What is the true meaning* of EPO Enlarged Board of Appeal decision G1/24?

(*consult the description for more details)

“When I use a word,” Humpty Dumpty said in rather a scornful tone, “it means just what I choose it to mean—neither more nor less.” (Lewis Carroll, Through the Looking-Glass, and What Alice Found There)

Now that the Enlarged Board have issued their decision in this case, it is time to consider the implications of the ruling and the effects it may have on patent drafting, prosecution, and enforcement. Our earlier brief summary of the decision in G1/24 can be found here. An even briefer summary can be found in the one-sentence headword of the decision:

The description and any drawings are always referred to when interpreting the claims, and not just in the case of unclarity or ambiguity.

So what are the implications of this for patent strategy? I believe there are five main takeaways from the decision.

Firstly, the Enlarged Board is clear that this decision is not concerned with patent infringement: The Protocol to Article 69 EPC defines how to interpret the scope of protection of a European patent, and instructs us to take a path “between the[] extremes” of a “strict, literal meaning” of the claims and using the claims “only as a guideline”.  In G1/24 the Enlarged Board state that “Article 69 EPC and the Protocol are arguably only concerned with infringement actions before national courts and the UPC”. 

This continues a long-standing EPO practice of confining themselves to matters of patent grant, and not considering enforcement (a practice which can be frustrating during patent prosecution if an examiner insists on some unhelpful amendment!) Indeed, the EPO’s approach could perhaps be summed up in the words of the great American singer-songwriter Tom Lehrer: “That's not my department…” 

However, in this decision the Enlarged Board do at least appreciate that patents granted by the EPO may find themselves in post-grant actions, and that it would be “a most unattractive proposition that the EPO deliberately adopt a contrary practice to that of the tribunals that are downstream of its patents.” For this reason they consider the approach of the UPC to claim interpretation and conclude that the EPO approach is consistent. Note that the caution is around deliberately adopting a contrary practice; there is no doubt that such practices will still inevitably arise as case law evolves, perhaps requiring future adjustment with additional Enlarged Board rulings.

Secondly, despite what the Enlarged Board say, this will inevitably impact patent infringement strategies. A greater focus on interpreting the claims in light of the description will provide avenues for “squeeze” arguments to play off validity against infringement.

Thirdly, the decision leaves open the question of what exactly is meant by “referring to” the description. As has been observed elsewhere, the decision does not require the reader to strictly follow the description. We are not quite in the world of Humpty Dumpty, where the patentee has free rein to redefine terms as they wish. In my view it is likely that a practical approach would be to adopt the practice of determining what the skilled person would understand the claims to mean – whether this is in line with any definitions given in the description or whether these definitions may be consulted and then discounted. It does not mean that the intent of the patentee must be taken into account. This also follows the established EPO approach that “the patent must be construed by a mind willing to understand, not a mind desirous of misunderstanding”. That is, if following the description would result in a nonsensical meaning, it must not be rigorously followed.

Fourthly, this decision reinforces the already strong argument against use of boilerplate definitions in patent drafting. In my view, any definitions given in the description should be carefully considered to ensure that they are actually consistent with how you intend to define your terms. While a claim may be clear on the face of it, in light of this Enlarged Board decision, that is not sufficient to overlook any inconsistent or alternative definitions given in the description. (This may also be a Cassandra-like argument against using LLMs or other generative AI to prepare “standard” patent descriptions).

Finally, there will be a number of linked impacts on patent prosecution. This decision perhaps opens the door to the EPO further enforcing their requirement to align the claims and the description before grant. After all, if interpreting the claims in light of the description risks finding that the scope of protection is not purely defined by the clear wording of the claims, surely this will give rise to a lack of clarity? And what better way to avoid that lack of clarity than to ensure that the claims and description are fully aligned? Of course, there is much chatter among patent attorneys as to whether there will be a referral to the Enlarged Board regarding the requirement to bring the description into line with the claims. Much like full self-driving cars, or sending a crewed mission to Mars, such a referral has long been expected “imminently”. If this does happen, it will be interesting to see whether G1/24 features in the Enlarged Board’s reasoning.

It also seems to me that this requirement to amend the description now poses greater risks of inadvertently adding matter going beyond the application as filed, or extending the scope of protection after grant in opposition proceedings, both potentially fatal violations of Art 123 EPC. Again, if the meaning of a term in a claim is determined in part by reference to the description, it is clear that any changes to this may impact how the skilled person interprets the claims. While this may argue against the requirement to bring the description into line with the claims, it is difficult to see that patentees can resist the EPO on this front. Perhaps the position to take is that any such amendment is simply recognising what was always implicitly disclosed by the application as a whole, when interpreted correctly.

It also remains to be seen how examiners will apply this decision to novelty and inventive step. Given the realities of examining, it seems most likely that initial objections will still be raised on the basis of the clear wording of the claims (if indeed they are clear). There may be scope for attorneys to push back with a different interpretation based on reference to the description, at which point it will be for the examiner to engage with the substance of such an argument. However, I would expect that this will be met with further clarity objections if the claims are considered to mean something other than the superficial interpretation. Further, patentees may not want to risk potential prosecution estoppel if this continues to develop at the UPC.

In summary, although this decision has generated many column inches and much sound and fury, the actual impacts may be more limited and more nuanced. It obviously reconfirms my own biases against thoughtlessly using boilerplate when drafting, and will I hope be used to reaffirm the sensible approach of determining the scope of a claim based on the skilled person’s understanding of the documents as a whole. Possibly the greatest consequence for prosecution will depend on how the EPO apply this to the requirement to amend the description in line with the claims before grant.