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T 439/22 – The referral to the EBA on Art 69 has been published

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As announced by board 3.2.01, the referral to the EBA on the application of Art 69 has been published on 01.07.2024

The referred questions

The following questions are referred to the Enlarged Board of Appeal, both to ensure the uniform application of the law [see point 3] and because a point of law of fundamental importance arises [see point 4]:

1. Is Article 69 (1), second sentence EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC to be applied to the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC? [see points 3.2, 4.2 and 6.1]

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? [see points 3.3, 4.3 and 6.2]

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? [see points 3.4, 4.4 and 6.3]

Some considerations of the board relating to question 1

For the board, in the early years case law was such hat Art 69 and the Protocol were to be applied not only when assessing Article 123(3) EPC, cf. G 2/88, Reasons 2.5) but also when assessing the prerequisites of patentability, such as Art 54, cf. G 6/88, Reasons 3; T 16/87, Reasons 6.

The board noted that over the years, a strong line of case law has developed that took G 2/88 as an indication that Art 69 and Article 1 of the Protocol should, within the jurisdiction of the EPO, exclusively be applied in the realm of Art 123(3) that refers to the patent’s scope of protection, while in the realm of provisions dealing with the invention, such as Art 54, 56 and 83, or with the patent/patent application, such as Art 123(2), these provisions should not be applicable. The fact that G 6/88 was issued on the same day and that the EBA did not make this distinction in either of these decisions seems to have been lost over the years.

The EBA, clearly regarded Art 69 and the Protocol as the relevant means of determining the technical features of a claim, expressly both in assessing patentability when comparing the invention with the relevant prior art and for the scope of protection when determining which rights are conferred by the patent (or patent application).

Thus, it can hardly be assumed that the EBA would have agreed with the development of diverging standards for assessing these two sides of the same coin, particularly given that the Enlarged Board always strove for consistency in its assessment of similar principles found across different provisions of the EPC. The board referred to e.g. “the uniform concept of disclosure” with reference to Art 54, 87 and 123 as developed in decisions G 2/98, Reasons 9; G 1/03, Reasons 2.2.2 and G 2/10, Reasons 4.6).

Some considerations of the board relating to question 2

The referring board referred to numerous decisions in which either

  • The description and figures were taken into consideration in any case when construing the claim, but, as a second step, often give priority to the wording of the claim in case of divergence with information only found in the description
  • The description and figures were taken into consideration irrespective of any ambiguity detected, either without indicating a legal basis or in cases where the contentious question did not need to be decided upon, e.g. because the claim language was found to be ambiguous
  • Other decisions left the question unanswered because, even when applying Art 69, limiting features should not be read into the claim and existing features in a claim should not be disregarded with reference to information given only in the description
  • Some decisions went so far as to state that the claims should essentially always be interpreted on their own merits, i.e. without consulting the description and figures at all

In the case at issue, the question cannot be left open since the claim language when read in isolation would not be considered ambiguous by the skilled person.

Therefore, whether the description and figures may be consulted when construing patent claims to assess patentability and whether this may be done generally or only if there are ambiguities in the claim language must be resolved.

Some considerations of the board relating to question 3

The third point where the case law of the boards diverges is the extent to which definitions or similar information given in the description for certain terms may influence the interpretation of these terms when used in the claims.

Here again the board quoted a series of decisions

  • Some decisions emphasise the autonomy of patents to define the meaning of terms used in patent claims and the need to read these terms in the context of the whole content, taking into account what is achieved by the invention. Thus, terms used in patent documents should be given their normal meaning in the relevant art unless the description gives the terms a special meaning. In that regard, the patent document may be its own dictionary.
  • Other decisions refer to the need for legal certainty in the patent system and remind that it is the claims that primarily determine the subject-matter of the invention. Thus, many decisions underline that the support of the description should at least not be used for restricting or modifying the subject-matter of the invention beyond what a skilled person would understand when reading the wording of the claims. The majority of decisions seem to agree on this, many of which apply Article 69 and its protocol. The reasoning given for this in these cases is based on the wording of Art69(1), first sentence and has become known in the recent years, as the principle of the primacy of the claims.
  • Some decisions postulate that the claims should always be construed on their own merits without taking anything from the description, including any definition found there, into account as a “supplementary-guidance tool”
  • Decisions applying the principle of ambiguities as a prerequisite for claim construction disregard information, including definitions, in the description if the claim read on its own is found to be clear.
  • Even where such a claim was found unclear, some decisions disregarded a definition or similar information found in the description if it might be used to restrict or modify the subject-matter of the invention beyond what a person skilled in the art would understand when reading the wording of the claims, for example, by excluding interpretations which are both reasonable and technically sensible within the relevant technical context.
  • Several decisions hold that, at a stage of the proceedings where this is still possible, especially during examination but also in opposition proceedings, any mismatch between claims and a definition or the like in the description should be resolved by amending the claims since this is where the invention should be defined. Thus, where the definition is not included in the claim but could have been, it seems that these decisions would disregard it.

To sum up, in any case and independent of the two other questions, the question whether and to what extent definitions and similar information found in the description may be disregarded must be answered before deciding the current case.


The question of application of Art 69 and Art 1 of the Protocol in procedures before the EPO has been lingering for a while, and it is good that a board has now decided to refer this important question.

It is to be noted, that the analysis of the diverging case law by the referring board is quite impressive.

Art 123(2) not included n the referral

The referral has been limited to the application of Arti 69 (1) and Art 1 of the Protocol on Interpretation, when a claim has to be assessed with respect to Art 52-57.

The board did not bring in Art 123(2). This position differs from that adopted in T 450/20, commented in this blog,  T 1473/19, Reasons 3.15, also commented in the present blog, In T 450/20, the board refused to refer certain questions to  the EBA.

Although the boards in T 450/20 and T 1473/19 considered, the primacy of the claims, they considered that Art 69 and the protocol on interpretation should be applied when assessing added matter.

It is to be hoped that the EBA does not start rewriting the questions in order to answer questions which have not been referred to it.

The referring board related its questions to Art 52-57, but, for apparently good reasons, did not mention  Art 123(2). In this respect a “disclaimer” on Art 54(1 to 3) could appear appropriate in order not to jeopardise the “gold standard”.

If we start interpreting the claims under Art 69 and the Protocol, all the certainty achieved by the EBA when defining what is to be considered directly and unambiguously derivable in matters of novelty, validity of the priority and gold standard, would be lost. This achievement is a very important one and should not be jeopardised.

The EPO and its boards have often been severely criticised for their strict approach when it comes to added matter, but this approach has given the certainty needed during prosecution before the EPO.  

T 439/22


In a Notice of the EPO, dated 01.07.2024, it has been held that: To ensure the proper functioning of the EPO and for legal certainty,

the President of the EPO has decided that proceedings before the examining and opposition divisions should continue.


6 replies on “T 439/22 – The referral to the EBA on Art 69 has been published”


Thanks for the comment.
I apologise for the misshap
I am sitting in a hearing of the UPC and will rectify asap.
If you click the link at the end you find the right decision T 439/22.

The file number has been amended to T 439/22. The rest of the blog is not amended

Proof of the puddingsays:

The President has spoken:
“To ensure the proper functioning of the EPO and for legal certainty, the President of the EPO has decided that proceedings before the examining and opposition divisions SHOULD CONTINUE”.

Does the phrase “should continue” indicate that proceedings WILL continue EVEN IF a party makes a request for a stay of proceedings AND the outcome of those proceedings depends entirely upon the answers to the questions referred in G 1/24?

It certainly seems that the Notice from the President is intended to serve as an edict, with Examining and Oppositions Divisions forbidden from contravening the rule that it sets out. However, if that is the case, then the President is essentially instructing all Examining and Oppositions Divisions to commit substantial procedural violations in cases where, by rights, a stay of proceedings should be imposed (upon the request of a party).

Avatar photoDaniel X. Thomassays:

@ Proof of the Pudding

Thanks for drawing my attention to the notice of the EPO. I did not have time to go through my mails after a day at the Munich LD of the UPC. I have now amended my post accordingly.

I can understand your question, but, in my opinion, the answer can only be given by a board following an appeal.

The instructions from the president are quite clear: EDs and ODs should not stay any proceedings even at the request of a party.

A decision should be given on any request filed by a party. Not taking a decision on a request of a party certainly amounts to committing a SPV. In T 933/10, the board held that since the final decision to refuse the application for lack of novelty, inventive step and clarity, did not contain any reason for refusing the request for the change of the venue, the ED committed a SPV.

In any case, the refusal to stay proceedings will have to be justified by an ED or an OD. One justification could be found in Art 10(2,a).

Whether following instructions of the president will constitute a SPV will have to be decided by the boards of appeal.

According to Art 10(2,a) the president “shall take all necessary steps to ensure the functioning of the European Patent Office, including the adoption of internal administrative instructions and information to the public”.

Art 10(2,a) was called when the president decided that in first instance all OP would be held by ViCo. Could you appeal this decision? I doubt it.

When OP were held in person, the party could not request that the OP were to be held at a place to the convenience of a party. The last decisions of the boards on this topic made clear that the location of the ED/OD and hence the place at which the OP would be held, was an administrative decision of the EPO which was not open to appeal. See T 1012/03 or T 689/05.

Holding an OP by ViCo or a given place can be considered as an administrative decision of procedural nature, which can be decided by the president within Art 10(2,a). .

When is is specified in the notice that the instructions of the president were taken “in order to ensure the proper functioning of the EPO and for legal certainty”, it is possible to consider the notice falling under Art 10(2,a).

However, what is at stake here is not of procedural nature, but appears rather a question of substance. Therefore I am not fully convinced that Art 10(2,a) applies.

WheThe reply to this question is a matter for the boards, provided an ED/OD does not simply ignore the request for stay.

The present notice could also apply mutatis mutandis in case of a referral on the adaptation of the description. See EP 3 094 648 – Appeal pending under T 56/21.

Here as well, the question is one of substance, and whether Art 10(2,a) applies or not is again a matter for the boards.

Proof of the puddingsays:

To quote the CLBA at V.B.2.5.3:
“In T 166/84 (OJ 1984, 489) the board stated that, in its opinion, where a decision of the examining division depended entirely on the outcome of proceedings before the Enlarged Board of Appeal on a legal question raised under Art. 112 EPC 1973 – and this was known to the examining division – the further examination of the application must be suspended until the matter was decided by the Enlarged Board of Appeal. Failure to do so would amount to a substantial procedural violation under R. 67 EPC 1973 (R. 103(1)(a) EPC).”

See also the GL at E-VII.3:
“Where a referral to the Enlarged Board of Appeal is pending and the outcome of examination or opposition proceedings depends entirely on the answer to the questions referred to the Enlarged Board of Appeal, the proceedings may be stayed by the examining or opposition division on its own initiative or on request of a party or the parties.”

Do these established principles simply go out of the window because the President deems them to be inconvenient on this occasion? Moreover, what makes this referral to the EBA so special as to demand such an unusual approach to (denying) stays of proceedings?

Avatar photoDaniel X. Thomassays:

@ Proof of the pudding

There is hardly anything to add in view of these highly pertinent comments.

As T 166/84 is not mentioned in the Guidelines EDs/ODs are not bound by it, and hence, they can ignore it. But can EDs/ODs ignore the crystal clear Guidelines? I have some doubts.

My conclusions on Art 10(2,a) were an attempt of a solution.

Art 10(2,a) can be applied when administrative matters are at stake, but cannot be applied when there is a referral to the EBA.

There was one exception: G 1/21 on the holding of OP by ViCo.

Luckily the EBA interpreted the questions, and in its quick decision limited the application of its decision to the BA. However it took ages for the reasons of the decision to be issued, one wonders why.

The decision of the EBA can be criticised in that neither Art 116 nor R 115 and 116 make a difference between OP before the first instance and before the boards of appeal. I range G 1/21 in the category “dynamic inrerpretation”.

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