.

In T 0392/25, Reason 1.6, the board decided that the term “also” was ambiguous and did not mean “and/or”. Paragraph [0033] of the description even allowed for three different interpretations.

What is common to those decisions is that it is the deciding body which will decide on the possible interpretations and not the applicant/proprietor.

Any technically reasonable interpretation can be held against a claim, and it is not for the applicant/proprietor to decide which is the right one.

5.4 No ambiguity, but different interpretations possible

T 0774/24, related to the “variable thickness“ of a plush fabric. The proprietor was of the opinion that the plush fabric had different thickness values at different positions due to stretching. In Reasons 2.6-2.8, the board held that a second interpretation was possible, i.e. that the thickness of the plush fabric could vary due to compression. This led to a lack of N of the claim as granted.

In this case, both interpretations could be read in the claim according to G 1/25 and T 439/22-2, and the proprietor could not chose the one he preferred.

6. G 1/24 and added matter

In Reasons 2.5 of T 2047/23, the board held that, in case of two equally valid interpretations, allowability of a claim must be assessed against a broader interpretation. and concluded to the non-compliance of the claim with Art 123(2).

In Reasons 1.6.4 of T 0392/25, the board held that the skilled person would have to resolve the ambiguity in paragraph [0033] in favour of the first or third interpretation in order to arrive at the combination now claimed, which does not amount to a direct and unambiguous derivation of that combination.

In T 1141/24, see above, the board held that omitting a feature necessarily present in all embodiments, the claim was not compliant with Art 123(2).

In T 405/24, Reasons 1.2.3, the board confirmed that the claim was infringing Art 123(2), and added that, there was no indication in G 1/24 that “consulting” or “referring to” the description and drawings could translate to adopting a claim interpretation which ensures that the disputed feature is originally disclosed and thus necessarily complies with Art 123(2).

6.1 Ambiguity in claim and in description

In T 0977/25, Reasons 27,, the board held that granted claim 12 was ambiguous as it covered two scenarios A and B, whereby the original application directly and unambiguously only discloses scenario B. The board interpreted claim 12 as encompassing a situation in which both scenarios were equally valid, and concluded that claim 12 infringed Art 123(2). 

7. What takes precedence?-Interpretation or assessment of a requirement of the EPC

In T 0367/20, Catchword, referring to Art 69, and which predates G 1/24, the board held that in order to assess whether an amended patent claim contains added subject-matter under Art 123(2), the claimed subject-matter must first be determined by interpreting the claim from the perspective of the skilled person. In a second step, it must be assessed whether that subject-matter is disclosed in the application as filed. This implies that there can only be one correct interpretation.

In T 2047/23, Reasons 2.5, the board was aware of T 0367/20, but held that it was not correct to suggest as done in T 0367/20, that a deciding body must choose a single “correct” interpretation where mutually exclusive interpretations exist.

In T 2047/23, the board also referred to Reasons 1.2.3 of T 405/24, and considered that an approach that forces a choice for a single “correct” interpretation, such as the one derivable from the description, would jeopardise legal certainty.

In T 0977/25, Reasons 32, the board expressly disagreed with T 0367/20. It held that leaving an ambiguity in a claim unresolved is tantamount to leaving its interpretation open, as was apparently assumed in the case considered in T 367/20, Reasons 1.3.9. Rather, an unresolved ambiguity may simply result in a broader interpretation.

8. Conclusion

From all the above decisions it can be concluded that a limiting interpretation only present in some embodiments, cannot help the applicant/proprietor to fence off prior art validly raised against the definition of the matter for which protection when the latter is broadly defined in the claim.  

Only if a limitation or a broadening interpretation applies to all embodiments it can be read in the claim in the meaning of G 1/25 and T 439/22-2.

If a plurality of technically reasonable interpretations are possible for the skilled person, it is not the one preferred by the applicant/proprietor which will prevail.

The decision upon the prevalent interpretation rests with the EPO’s deciding body. In case of an unresolved interpretation, a broader interpretation should prevail. This can lead to a lack of N or to a non-compliance with Art 123(2).

9. Comments

G 1/24 will force applicants to be much more careful with the drafting of their original application. What might be valid in another part of the world might not be valid at the EPO.

G 1/25 is also very clear. No adaptation of the description for mere formal reasons, but for substantial reasons under Art 52-57, 83, 84 and 123.

In view of the above, the admissibility of G 1/26 might be questioned in general, but especially Question 1. I have never seen a “prophylactic referral“. Questions 2 and 3 can be considered answered by the above decisions on interpretation and added matter in relation to G 1/24.