G1/24: Enlarged Board of Appeal issue their highly anticipated decision

Background to the Hearing
Following the hearing on 28^th March 2025, the Enlarged Board of Appeal (EBA) have now issued their decision, which has been highly anticipated among patent professionals. The main issue was whether the description of a Patent should be used to interpret the claims.

G1/24 addresses a Board of Appeal referral from case T439/22, where the claims of EP3076804 (Philip Morris Products S.A.) included a term “gathered sheet”. That term is well-known in the tobacco industry but was defined more broadly in the patent description. The Opponent (Yunnan Tobacco Co. Ltd) argued that when using the definition of “gathered sheet” given in the description, the claims lacked novelty over the prior art. However, the Patent Proprietor countered that the claims have primacy, and thus if claim 1 were to be interpreted with its usual meaning in the art then it is novel. Our previous article summarised the main points put forward during the hearing in response to the following questions which were referred:

• 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?
• 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?
• 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?

The Decision
In the Decision issued on 18^th June 2025, Question 1 of the referred questions was answered in the negative and Question 2 in the positive. Question 3 was found to be inadmissible because the answer was found not necessary to reach a decision in the case.

In answering Questions 1 and 2, the EBA considered that neither Article 69 EPC and Article 1 of the Protocol nor Article 84 EPC are entirely satisfactory as basis for claim interpretation when assessing patentability. However, rather than starting from scratch, the EBA referred to the extensive existing case law from which applicable principles of claim interpretation can be extracted.

The EBA rejected case law that sees no need to refer to the description and drawings when interpreting the claims. The EBA found the approach of using the description to construe the claims only in instances where there is ambiguity or unclarity was mis-aligned with the principles of Article 69 EPC and with the practices of the UPC and national courts of the EPC states.

The steer given by the EBA in their decision points to bringing the approach of the EPO into line with the tribunals that are downstream, including the UPC and the national courts. The EBA referred to recent case law from the UPC (UPC Court of Appeal of 26^th February 2024 in NanoString Technologies v 10x Genomics (as rectified by the order of 11^th March 2024)), which is consistent with their conclusions.

The EBA also point out the importance of the examining division thoroughly establishing whether the claims fulfil the clarity requirements of Article 84 EPC, and that a correct response to unclarity in a claim is amendment. That will not be encouraging for those in the patent profession who hope to see an end to the EPO’s practice of requiring the description to be amended in line with the claims. It seems possible that the opposite will occur, and even greater diligence will be required in bringing the description into line with the claims.

The headnote to the decision is as follows:
“The claims are the starting point and the basis for assessing the patentability of an invention under Articles 52 to 57 EPC. The description and drawings shall always be consulted to interpret the claims when assessing the patentability of an invention under Articles 52 to 57 EPC, and not only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation.”

The EBA hopes to bring about a uniform application of the law with this decision. We are keen to see how this decision changes the approach of the EPO during both examination and opposition.

Please get in touch if you would like to discuss this topic further.

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