We now have confirmation of a new referral to the EBA on claim interpretation (G1/26). As previously hinted, The Board of Appeal in T 0873/24 has decided to refer questions on the application of G1/24 to the assessment of added matter. Following the decision of the EBA that the description should always be “consulted” for claim interpretation, the Boards of Appeal have struggled to find a uniform approach regarding what “consulted” actually means. Now the EBA is being asked to clarify whether description definitions can save a claim from an added matter attack.
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Legal background: Claim interpretation and added matter
Under Article 123(2) EPC a European patent application or patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed. The assessment of added matter relies on the very strict test of whether the amendment is directly and unambiguously derivable from the original application (the gold-standard test). This assessment first requires interpreting the claims, which is where G1/24 comes in. In G1/24 the EBA established that the description and drawings shall always be consulted to interpret the claims. The question then becomes whether consulting the description can save you and/or put in an added matter trap.
The relevance of G1/24 to added matter has been clear from the start, given much of the Board of Appeal case law cited in G1/24 concerned added matter, not least the infamous catastrophic comma loss cases (IPKat). In these cases, the loss of a single comma from the claims was considered to add matter, despite the claims consequently being out of step with the entirety of the rest of the disclosure.
Case background
The case concerned an appeal against the decision of the Opposition Division to maintain ArcelorMittal's European patent EP3587104 B1 (Coated Steel Strips) in amended form. The patent related to a pre-coated steel strip. Both the Patentee and the Opponent POSCO appealed the decision. The key issue in dispute was whether claim 1 added matter. Claim 1 specified that the base steel comprised various components by weight and further required that the ratio of titanium to nitrogen was in excess of 3.42.
The Opponent argued that because the claim did not specify the units for this ratio it encompassed other ratios such as a molar ratio which were not disclosed in the application as filed. The Patentee submitted that the skilled person reading the claim in context and consulting the description would understand that the ratio referred exclusively to a weight ratio. The central conflict was therefore whether the description could be used to restrict the interpretation of the claim to a weight ratio and thereby avoid an added matter objection under Article 123(2) EPC.
Three approaches to claim interpretation (Article 123(2) EPC)
The Opponent argued on appeal that the ratio feature was not limited to a weight ratio but was generalised by the omission of units. The Patentee submitted that the use of weight percent was implicit and supported by the description. In its review of the issue the Board of Appeal identified three divergent approaches in recent case law regarding the application of G1/24 to added matter.
Under the first approach the description is consulted only to define the skilled person and their common general knowledge. The Board of Appeal noted that under this approach "the person skilled in the art is not able to determine from the wording of claim 1 which kind of ratio is referred to and would assume that a molar ratio could also be meant. According to this first approach, this possibility also needs to be assessed but has no basis in the original application(s)" (r. 3.1). This interpretation would lead to a finding of added matter.
The second approach holds that the patent specification cannot be used to broaden or limit the claims. Under this view it is unwarranted to interpret a feature in a purposely restricted manner in view of the description. The Board of Appeal reasoned that interpreting the open ratio as a weight ratio would constitute a restriction. Because the broader unitless ratio was not disclosed in the application as filed this approach would also result in the claim violating Article 123(2) EPC.
The third approach adopts a holistic view permitting the broadening or narrowing of the interpretation based on the patent specification as a whole. This appears to be the approach adopted by the UPC. Following this approach the Board of Appeal found that the ratio was only mentioned in the context of a weight ratio in the patent. Therefore it would be reasonable to conclude that the claim relates exclusively to a weight ratio. This interpretation would satisfy the requirements of Article 123(2) EPC. Given these divergent outcomes the Board of Appeal concluded that a referral to the EBA was necessary.
Admissibility of the referral (Article 112(1) EPC)
In its interlocutory decision, the Board of Appeal then considered whether the referral was procedurally admissible. Previous case law has established a strict test requiring that a referral is only admissible if the Board of Appeal has concluded that the patent would be maintained despite all other grounds for opposition (T0116/18). The Board of Appeal in the present case departed from this strict approach finding it impractical and inefficient. The Board of Appeal stated that "An excessively formalistic approach could otherwise lead Boards to structure their proceedings in an impractical and inefficient manner examining every other issue before addressing the most straightforward one" (r. 4.4.2). The Board of Appeal preferred a less stringent test concluding that it is sufficient to demonstrate that the questions originate in the context of the case and that answering them is required when dealing with the case in a procedurally reasonable way. The Board of Appeal therefore also referred a question regarding the admissibility criteria to the EBA.
However, when a Board of Appeal has to devote so much of their referral to arguing for its admissibility, there is clearly a risk that the EBA will reject it outright.
The questions referred to the Enlarged Board of Appeal are therefore as follows:
1. May a decision be considered to be "required" for the purposes of Article 112(1) EPC, if the referring Board demonstrates that the point of law in question arises out of the context of the case pending before it and, in the circumstances of the proceedings, it is reasonable for the Board to examine it and decide on it next?
2 (a) Does the fact that the claims are the starting point and the basis for assessing the patentability of an invention generally preclude a feature which is only disclosed in the description or the drawings of a patent from being read into the meaning of a granted claim, in particular if this leads to a restrictive reading of terms used in the claim?
2 (b) If the answer to question 2(a) is no: is claim interpretation the result of both reading the claims and consulting the description and drawings as a unitary process and does the claim being the starting point and the basis for assessing the patentability rule out only those interpretations which can be derived from the patent as a whole but would clearly contradict the general technical understanding of the terms used in the claim?
3(a) When assessing compliance with Article 123 (2) EPC, must a term used in a claim be assessed against all interpretations that make technical sense to the skilled reader on the basis of the claim alone?
3 (b) If the answer to question 3(a) is no: is it sufficient that only the interpretations of the subject-matter of the claim established against the background of the patent specification as a whole are directly and unambiguously derivable from the application as filed?
It now remains to be seen whether the EBA will accept this referral. Will this new referral join G1/25 (description amendments) as a G1/24 spin-off? By accepting this referral the EBA would be implicitly accepting that its reasoning in G1/24, ironically, left much to interpretation. Arguably, this new referral is a consequence of the Board of Appeal's unwillingness to follow what many commentators initially thought was a clear direction from the EBA in G1/24 to use the description to interpret the claims (not merely consult and ignore). Further thoughts and analysis to follow.
Further reading
- G 1/24 in the spotlight: Description definitions do not override clear claim language (T 1999/23)
- Discrepancies in the description should be amended in line with the claims, but do not affect interpretation of the claims (T 0447/22)
- First interpretation of G 1/24 (the description must always be consulted) (T 1561/23)
- BREAKING: Imminent new referral to the EBA on the relevance of G1/24 to added matter
Reviewed by Dr Rose Hughes
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Thursday, June 04, 2026
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Play stupid games, win stupid prizes. This is the entirely foreseeable consequence of (parts of) the EPO clinging onto a reliance on utterly absurd acontextual literalism when it comes to claim interpretation. It beggars belief that - under the first, and arguably also the second of the approaches identified above - some Boards have disregarded the clear instruction in G 1/24 to avoid interpreting the claims in isolation in a way that is clearly contrary to the tribunals downstream of the EPO. What on earth has happened to common sense?
ReplyDeleteFairly easy answers!
ReplyDelete1. Question is inadmissible, but no (has to be answered to determine admissibility)
2a. Inadmissible
2b. Inadmissible
3a. Inadmissible
3b. Inadmissible
The statement: "the ratio of titanium to nitrogen is in excess of 3.42"
ReplyDeleteis related to the stoichiometric amount of titanium needed to tie up (fix) nitrogen as titanium nitride (TiN).
The reaction is: Ti+N→TiN
Where does 3.42 come from?
The atomic weights are approximately:
Ti = 47.87
N = 14.01
Since one atom of Ti reacts with one atom of N, the stoichiometric weight ratio is:
47.87/14.01 ≈ 3.42
Thus:
Ti / N = 3.42
corresponds to exactly enough titanium to combine with all nitrogen as TiN.
If the claim requires: Ti/N >3.42, then there is more titanium present than is needed to bind all nitrogen stoichiometrically.
Therefore, the ratio inherently relates to a weight percentage. A skilled person will understand this in five minutes. There is no need for any referral.
Indeed, an a molar ratio of 3.42:1 means even less nitrogen than a weight % ratio of 3.42:1 (11.7:1 cf 3.42:1).
Deletethen why not amend the claim to recite "weight"?
DeleteI also do not understand why the proprietor does not amend their claim to specify that the ratio is a weight ratio. If the ratio can only be a weight ratio, this amendment cannot introduce new matter or extend the scope of protection, can it?
DeleteI have commented the referral on my blog. My conclusion goes in the same direction as that of Anonymous of 04.06.2026 at 15:44:00 GMT+1.
ReplyDeleteSince by analysing the information given in the patent, the board could come to the most reasonable conclusion, i.e. that the ratio can only be expressed in weight %, I have doubts about the admissibility of the referral.
I see the referral as a further attempt to introduce the holistic approach as devised in T 439/22. All decisions applying G 1/24, even those dealing with added matter, have not adopted the holistic approach favoured in T 439/22.
It is interesting to see that a the conclusions drawn in T 439/22 a broadening or limiting interpretation has to be read into the claim also when it comes to added matter. .
Other decisions are also quoted in the so-called third approach, but they look more like having been put there so as not to base the whole argumentation on T 439/22.
If among all reasonable technical interpretations of the claim, duly taking into account the description as required in G 1/24, one of those is giving the skilled person a new technical information, then we are in presence of added matter.
t cannot be left to the applicant/proprietor to rely on the one interpretation found in the original description, to choose the one in which there is no added matter.
In T 0981/23, the board held that, if a claim allows for two different interpretations which are both technically reasonable for the skilled person, its meaning is not clear for the latter from the wording of the claim alone.
What applies to Art 84 necessarily applies to Art 123(2).
In T 2488/22, the board held that limiting the claims based on the description and drawings when such limitations are not derivable from the claims' wording would deprive Articles 123(2) and 100(c) from their meaning and purpose. This approach is clearly opposing a holistic interpretation of the claims. What applies to a limitation should apply mutatis mutandis to a broadening: it cannot be read into the claim. This is the position adopted by all the boards applying G 1/24, but T 439/22.
It should thus be manifest, that I do not agree with Anonymous of 04.06.2026 at 10:46:00 GMT+1.
DXT - if the specification discloses two interpretations, one of which corresponds to the wording used in the claims, then there can be no question of added subject matter as the claimed subject matter was originally disclosed, albeit along with an alternative. The proprietor is fully entitled to select part of the specification in order to rely on this disclosure for support.
Delete"If among all reasonable technical interpretations of the claim, duly taking into account the description as required in G 1/24, one of those is giving the skilled person a new technical information, then we are in presence of added matter.
Deletet cannot be left to the applicant/proprietor to rely on the one interpretation found in the original description, to choose the one in which there is no added matter."
Well this is an alarming take that is relatively easy to disagree with.
While there are always multiple ways of interpreting a claim, the claim does, as a matter of law and fact, have just one interpretation: the one which the skilled person would have understood the claim to mean from its own wording, having regard for the description, the drawings, and the common general knowledge. A proprietor might advance a particular interpretation that is advantageous to its position, while an opponent will do the same. The matter is not "left to the applicant" nor can the applicant "choose the one in which there is no added matter" - it is for the Division, the Board, or the Court to decide which interpretation is the correct one.
There is naturally scope to argue about what the notional skilled person would have understood the claim to mean, but that does not mean that a claim has two meanings; it has one. It was within the Board's power, and responsibility, to decide what this claim meant (does 3.42:1 necessarily mean 3.42:1 by weight; or does it not) and whether the claim has basis (if it necessarily means 3.42:1 by weight, then it probably does; but if it does not, then it probably does not). In making the referral, the Board abandoned its duty to decide and has created uncertainty on grand scale.
To recap, the phrase "the ratio":
ReplyDelete(a) has clear, unambiguous and verbatim basis in the application as filed; and
(b) is used in the description interchangeably with the phrase "the weight ratio.
I may be missing something, but nothing about these facts speaks towards the presence of added matter. Instead, as I have previously argued, the problem, if any, is a lack of clarity of the claims.
Indeed, I challenge anyone to read the Board's reasoning on added matter and persuade me that it is nothing other than a disguised clarity objection. Reasons 3.1 really gives the game away by framing the problem as "the person skilled in the art is not able to determine from the wording of claim 1 which kind of ratio is referred to".
Whether the subject matter of a claim can be determined with precision is an issue which pertains to clarity and not to added matter. Objections to the clarity of the claim wording in question should have been inadmissible under G 3/14, so how on earth did we get here?
Really, the main problems are the absurd claim interpretation approaches adopted by certain Boards of Appeal, namely:
- the acontextual ("primacy of the claims") approach which goes to extraordinary lengths to avoid reaching conclusions that are obvious if one only cares to read the description; and
- the even more crazy Schrödinger’s claim interpretation, whereby a claim is hypothetically theorised to have multiple possible (and mutually exclusive) interpretations and added matter is assessed against all of those interpretations.
Whilst it is depressing to see the complete absence of common sense in the build-up to the referral in this case, I think that it will all be worth it in the end if it elicits a ruling from the EBA that clearly and unambiguously tells Boards of Appeal to just get on and do their job, including by:
- reading the description (and appreciating that it provides relevant context for the claims); and
- interpreting the claims (instead of just doing half a job and giving up when it becomes a bit difficult to pick between various possibilities).
I find it somewhat surprising that the lack of the mention « by weight » applied to the Ti/N ratio, which seems to be a clerical error, could not be corrected before or after grant. In addition, the (a) section of claim 1 mentioned « by weight » in respect of the list of components, and looking at claim 1 as a whole could arguably suggest that it made sense to apply « by weight » to the Ti/N ratio as well.
ReplyDeleteAs to the referral, I concur with the reservations expressed on this thread. This seems far-fetched and also premature. The requirement to consult the description in G 1/24 is very general, the Boards should be free to apply in the specific situations they handle as they see fit. This will build the case law and it is normal if it takes some time.
In reply to the comments filed on 05.06.2026,
ReplyDeleteI expected some reactions, but nothing which has been said will induce me to change my position.
The comments are of very general nature and, for instance, do not look at the peculiarities of the case.
As the board was able to eventually decide that the only reasonable technical interpretation in the context was weight %, the admissibility of the referral appears rather doubtful. This point is not discussed in any of the comments.
I maintain that the present referral is to be seen as a further attempt to reopen the discussion on what is to be understood by “consulting” the description as defined in G 1/24.
If the EBA did not want to give a precise definition of what is to be understood under “consulting the description” and what should be the result of this consultation, it certainly had good reasons for doing so.
I see this especially in the refusal of the EBA to answer Question 3 in G 1/24. The EBA did certainly not say, like in T 439/22, that a broadening or a limiting definition found in the description ought to be read into the claim, although this was probably wished by a lot of people.
The position of all the boards applying G 1/24, but in T 439/22, was to say that:
1. if there is a limitation in the description of the matter for which protection is sought, it will not be taken into account when reading the claim, unless the claim is amended accordingly.
2. if the description contains a broadening definition of the matter for which protection is sought, the applicant/proprietor cannot hide behind a more limiting definition contained in the claim to fence off broader prior art.
Both positions take into account the content of the description as required by G 1/24.
Depending on whether or not a claim can be interpreted according definitions of the matter for which protection in the description compared to that the skilled person gets from the plain claim wording, a claim might well have two reasonable technical interpretations. See above here.
If two reasonable technical interpretations are possible, I maintain that it cannot be left to the applicant/proprietor to choose the one allowing him to escape a clarity or added matter objection.
Especially when it comes to added matter, in presence of two possible reasonable technical interpretations, it would completely empty the notion of “directly and unambiguously derivable” underlying the “gold standard” defined in G 2/10.
There is a further argument which I wish to bring forward once more: why should third parties have to delve into the depth of the description in order to find out what the definition of the matter for which protection actually is.
To obtain a patent or to maintain it in amended form, only the claims have to be present in the three EPO official languages, whereby only the text in the language of the proceedings is the authentic one. Not the description! Art 65 and the London agreement on translations is a matter for the designated contracting states, not for the EPO.
BTW, an objection of added matter should not be confused with a clarity objection, see T 2040/15, Reasons 2.1.
The mention « by weight » is obviously implied in claim 1 and supported by the description. It could have been added by a post-grant limitation, and before the UPC, the court would likely have interpreted claim 1 as including this mention by relying on the description per Art 69 or the file history estoppel based on the skilled person’s understanding of the application and/or applicant/patentee’s submissions.
DeleteThe case looks like a sheer pretext to launch a debate before the EBA, perceived as favourable to harmonisation with the UPC as G 1/24 has shown.
In my view, this is no reason for the EPO to strictly align its case law on claim interpretation to the UPC case law. G 1/24 has insisted that the present EPO case law remains valid. The principles are the primacy of the claims and the broadest sensible interpretation. This is necessary to prevent an unclaimed feature from being read into the claim and considered a limiting feature. This is fully relevant in the context of the EPO and necessary for legal certainty.
The UPC may be more flexible in this respect but its context is different. It handles the assessment of both infringement and validity, always defines the skilled person as a preliminary step of the claim interpretation section and heavily relies on the skilled person’s understanding of the description for claim interpretation, and it has shown it takes into account the file history estoppel.
That being said, an interpretation of claim 1 as including the mention « by weight » would not read an unclaimed feature into the claim, since the Ti/N ratio is mentioned in claim 1 and the mention « by weight » is implicit. Treating this mention as an additional feature to be read into claim 1 would be an overly formalistic application of the principles of the EPO case law, ignoring the requirement to consult the description of G 1/24.
Mr Hagel-06.06.2026 at 15.47.00 GMT+1,
DeleteThere is no surprise that the UPC favours the notion of the patent being its own dictionary.
It is actually the position taken originally by the German Federal Court (BGH). When looking at the imbalance in the case distribution in favour of German locations of the UPC, it is not a surprise that this case law has found its way at the UPC. In this respect, I invite the readership to look at some posts of Me Dhenne in Kluwer Patent Blog.
Even if local panels in Germany comprise a non-German LQJ (or TQJ), two former German judges will sit on the panel, cf. Art 8(3) UPCA. As they will then have the majority, their decision might understandably be influenced by the case law of the BGH. The situation is apparently less critical at the CoA, cf. Art 9(1) UPCA, but we should not forget that the chair of the UPC is a former German judge having a great influence.
I remember that, at a mock UPC trial held in Munich long before the opening of the UPC, Mr Zigann, now head of the Munich LD, making the comment to his German colleague on the panel, that "as we did so in Germany, we should continue". I was in the public at the time.
G 1/24 has by no means said that a limiting or broadening of the definition of the matter for which protection is sought should be read into the claim. It took a much more differentiated view and referred to existing case law, cf. G 1/24, Reasons 10.
Yet this was the position of the board in T 439/22. This position is at odds with all other decisions applying G 1/24. It happens that the LQJ in T 439/22 and in T 0873/24, the new referral, is one and the same person. This is not a judgement of value or a criticism, but a mere matter of fact.
To sum it up, I do fully agree with your comment of 06.06.2026 at 15.47.00 GMT+1
There is a rather easy answer to DXThomas' question:
Delete'There is a further argument which I wish to bring forward once more: why should third parties have to delve into the depth of the description in order to find out what the definition of the matter for which protection actually is.'
The answer is that it is what the legislator decided was necessary; hence Article 69EPC and its Protocol. If the hitherto daft EPO approach had been intended and it the scope of a claim was to be determined solely by its wording (which is often meaningless without consulting the description and drawings), why bother with Article 69 EPC?
@Anonymous of 09.06.2026 at 08.34.00 GMT+1
DeleteThere is a very easy counter question to your statement: have you read G 1/24?
I read the following in reasons 6 and 7 of G 1/24:
6. The Enlarged Board considers that neither Article 69 EPC and Article 1 of the Protocol, nor Article 84 EPC are entirely satisfactory as a basis for claim interpretation when assessing patentability.
7. Article 69 EPC and the Protocol are arguably only concerned with infringement actions before national courts and the UPC. Such a conclusion can be drawn from the wording of Article 69 EPC and the Protocol, the drafting history of these provisions, and from their position in the EPC, (Article 69 EPC is found in Chapter III, "Effects of the European patent and the European patent application").
The effects of European patent and a European patent application, are beyond the competence of the EPO. In other words, Art 69 EPC and the Protocol are there to give guidance to national or supranational courts when dealing with infringement (and validity) in post grant and post opposition procedures. Art 69 EPC allows to decide of infringement, directly, indirectly and/or by equivalent, and is thus not to be applied in procedures before the EPO.
As a European patent might be validated in a host of countries, having different legal traditions and possible interpretations of the EPC, the rationale behind Art 69 EPC and Art 1 of the Protocol is to come to interpretations which should be more or less coherent.
It is therefore the duty of the EPO to deliver a title in which third parties do not have to delve into the depth of the description in order to find out what the definition of the matter for which protection actually could be.
The description is there to show the skilled person how the applicant came to the invention and how to reproduce it. If the notion of primacy of the claims has any meaning, the description cannot be hiding further definitions of the matter for which protection is sought.
BTW, G 1/24 has made clear that the description has always to be consulted, not just in case of an ambiguity, but G 1/24 has not said that any broader or limiting definition of the matter for which protection is sought found in the description has to be read into the claim as has been asserted in T 439/22.
Actually, this is exactly was Agfa did in the famous Agfa/Gucci case before the UPC LD Hamburg. Although the claim was limited to achromatic, Agfa sued for infringement also of chromatic, feature which was deleted from the claim as granted in view of the prior art.
Having skimmed through all the above, and seen the piece in the Kluwer blog, the thought occurs, that the case might offer for the EBA a particularly straightforward matrix of fact which is useful for clarifying what the EBA meant by "consult" in G1/24, and this might make admissibility easier.
ReplyDeleteHow does the saying go: Bad cases make bad law (or something like that) ? How about the converse: cases with opportune matrix of fact can, if delivered early to the highest instance, make for good law. After all, it is the duty of the EBA not to obfuscate but, rather, to make the law clearer.
But perhaps it's too soon for the EBA to screw its courage to the sticking place, and define with greater precision, what it had in its mind with "consult"? Perhaps it wants a longer period of evolution, Darwinian, survival of the fittest line of legal logic, before it utters its Machtwort.
Max, I am not entirely convinced that this case is a suitable vehicle to probe what the EBA meant in G 1/24 by the requirement to "consult" the description.
DeleteAs I have previously commented, the only issue here is that the claims arguably lack clarity. Prior to G 1/24, it was relatively uncontroversial to consult the description to resolve issues of ambiguity. (I acknowledge that there were certain TBA decisions where the Boards refused to consult the description even in the case of ambiguities in meaning - though it is fair to say that those decisions were in the minority.) The question that I now have is why should G 1/24, which instructs us to always consult the description, make it more controversial to consult the description for the purpose of resolving an ambiguity?
Really, this is an open-and-shut case. Indeed, it strikes me that it may even be a stretch to assert that the claims are in any way unclear or ambiguous. This is because inserting the word "weight" before "ratio" in the claims would appear to be correctable as an obvious error. This is because not only would be immediately evident to the skilled person that there is an error in claim 1 but it would also be obvious to them how that error should be corrected.
For me, this is the clincher. This is because it is always the case that correcting an obvious error is only ever done as a tidying up exercise, and never because it is strictly necessary. In other words, there can be no doubt that those skilled in the art would read claim 1 as requiring the ratio to be a weight ratio.
Indeed, the only circumstances where there might be any doubt is where the claim is read by a moron in a hurry. Whilst that might be a standard that the EPO President's representatives argued for during the oral proceedings in G 1/25, I do not think that it is a way of reading claims that will ever gain any credence. Hence my doubts about whether this truly is the right vehicle to probe the divergence of views between different TBAs regarding the interpretation of the EBA's ruling in G 1/24.
The fact that this is not a Common Law jurisdiction allows for contradictory decisions to coexist. The disadvantage thereof may - to a certain extent and for a limited time - be offset by the possibility of different Boards engaging in a non-coercive discourse with each other. A non-coercive discourse ("herrschaftsfreier Diskurs") according to Wolfgang Habermas (elaborated in "Theorie des kommunikativen Handelns" 1981) has as its object a decision through the persuasive force of the best argument. It requires equal partners in a communication, an equal opportunity to be heard and a symmetrical situation, all of which is given when different Boards, which are not in a hierarchy amongst each other and are equally competent to interpret the EPC, decide on the same question of law and are forced to come up with better arguments when contradicting each other. Ideally, a sequence of such decisions can then lead to a common understanding as to the best argument and the best answer to a given legal problem. " to cite Mr Heath in T 0433/21
Delete@ Max Drei,
DeleteIt is a matter of fact that lots of people wanted in G 1/24 the EBA to adopt the position that any definition of the matter for which protection is sought found of in the description to be read into the claim. If the EBA refused to say so in G 1/24, why should it do so in G 1/26? This is the more so, since with added matter, the notion of “directly and unambiguously derivable” should not be jeopardised.
I also wish to observe that added matter and novelty are the two sides of the same coin. When for novelty the EBA simply required to consult the description why would it change when it comes to added matter and be more precise? There is ample case law on added matter and it is difficult to see what G 1/24 or G 1/26 could change. That the way the EPO applies Art 123(2) is not to the liking of lots of people, i a matter of fact, but this is not a reason to throw it overboard.
The comment in Kluwer Patent Blog, that the “scope of the referral is much broader and seeks general clarification on how claims are to be interpreted at the EPO. This is something that G 1/24 already sought to address”, show best why the referral should not be admitted.
I have never seen “prophylactic referrals” like the present one, but G 3/08 which was deemed not admissible. The considerations of the EBA with respect to the right of referral of the president of the EPO applies mutatis mutandis to the right of referral of a board. Just have a look at the headnote of G 3/08.
Further clarification is in my opinion neither desirable nor necessary, since there is a nice set of case law which has developed in the application of G 1/24, even when it comes to added matter. That T 439/22 is at odds with the way other boards generally apply G 1/24, does not warrant another referral on the same topic. There is no divergence in view of G 1/24 when it comes to added matter. This is a further reason for the referral not to be admissible.
When one sees the efforts put to light to try to justify the present referral, it says a lot. The problem the board has is not a problem of added matter and G 1/24, the board has a problem with the result of G 1/24 and the way other boards have applied it, the latter being in clear accordance with existing case law as suggested in G 1/24.
The whole case has been blown up in order to attempt to justify a referral. In view of the positions of the parties when it comes to the ratio of Ti/N, why did the board not ask them to justify their position like it has been done by some commenters. The board himself came to the conclusion that the ration is reasonably to be in weight %.
In the present situation and the present context, the proprietor could have filed a request for correction under R 139. In my opinion adding weight % in the claim does imply any added matter for a skilled person.
How nice, to see such shared thinking. I am happy that my last comment elicited such useful replies. DXT's ideas about deciding between different claim constructions come down to the question what a skilled technical reader would find "reasonable". Here, there is only one claim construction which a skilled reader would regard as "reasonable".
ReplyDeleteJust don't allow lawyers to postulate what is "reasonable" though. A zealous advocate has no trouble arguing that black is white, or whatever else favours their client.
I used to think that Binding Precedent is better than a non-coercive discourse. But when it comes to claim construction and matters of patent validity, I favour the discoursive route. If I were a betting man, I might put money on a bet that the EBA will decline to admit this reference.
@ Max Drei-08.06.2026 at 11.16.00 GMT+1
DeleteYou might think that the word “reasonable” gives too much leeway to a zealous advocate. I can agree with this, but “reasonable” is a term which is found in the case law of the boards, be it when it comes to added matter or to sufficiency.
For instance in T 1791/16, it was held all technically reasonable claim interpretations must be considered. If one of those interpretations contains matter that extends beyond the content of the application as originally filed, it must be concluded that added subject-matter is present.
Reasonable means reasonable for the skilled person, be it assimilated to a single person of a group of persons. This has nothing to do with a crazy interpretation which makes no technical sense. When a strength is defined above 200 Pa/square cm, saying that it might not work with 2000 Pa/square cm is not technically reasonable.
In T 1791/16, the Board gives no reasoning to support its conclusory statement that "If one of those interpretations contains matter that extends beyond the content of the application as originally filed, it must be concluded that a breach of Article 100(c) EPC has occurred." A more logical view would be that if one of those interpretations leads to a breach of Article 100(c), then that interpretation is not a correct one.
Delete@Kant 11.06.2026 at 11.32.00 GMT+1
DeleteYou complain that, in T 1791/16, the board has given no reasoning to support its conclusory statement. By merely stating “that if one of those interpretations leads to a breach of Article 100(c), then that interpretation is not a correct one” you have done exactly the same as what you complain the board did. Your statement boils down to a mere allegation without even the slightest attempt to justify it.
Contrary to what you say, the board has explained how it came to its conclusory statement. I invite to look at reasons 9.1 to 11 of the decision and you will see that the board explains its position very clearly.
The board’s conclusory statement is amply justified and can be endorsed in its generality, hence the mention of it in the catchword.
@MaxDrei
ReplyDeleteYour comment as to the « evolution » of « consult » was inspiring.
A key question is : « who » consults. You rightly refer here to the skilled reader. The « consult » of G 1/24, which is a general notion, implicitly includes the no less general noton of the skilled person esp. their CGK when the issue is whether a certain teaching not expressly disclosed in the application or in a prior art document must be considered implicit.
In other words, the skilled person is embedded in the « consult » of G 1/24. The evolutions affecting the definition of the skilled person will affect the « consult » notion as well. For example, the fact that the skilled person today is frequently a team including a specialist of a certain field of use – which may be itself non technical, such as legal, commercial or accounting, and a computer or data sciences specialist. Or the availability of IA resources as part of the CGK.
Another comment in reply to MaxDrei.
ReplyDeleteMr Thomas rightly points out that as to the assessment of new matter, there is no need for G 1/24, the assessment obviously requires that the description be consulted, more than that, it requires a thorough study of the description as understood by the skilled person.
There are other issues which would need clarification of the meaning/implications of the « consult » of G 1/24. A question of utmost importance, which is quite common in my experience, is how to interpret the mention of a field of use in a claim. There is uncertainty in the case law and the guidelines as to whether such a mention is a limiting feature for the assessment of validity. In the affirmative, the field of use is the art of the skilled person.
When you consider the language « a method (or apparatus) for .... << field of use A >> », examiners tend to interpret « for » as « adapted for A », i.e. they do not see it as a limiting feature, and not as « intended for A » which would imply it is limiting.
In such cases, it is typical to find clear insights in the description, e.g. it may be very clear that field A is the only field of use considered in the description and the problem as defined in the description is specific to field A.
I would like to find BOA decisions which address such issues, which are critical for practitioners in the drafting of applications. It is not seen how the referral of T 873/24 would help.
Here MaxDrei. The "for" field of use cquestion is interesting. It was one of the very first things my tutor alerted me to when I was a patent agent traineee. Beware, he counselled. It is ambiguous. In the worst case, the court will construe it when assessing validity of the claim as "suitable for" but when it comes to infringement will give it the narrower meaning "intended for". This is not "having your cake and eating it too" for the claim drafter but, in fact the diametrically opposite. You don't get your cake and you don't get to eat it either.
DeleteThis is why in claims written in the UK you seldom encounter the word "for".
I now look forward to DXT's "take" on the issue that you have flagged up.
Francis, the observation re: Art 123(2) EPC has more implications than you acknowledge.
DeleteTo establish whether the subject matter of a claim complies with Art 123(2) EPC, the EPO assesses that subject matter according to the uniform concept of disclosure. This involves interpreting the disclosure (of the application as filed) as a whole.
The question that is now being posed is whether G 1/24 requires the subject matter of a claim to be interpreted by considering the whole disclosure of the application as filed. However, in essence, this question boils down to something much more simple: for the purpose of assessing compliance with different provisions of the EPC, does the EPO use a consistent approach for interpreting the subject matter of the claims? If it does, then the uniform concept of disclosure applies equally to the assessment of patentability as it does to the assessment of added matter.
Referrals like show what happens when a lower court has been 'infantilised' by a higher court, and is a well known phenomenon in the wider legal system. The Enlarged Board is primarily responsible for not allowing the Boards of Appeal to have the confidence to give the appropriate meaning to 'consult' when looking at how to use the description in claim interpretation. Something similar happened with the US Federal Circuit being unable to develop a test based on the Alice decision by the US Supreme Court
ReplyDelete@Anonymous
ReplyDeleteThank you for your appreciation.
You had a good tutor ! The ambiguity of the “for” language may be deliberate but as you point out, it is risky. In my experience, it is safer to use the “intended for” language so as to make clear that the field of use is a limiting feature, if the problem addressed by the invention is specifically tied to the field of use of real interest to the applicant. Trying to expand the scope beyond this field typically brings a host of X-rated prior art.
It is interesting to note that the angora cat metaphor which depicts this type of situation is a European contribution. It was coined by Mario Franzosi, a leading Italian lawyer and law professor, and cited by Lord Justice Jacob in European Central Bank v Document Security Systems [2008] EWCA Civ 192. And this decision is of special interest in relation to T 873/24 in that it also dealt with the assessment of new matter in revocation proceedings.
@francis hagel-09.06.2026 at 18.27.00 GMT+1
ReplyDelete@Anonymous-11.06.2026 at 11.38.00 GMT+1
Her is my take on “for” in a claim.
In case of a claim to an entity
“For” is generally not limiting in a claim to an entity, unless it involves specific characteristics of the entity.
From the claim and the description, cf. G 1/24, it can be manifest to the skilled person that only a specific use has ever been envisaged for the entity.
Using the term “for” in a claim to an entity is not a necessity, but an entity which otherwise possesses all of the features specified in the claims and is suitable for the stated purpose or does not require modifications to enable it to be so used for said purpose, is anticipating the claim.
Conversely, an entity which otherwise possesses all of the features specified in the claims but which is unsuitable for the stated purpose or requires modifications to enable it to be so used for said purpose, is normally not considered as anticipating the claim.
An "Apparatus for carrying out the process...", is to be construed as meaning merely apparatus suitable for carrying out the process.
In case of second medical use claims, cf. Art 54(5), “for” is a limiting functional feature of the claim.
Similar considerations apply to a claim for a product for a particular use or to a claim to a substance or composition for a particular use.
A known product which prima facie is the same as the substance or composition defined in the claim, but which is in a form which renders it unsuitable for the stated use, does not deprive the claim of novelty.
If the known product is in a form in which it is in fact suitable for the stated use, though it has never been described for that use, it deprives the claim of novelty, cf. T 19/18.
In case of a claim for an action
In case of a claim to an action, “for” is in general limiting as it must often be considered as a functional feature of the claim to an action.
However, for a claim that is directed to a method or process the indication of an intended use of this method may at most be seen as limiting to the extent that the method has to be suitable for that use.
Such a claim would therefore be anticipated by a prior-art document describing a method having such suitability although not mentioning the specific use, cf. T 304/08 or T 1931/14.
In case of claims of the type “means-plus-function”
Functional features which define a technical result are permissible in a claim if these features cannot otherwise be described objectively more precisely without limiting the inventive teaching, and if the functional features reveal to the skilled person a sufficiently clear technical teaching which he can carry out with reasonable effort, including the performance of routine experiments, cf. T 68/85 and guidelines F-IV, 4.10.
A functional feature in a product claim should be construed as an implicit definition of those structural features which are necessary to achieve a particular effect when the product is used or applied in accordance with the teaching inherent in the claim. The effect to be achieved and the use should be disclosed in the application,
For the surplus, I refer to the Guidelines F-IV, 4.13.