24.06.2025
The decision in G1/24 (Heated Aerosol) has now issued, and given the important principle of patent law involved, its brevity is impressive. At twelve pages in total including five pages of actual decision, this is among the shortest of the “short” Enlarged Board of Appeal decisions (in contrast to “long” decisions such as G1/19). “Short” decisions look to identify what question has to be answered and to provide as succinct an answer as possible, whereas “long” decisions look to tease out an answer to a complex question and often to give guidelines for applying the decision itself. G1/24 is the epitome of a “short” decision.
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G1/24 is a reference from the opposition appeal T 0439/22, where the decision on novelty rested on interpretation of the term “gathered sheet” in claim 1. There was a usual meaning for this term in the art (vaping), and using this meaning, claim 1 was novel. However, the specification also included a broader definition of the term, under which claim 1 was not novel. In a long referral including an extensive analysis of case law, the referring board diagnosed three lines of decisions relating to the legal basis for claim interpretation: one essentially following Article 69 EPC and Article 1 of the Protocol on the interpretation of Article 69 EPC (“the Protocol”), another disregarding Article 69 as only relevant to post-grant proceedings and relying on Article 84 EPC, and a third line that does not explicitly identify a basis.
In the decision, the Enlarged Board cut through this tangle very quickly. Article 69 EPC, strictly speaking, only applied post-grant, so could not provide the formal basis for pre-grant claim interpretation. Article 84 EPC also was not itself a satisfactory basis – it provides formal instruction as to what needs to be in the claims and provides no guidance on interpretation. Happily for those who prefer short decisions, the Enlarged Board did not decide that this situation required the invention from scratch of new principle of claim interpretation – clear principles could be found in the case law as exemplified by the compendium of cases provided by the referring board. Only two principles needed to be followed:
These essentially form the Order provided by the Enlarged Board. As no-one involved in any way with European patent law is likely to disagree with principle 1, this leaves one “new” principle, principle 2. The Board disposed of remaining matters rapidly using this principle. Only the case law seeking to apply Article 84 alone in claim interpretation was explicitly rejected. Article 69 could not be ignored without highly undesirable divergence between EPO case law and national and UPC case law – it is notable here that the UPC Court of Appeal decision in NanoString Technologies v. 10x Genomics is explicitly cited (and is identified in the Datasheet as “Decision of the Unified Patent Court cited:”).
Can all questions of claim interpretation be solved by gazing deeply into this decision, small, complete, and perfect, or do questions remain? The first question is what does all this mean for EPO practice? This is handled in the one “guidance” paragraph, paragraph 20, which is likely to be invoked more frequently than any other part of this decision.
20. The above considerations highlight the importance of the examining division carrying out a high quality examination of whether a claim fulfils the clarity requirements of Article 84 EPC. The correct response to any unclarity in a claim is amendment. This approach was emphasised in the Comments of the President of the EPO (see para 87, 109 and the last sentence of para 135 of these comments).
The President’s comments provided answers to the referring Board’s questions in the light of the existing practice of the Examining Division, and provides justification for the existing practice of the Examining Division. The sections identified by the Enlarged Board relate to the following practices:
This guidance is interesting, but raises more questions as follows.
1 - Does this decision change the interpretation of claims up to grant?
In practice, probably not in any material way. The pragmatic line taken by the Enlarged Board follows the practical approach taken by the Examining Division, as documented in the EPO Guidelines for Examination, and is well aligned with post-grant interpretation by the courts.
2 - Will this decision change Examining Division practice in examination?
The only guidance given to the Examination Division is to take great care over Article 84 EPC issues. This has the side effect of Article 84 EPC not being available for use in opposition seeming even more perverse, but the status of Article 84 EPC in opposition is settled case law and outside the scope of this decision. This emphasis on Article 84 may encourage potential opponents to make Article 84 EPC challenges in third party observations before grant, but this is clearly risky – on the one hand it may affect the prosecution to suit the potential opponent, on the other it may result in the quality of the granted patent claims being improved. There is however a supplementary question, which exercises many (though not all) patent attorneys and may be the subject of its own referral shortly.
2a - To what extent should the description be modified to conform with (agreed) claims?
EPO practice has for some years been to require amendment to the description where it is determined to be inconsistent with the claims – this commonly comes in the form of an extensive list of Examiner amendment to the description in the text proposed for grant. Examining Division practice follows the Guidelines at F.IV.4.3. Subsection (iii), directed to where a part of the description and/or drawings is inconsistent with the subject-matter for which protection is sought, has attracted particular attorney concern for a variety of reasons including the danger of introducing an Article 123(2) EPC violation. There have been conflicting Board of Appeal decisions on this issue (most recently T56/21 and T438/22), and a referral to the Enlarged Board is expected on T0697/22 (this case relates to inconsistency found in opposition or appeal, but any answer may have a bearing on the position in examination). Some commentators anticipated that G1/24 would provide clear guidance on this issue. It has not done this, and supporters of each position could find some reasoning to support their position: on the one hand, that the claims should be interpreted in the light of the description and drawings as provided, and that modification of the description and the drawings to comply with the claims could be considered to change this interpretation; on the other hand, that the overriding need for the claims to be clear requires points of potential conflict between the claims and the description to be eliminated. This latter position is the one set out in the EPO Guidelines for Examination, and the explicit reference made by the Enlarged Board to specific sections of the President’s letter implies support for this position. However, an explicit reference of a relevant question to the Enlarged Board is both desirable and arguably overdue.
So, the Enlarged Board has given a clear and uncontroversial looking answer to a pair of fundamental questions concerning claim interpretation. Not much appears to have changed fundamentally as a result – probably to the satisfaction of most stakeholders in the European patent system – but not much has really been resolved either.
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