GJE observed the eagerly anticipated G 1/24 Enlarged Board of Appeal hearing held on 28 March 2025.
The referral G 1/24 is of fundamental importance, and answers to the questions raised will be relevant to every European patent and patent application. The referral aimed to clarify purported legal uncertainties as to whether and, if so, how and under what circumstances the description and drawings should be used to interpret patent claims when assessing the patentability of an invention at the European Patent Office (EPO).
The Enlarged Board did not announce its decision at the hearing and so we will need to wait for its written decision for the detailed answers that it will give to the referred questions. However, both the proprietor and opponent, as well as representatives of the President of the EPO provided considered arguments at the hearing, which the Enlarged Board will review in preparing its decision.
The arguments presented at the hearing focused on the questions referred to the Enlarged Board under G 1/24 (“Heated aerosol”), which are as follows:
- Is Article 69(1), second sentence EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC to be applied on 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?
Much of the debate at the hearing centred on whether Article 69(1) EPC applies only to the interpretation of the scope of granted claims, or if it should also be legal basis for assessing patentability. Article 84 EPC was also purported to be legal basis for interpreting the scope of the claims of a patent application.
Other core themes to the arguments were the principle of primacy of the claims for determining the extent of protection conferred by the European patent, and the principle of using the description and drawings to interpret the claims. In this context, views were expressed on the need for consistency between a definition of a claim term in the description and the generally accepted definition of the same term in the art. The potential need to amend the description when inconsistencies occurred was also raised, which in itself is a contentious topic that may result in its own referral to the Enlarged Board very soon, as discussed here.
We look forward to the Enlarged Board’s written decision being published, which is likely to happen later this year. We will be reporting as the case progresses, so follow us on LinkedIn for further G 1/24-related news and insights. In the meantime, please contact us if you would like to discuss the potential relevance of G 1/24 to your business, or email gje@gje.com.
