An Elephant in the Room?

Can the referral questions of G1/24 be interpreted broadly to cover the need for adaption of the description? Reasoning for the final paragraph of CIPA’s amicus brief. By Greg Corcoran (Fellow) and Richard Lawrence (Fellow).

1. Introduction

The referral questions of G1/24 relate to the interpretation of the claims in view of the description and drawings; this is the focus of the arguments presented in the proceedings including the amicus briefs. Some consider broader implications, such as the Comments of the President of the EPO who effectively asked the Enlarged Board of Appeal (‘EBA’) to check whether the referral questions could impact the EPO practice of adaption of the description to match allowed claims (a topic which had previously been expected to be considered in a referral[1] given conflicting TBA decisions) and a few amicus briefs, one^[2] of which is from CIPA. The final paragraph of CIPA’s brief questions whether the EPO’s amendment practice is related to or even encompassed by the referral.[3]

This article by the authors of CIPA’s amicus brief sets out: why they included this question; considers their question in context of developments since filing the brief (such as a call for third-party observations should the scope of the referral questions be extended,[4] and the preliminary opinion[5]); and notes about the relationship with the developing practice of the UPC.

2. Prior relevant case law on claim construction

The Referring Board chose to refer the following questions to the EBA because it considered that a common approach to claim construction for patentability was lacking given diverging case law. Noting the referral questions (summarised for brevity):

Is Art 69 (1) European Patent Convention (‘EPC’) and the Protocol of Interpretation the legal basis for the interpretation of the claims when assessing the patentability of an invention (Articles 52 to 57 EPC)?
Should reference be made to the description and the drawings when interpreting claims?
Can a patent specification be a dictionary of definitions?

According to the first established line of case law noted by the Referring Board, e.g. T 223/05^[6], Art 84 EPC and not Art 69 EPC applies for EPO proceedings, and a patent claim should essentially be read and interpreted on its own merits rather than with the aid of the description and drawings. If the claim wording is clear to a person skilled in the art in view of the common general knowledge, reference to the description is unnecessary. Exceptionally, reference to the description and drawings may be made when a claim lacks clarity. Reading claims on their own, with reference to the description only if necessary to resolve an issue of clarity, is alleged to ensure that for a person skilled in the art the claims would be clear and unambiguous,^[7] this ensures a proprietor cannot unfairly adopt a narrower interpretation during prosecution than after grant, preventing the ‘Angora cat’ phenomenon.

In the second line of case law, e.g. T 1473/19, although account should be taken of the description and drawings when interpreting a claim,^[8] ‘the claims have primacy for determining the extent of protection’^[9]. Specifically:

‘claims must satisfy the requirements under Article 84 EPC so that they can fulfil their purpose of enabling the protection conferred by the patent to be determined under Article 69 EPC (cf. G 2/88, Reasons 2.5). Article 84 EPC, however, says nothing about how to interpret patent claims. At most, it defines the standard to be applied when assessing clarity.’^[10]

Thus, the description is considered for claim interpretation unlike first established line of case law, e.g. T 223/05.

3. The Referring Board’s third line of case law

The interlocutory decision, T439/22, identified^[11] the cause of the split case law as a failing of the Boards of Appeal to recognise a deviation in the application of the EPC during the development since 1989 of at least one of these lines of established case law on claim construction, as applied in T169/20^[12]. In doing so, the Referring Board identified a third line of case law that had been neglected. Prior to the deviation both G2/88 and G6/88, which were both decided on 11 December 1989, were considered relevant for the application of Art 69 EPC in context of the EPC. Instead, the Boards applied G2/88 to determine the extent of protection without considering the effect of G6/88. Following G2/88 Art 69 EPC applies to added matter post-grant Art 123(3) EPC; whereas G6/88 applies Art 69 EPC more broadly, to other grounds of patentability (Arts 54, 56, 83, Art 123(2) EPC). Reading these decisions together, Art 69 EPC can be applied to all substantive provisions regarding patentability of the EPC, in contrast to the two established lines of case law identified in T439/22.

This referral was timely for another reason. G2/88 was cited in NanoString[13] by the UPC Court of Appeal^[14] for its approach to claim interpretation. NanoString is now established case law of the UPC (Sodastream[15]). The Referring Board not only showed that the UPC has essentially the same practice of the national courts of some of the larger members states (i.e. France, Germany and England and Wales) regarding claim interpretation, but found ‘no national jurisdiction of the member states of the European Patent Organisation’ requires, when interpreting a claim to assess patentability, that a ‘person skilled in the art must find a claim unclear to be able to take the description and figures into account’.^[16] Could it be said that the UPC is advocating a different approach to claim interpretation to that established at the EPO?

The Referring Board presented the UPC’s approach to claim interpretation as essentially the same as the national courts, using the citation of G2/88 in NanoString. Is the Referring Board suggesting the EPO follow the UPC? In any event the citation by the UPC of early Board of Appeal case law indicates that the Boards of Appeal and the UPC are paying attention of each other, as noted in the Annual Report of the Boards of Appeal 2024[17].

4. Consequences of the Referring Board’s reasoning

4.1 Leading case law on amendment of description

T438/22, before NanoString, affirmed the practice of the Examining Division of bringing the description into compliance with the allowed claims, subject to the requirements of Art 123(2) EPC[18]. The Board affirmed that Art 69 EPC applies post-grant, although like all provisions of the EPC, it serves as part of the whole EPC to provide general guidance for the EPO.[19] Art 84 EPC [20] applies for claim interpretation during prosecution: ‘claims must be clear in themselves’.[21] The President cited this decision in his comments without reference to the other leading decision T56/21.

T56/21 published before the deadline for filing amicus briefs: it holds that there is no basis from Art 84 or elsewhere in the EPC for amending the description to comply with claims. Art 84 EPC applies for interpreting the claims during prosecution[22]. Art 69 (1) EPC is not relevant for claim construction during grant proceedings but is reserved for determining the extent of protection post-grant in court[23]. The Board considered claim construction inevitably differs before and after grant because of equivalence, Art 2 Protocol[24]. This is a provision absent from the referral questions (as was noted by this Board[25]).

4.2 Comparison with the interlocutory decision

The interlocutory decision, T439/22 suggests Art 69 (1) EPC and the Protocol rather than Art 84 EPC should provide basis for claim interpretation prior to grant, as well as post-grant, applying G2/88 and G6/88. In formulating the referral questions the interlocutory decision adopts an approach to Art 69 EPC and its Protocol that is based on early fundamental EPO case law derived from the underlying principles of the articles of the EPC. Critical here is the subject matter of the application, rather than the scope of protection. Specifically, subject matter relied on by the EPO, during examination and opposition proceedings, should be the same as that available to the courts post-grant, Reasons 4.1.1 of the interlocutory decision.

‘The extent of protection conferred by a European patent is determined by the claims (Article 69 EPC), and the claims of an application define the subject-matter of the invention for which protection is sought (Article 84 EPC). Thus, it is the subject-matter of these claims defining the invention that is examined for sufficiency of disclosure, novelty, and inventive step under Articles 83, 52, 54 and 56 EPC. As a consequence, it is of utmost importance that the subject-matter examined by the European Patent Office during grant and opposition proceedings be identical to the subject-matter taken as the basis for allowing monopoly protection by the national courts of the member states once the European patent is in force.’[26]

What could the Referring Board mean by ‘subject matter’ in this context?

4.3 What is ‘subject matter’?

In the context of the claims of an application, the subject matter of the invention is defined by the claims, for which protection is sought, Art 84 EPC. Yet reference to ‘subject matter examined’ relates also to sufficiency. Assessment of sufficiency necessarily considers the description, so subject matter must comprise the description and not only the claims. The claimed ‘subject matter’ – the examined subject matter under Art 84 EPC – corresponds to a portion of the subject matter of the description (Rule 42(1)(c) EPC[27]).

The Referring Decision, by reference to NanoString, argues that interpretation of a claim post-grant requires the claim wording to be read in view of the description and drawings; this is more than the strict, literal meaning of its wording. ‘The claimed subject matter extends to what appears to be the subject-matter for which [protection is sought]… after examination of the description and drawings.’[28] The Court’s assessment is independent of the Examining Division. If the patent was amended to comply with the allowed claims, the subject matter in the description may be affected, and the Court may have different subject matter available to it from the Examining Division, affecting its interpretation – should this be the case? The subject matter of the description that the Examining Division uses to assess patentability may be different from that used to interpret the claim post-grant. Thus, subject matter removed from the description prior to grant may in fact be relevant for determining the extent of protection after grant. Further, such removal, and not just addition, would add matter, Art 123(2) EPC. If all this follows, the ‘subject matter examined’ mentioned at paragraph 4.1.1 of the interlocutory decision therefore must equate to the full description as filed.

5. CIPA’s question

CIPA’s question asks,

‘This referral does not explicitly relate to the question of amendment of the description for conformity with the claims, though paragraph 4.1.1 of the interlocutory decision does state that ‘it is of utmost importance that the subject matter examined by the EPO during grant and opposition proceedings be identical to the subject matter taken as the basis for allowing monopoly protection by the national courts of the member states once the European patent is in force.’ Here we would note that amendment of the description after the examination process has established claims, but before grant, risks changing the subject matter in the granted patent from the subject matter examined. Such a change may not only constitute added matter but also lead to differences in determination of the extent of protection of claims between prosecution and post-grant proceedings.

Thus, any change to the content of an application relative to that originally filed might not only constitute added matter, but it might risk interference with determination of the extent of protection of claims during prosecution and after grant.

6. Possible implications

6.1 Broader interpretation?

If CIPA’s observation is correct, could the referral questions have a broader interpretation than their express wording? Could the freedom to amend the description prior to grant be derivable from the arguments of the interlocutory decision? should amendment to the description during prosecution be more restrictive than current practice?

6.2 Broader interpretation: EPO practice?

The latent implication is that in answering the referral questions, the EBA may inevitably have to consider the EPO’s practice of adaption of the description. Although T56/21 (published just before the amicus brief was filed) decided such consideration was not necessary, the arguments used in CIPA’s question, from the interlocutory decision, pre-existed that decision.

Further, since the interlocutory decision, as noted, cites UPC established case law on the use of the description in claim interpretation, could it be that the Referring Board is asking whether amendment of the description risks adding matter and changes the material available in the description for claim interpretation post-grant relative to that available at filing?

If the EBA affirms that Art 69 (1) EPC and the Protocol apply before and after grant, its decision would not only define a new line of case law (e.g. reinstating G2/88 and G6/88) on claim interpretation, but it would affirm a new approach that could call into question the leading cases on amendment of the description – the practice of the EPO, supported by the President’s Comments.

There is a risk whether the decision adopts such an approach: the decision could differ from established UPC case law or the existing approaches of the established, albeit split, practice of the EPO to amend the description, could be called into question. However, the EBA decides, there could be unexpected, and unintended consequences.

7. Checking whether CIPA’s question is still relevant in view of the preliminary opinion

The relevance of these implications can be checked by considering the first answer to the preliminary opinion of the EBA, which is:

Question 1: The Enlarged Board recognises the interests in uniform application of the principles in claim interpretation in patent grant proceedings at the EPO and the Boards of Appeal and in post-grant proceedings before the administrative departments of the EPO and the Boards of Appeal and also in post-grant revocation and infringement proceedings before the [National] courts of the EPC contracting states, including the UPC.

Yet in its preliminary answer it predicts two questions should be answered: whether the principles of interpretation as set out in Art 69(1) 2^nd sentence EPC and Art 1 of the Protocol are to be applied to the interpretation of claims when assessing patentability of an invention (Arts 52 to 57 EPC); and if these provisions are the legal basis for these principles.

The EBA recognised ‘the interests in a uniform application of the principles in claim interpretation pre- and post-grant’, which are noted in reformulated questions the EBA is referring to Art 69 and its Protocol. The arguments CIPA identified in the interlocutory decision, if the authors have correctly identified them and interpreted then, are just such an interest in uniform claim interpretation pre- and post-grant. CIPA’s question remains valid.

8. A broad interpretation of the referral question

That the referral questions could be broadly interpreted to question the legitimacy of amendment of the description could have implications for the proceedings. If it were considered that the issue of amendment of the description was clearly present in the environment of the referral, then the President can be argued to have simply answered the referral questions as they were presented to him; his comments would be in scope.

Why has no other party addressed this additional matter? It is not that both parties to the proceedings and all 28 amicus briefs failed to address a part of the three referral questions. These parties may have chosen a narrower interpretation of the referral questions or saw no justification for commenting on the additional matter. The questions did not explicitly ask such a question. Alternatively, they might not have a settled view on the issue (which is well understood to be controversial amongst patent practitioners).

We wrote the amicus brief on behalf of the CIPA membership. They have a diverse range of views on this topic. So, we decided to note this issue in our brief as an argument derived from the arguments of the interlocutory decision. Answering such a question seemed inappropriate; it seemed more important to draw attention to this argument in proceedings, presenting it as a question for the EBA and refraining from taking a position either for or against the practice of amending the description on allowance. As representatives of a large interest body, we felt that identifying such a fracture in the law was sufficient.

Irrespective of how the EBA eventually decides, the preliminary opinion has not excluded the possibility that the decision will have consequences on the EPO practice of amending the description. Since the referral questions can be demonstrated under a broad interpretation to relate to the question of amendment of the description, it would be immaterial as to whether the EBA considers these arguments as presented in the President’s Comments: the issue is latently present in the Referral.

9. Right to be heard on amendment of description is expired.

John B Pegram filed third-party observations, to anticipate the EBA should they extend the Referral to address arguments made in the President’s Comments about the EPO practice of amending the description to allowed claims. He argued interested third parties should have the right to be heard.

If the referral questions are found to encompass the question of adaptation of the description to the allowed claims, the EBA could decide that interested third parties may have foregone their right to be heard by failing to address legal implications flowing from the referral questions in their original amicus briefs. (this would be unusual, however). The EBA could decide that right to file observations expired with the deadline for submitting amicus briefs and, from a possible objective perspective, those interested parties had a clear and express opportunity to express their views. This will be a point to watch.

10. Additional observations about the UPC: impact of the UPC

As the President notes in his Comments, a reason the description is amended at grant is to restrict the diverse range of national courts in taking various positions due to the different approaches to the same legal principles of European patent law applied to the same claims. Amendment of the description is intended to enable the same part of the description as used by the Examination Division to be used post-grant.

In T56/21 the Board argued that maintaining this practice is unnecessary because, since 1 June 2023, the UPC, a long-awaited transnational court, is initiating change because infringement and nullity of a European patent are within the same UPC proceedings. Given the opt-out will persist during the transitional period, the finding of T56/21 may be premature, but the UPC could lead to greater consistency in claim interpretation[29] than even the national courts applying a common approach (corresponding to the UPC approach). A more uniform application of Article 69 EPC could eventually be achieved. Given these developments, would it be reasonable to understand that, from a policy perspective, adaption of the description to amend claims would not be required? Would such practice disregard the legislators’ choices of introducing the UPC and of not amending the EPC to require amendment of the description at allowance?[30]

Although these views are clearly held by some at the EPO, it will be interesting to see whether this is consistent view held across the EPO and by the EBA in this Referral.

11. Considerations for the Enlarged Board of Appeal (‘EBA’):

There are plenty of issues at play in these proceedings. Fundamentally, a broad interpretation of the referral questions can be derived from UPC case law and arguments of the interlocutory decision. Inherent risk exists in the present situation. It is for the EBA to decide whether so broad an interpretation is appropriate and various outcomes are possible.

11.1 Consistency with the UPC:

The Board could decide claim interpretation prior to grant should be consistent after grant, and that this would be inconsistent with EPO practice of amending the description to comply with allowed claims. Patent practitioners have long waited for a referral on this issue. Many would be disappointed that this question could be decided without their right to be heard. The EBA could take the position that parties had the right to be heard because this question was self-evident from the referral questions in view of the leading case law. This outcome lacks precedent and seems unlikely.

11.2 Consistency with established EPO practice:

The Board could approve the established practice of the Examining Division in applying Articles 69 and 84 EPC. There would be less disruption to prosecution before the EPO, yet adaption of the description before allowance would be maintained, arguably inconsistently with UPC case law – a possible disincentive to potential users. Such amendments might seem a source of unnecessary costs should the UPC ignore such amendments. This practice could also have unintended consequences in other jurisdictions such as the US, which in post-grant proceedings considers prosecution of equivalent applications.

11.3 No or limited reference to Art 84 EPC:

The referral questions and the preliminary opinion only refer to Art 69 EPC and the Protocol and do not refer to Art 84 EPC. The EBA could decide not to refer to Art 84 EPC in its decision or to restrict reference to claim interpretation. Even if the referral questions could be interpreted broadly, the EBA may decide its decision should not refer to the practice of amendment of the description; this issue was not expressly asked in the referral questions. Although the EBA might try for its decision only answers the referral questions, interested parties might still find that the decision impacts issues extraneous to the referral questions. Not only might interested parties complain of their loss of their right to be heard, but the EPO practice for amendment might remain unsettled.

11.4 Something else?

The EBA can of course choose how it decides. Yet how the Board decides may also depend on what it considers its role to be and whether it considers its role to have changed given the existence of the UPC today.

12. Summary

What is no doubt clear from the proceedings in G1/24 is that all parties seek certainty from the answers of the EBA to the referral questions. It is in the EBA’s hands whether, when answering the referral question, they account for the practice of adapting the description that is latently evident in the referral questions. The EBA will hear oral representations on 28 March 2025; the decision is currently expected mid-2025.

Greg Corcoran is at Greg Corcoran IP, [email protected]
Richard Lawrence is a partner at Keltie, [email protected].

[1] T56/21

[2] The other two are critical of the practice of amendment of description.

[3] See CIPA’s comments at December [2024] CIPA 10.

[4] Third-party observations filed by John B Pegram, 20 November 2024.

[5] Communication 6 February 2025

[6] E.g. T 223/05, T 1404/05, T 1127/16; Case Law of the Boards of Appeal II.A. 6.1 paragraph 2

[7] Art 84 EPC; Case Law of the Boards of Appeal II.A. 3.1 para 14; T 574/96, T 1020/98

[8] Art 69(1) EPC, Protocol on Interpretation of Art 69 EPC; second sentence; para 3.16.1 T1473/19

[9] Art 69(2) EPC, second sentence, para 3.16.1; T1473/19

[10] See para 3.8 T1473/19, referring to G2/88, Reason 2.5. .

[11] Reasons 3.2 to 3.2.3 of the Referral

[12] Reason 3.2.1 (paragraph 2) and 3.4.2 of the Referral; see also paragraph 5.1 of the Communication of the Board of Appeal dated 5 December 2023.

[13] NanoString Technologies v 10x Genomics, UPC_CoA_335/2023; App_576355/2023 26 February 2024

[14] Reason 4.34, especially last sentence, of the Referral.

[15] SodaStream Industries Ltd v Aarke AB, UPC_CFI_373/2023; ORD_598499/2023; ACT_580849/2023, 31 October 2024

[16] As defined in T169/20; see Reason 4.3 to 4.3,3 of the Referral.

[17] Foreword by Carl Josefson, President of the Boards of Appeal, page 2, 6^th paragraph and page 35, 4^th paragraph Annual Report of the Boards of Appeal.

[18] T438/22, Reason 5.6.5 ( see Arts 84 and 94(3) EPC and Rules 42, 48 and 71(1) EPC) and Reason 6.8

[19] Reason 5.4.5 T438/22

[20] Reason 5.7.2 T438/22; applying Art 84 EPC with Art 83 EPC and Rule 42 EPC

[21] Reason 4.5 T438/22

[22] Reasons 9 to 15 & 99 T56/21; applying Art 84 EPC with rule 43 EPC.

[23] Reasons 34 & 36, T56/21

[24] Reason 51, T56/21

[25] Reason 49, T56/21

[26] Reasons 4.1.1 & 2, T439/22

[27] rule 42(1)(c) EPC the description discloses the invention, as claimed, in such terms that the technical problem, even if not expressly stated as such, and its solution can be understood.

[28] Reason 4.3.4 paras 3 & 4 NanoString, T439/22

[29] Reason 23 and 103 last sentence T56/21; Reasons 50 last sentence and 51 T439/22

[30] Based on Reason 103 T56/21

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