The EBA decision in G 1/24, on the role of the description in claim interpretation, left a key question unanswered. Whilst the description must always be "consulted" following G 1/24, does this mean that a definition in the description can or should be used to override an otherwise clear technical meaning of a term in the claim? The first Board of Appeal decision to apply G 1/24 (T 1561/23) noted this ambiguity but did not need to decide on it for the case at hand (IPKat). We now have the first decision to directly address this important question (T 1999/23). This decision provides the first application of G 1/24 to a case in which the description and claims are in direct conflict. The Board of Appeal was unequivocal in its finding that, whilst the description should be consulted, clear claim language retains its primacy over restrictive definitions provided in the description.
Legal background: G 1/24 and consulting the description to interpret the claims
In G 1/24, the EBA stated that:
The claims are the starting point and the basis for assessing the patentability of an invention [...] The description and drawings shall always be consulted to interpret the claims when assessing the patentability of an invention [...] and not only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation.
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| G1/24 in the spotlight |
Case Background: LED excitation area
We now have the first decision to directly consider how G 1/24 should be applied in cases of a description definition that contradicts the normal clear meaning of a term used in the claims. The case T 1999/23 involved an appeal of the Opposition Division decision to uphold EP 3086087 in amended form. The patent related to a photothermal measuring device. Claim 1 on appeal specified a device comprising a light source for heating a sample and an infrared detector to detect the thermal radiation from that heated sample. Claim 1 required that the light source be an LED having an "excitation area" of a specified size. The main substantive issue on appeal was the novelty of the invention in view of a novelty only prior art document. The novelty question itself depended almost entirely on how the term "excitation area" should be interpreted.
Applying G 1/24 to description definitions
The Board of Appeal considered the different approaches to how the claim term "excitation area" should be construed. The Board of Appeal first noted that the term excitation area had a clear meaning in the art. The Board of Appeal found that a person skilled in the art would normally understand "excitation area" to mean the cross-sectional area of the excitation light on a sample, which varies with the distance from the measuring head and is not inherently limited. By contrast, however, the patent's description contained its own very specific, and restrictive, definition of the term. The description particularly stated that the term "excitation area" meant "the cross-sectional area of the excitation light at the focus."
The Board of Appeal therefore had to decide which definition of the term had primacy and should be used for patentability analysis: Should the claim be interpreted according to the skilled person's normal understanding of a clear, broad technical term in the claim, or should the claim be interpreted using the more restrictive definition of the term provided in the description? Referencing G 1/24, the Board of Appeal acknowledged that the description must be considered. However, for the Board of Appeal it remained a core principle of claim interpretation, supported by established case law, that "a restrictive definition of a term in the description may not be used to restrict the subject-matter of the claim, which would otherwise appear clearly broader to the skilled person" (translation from the German) (see also Case Law of the Boards of Appeal, II-A-6.3.4). G 1/24 did not change this principle.
The Board of Appeal thus concluded that the term "excitation area" should be interpreted in its usual, broad technical sense, and not limited to the area at the focus. Using this interpretation, the novelty point became straightforward. The Board of Appeal found that in the device of the prior art, "any size excitation area can be generated by choosing a suitable distance." The Board of Appeal concluded by rejecting all of the Patentee's requests and ordering revocation of the patent.
Final thoughts
Applying G 1/24, the Board of Appeal in T 1999/23 consulted the description, found a definition that was inconsistent with the clear technical meaning of the term used in the claim, and ultimately gave primacy to the claim's wording to ensure legal certainty. Therefore, for this Board of Appeal at least, consulting the description does not mean the definitions in the description should be used to override otherwise clear claim language, especially when doing so would run counter to established technical terminology.
We will now have to wait to see if other Boards of Appeal follow this interpretation of G 1/24. There are a number of pending appeal cases that will have to make their own judgement on the same question of whether description definitions can or should override clear claim language, not least the referring case in G 1/24 and a case involving the same patentee (T 0941/23). Stay tuned!
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Reviewed by Dr Rose Hughes
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Thursday, July 24, 2025
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Based on this I'm struggling to see the scenarios where the G 1/24 decision ever applies in between a term in question having
ReplyDeletea clear technical meaning ... and .... the case of unclarity or ambiguity
...
This BOA decision is consistent also with the general principles developed from a review of the EPO and national case law in T0439/22 (the G1/24 referring decision). The other principle drawn out there is that a broadening disclosure in the description should always broaden the claim feature in question. Or in other words, you can’t win by having inconsistency between the description and claims. Another way this has been phrased in that decision is that if the patentee chooses to have an inconsistency, any technically plausible I terprestion of the claim should be covered, basically from the third party certainty point of view. The referring decision is worth a read for crystal ball gazing as to how G1/24 will be applied. So far the predictions derived from it hold true (count 1 of 1 admittedly).
DeleteG 1/24, reasons 17:
ReplyDelete"The finding that the language of a claim is clear and unambiguous is an act of interpretation, not a preliminary stage to such an interpretative act".
A finding of clarity for the wording of the claim thus requires the Board to have concluded that, despite the custom (narrow) definition provided in the patent, there was no doubt that the term "excitation area" had a broader meaning.
In other words, the mere presence of a different definition in the description - in this case a mandatory definition ("The term "excitation area" refers to the cross-sectional area of the excitation light at the focus") did not give rise to a lack of clarity.
Is it just me, or is that conclusion somewhat hard to justify, especially given the directly contradictory logic that that the EPO uses to justify their demands for "inconsistencies" to be removed from the description?
I commented this decision in my blog.
ReplyDeleteI fully support Alexander Korenberg’s conclusion. You cannot win by having an inconsistency between description and claims.
The question at stake can best be exemplified as follows: claimed feature A, clear as such, can be qualified in the description
- as A-, i.e. with a limited meaning, but also clear as such;
- as A+, i.e. with a broadened meaning, but also clear as such.
There is thus no lack of clarity, as such, for each of the features, but the definitions in the description, A- and A+, are not in accordance with the definition in the claim, A.
In other words, if a feature in a claim is given by the skilled person a broad meaning, but the description gives to the same feature a limited meaning, then the meaning in the description cannot override the meaning in the claim.
The same applies if a feature in a claim is given by the skilled person a limited meaning but the description gives the same feature a broader definition, then the meaning in the description cannot override the meaning in the claim.
In both cases, it induces an inconsistency which should be resolved by aligning claims and description. Therefore, the conclusion drawn by Dr Rose Hughes in her title: “Description definitions do not override clear claim language”, is absolutely correct. This goes in both directions.
If a claimed feature is unclear, its meaning can be clarified by resorting to the description. However, once a clear meaning is given to an originally unclear feature in a claim with respect to the description, the latter cannot be left in a state such that any ambiguity subsists between claims and description.
If an unclear feature cannot be defined more precisely with reference to the description, thaen it is best not to introduce a new terminology in the description and the claims, cf. Art 123(2), and leave the unclear feature in both. The problem for the applicant/proprietor is that an unclear feature cannot be used to differentiate the claimed subject matter from the prior art, see e.g. T 571/05, T 144/12 or T 2502/18.
A direct consequence of G 1/24 should be that alignment of claims and description will become even more mandatory as it presently is. We will just have to wait the referral envisaged in the case EP 2 124 521 B1 (T 697/22), but this seems to me the likely result of this new referral to come.
If the claims and description are aligned with each other, this will correspond to what has been ordered in G 1/24: consult the description in order to see if there is an inconsistency between claims and description.
Another way of looking at it: would anybody accept that the terms used in a contract are given a different meaning compared to those in the executive summary. After all a patent is a contract with society at large, and the claims are comparable to the executive summary of said contract.
That in a private contract between private entities, such a possibility may exist, does not imply directly and unambiguously that the same is valid for patents.
There is thus no “directly contradictory logic” in the fact that the EPO “demands for "inconsistencies" to be removed from the description”. That the removal of the inconsistency has to be done with due care, and not with brute force, goes without saying.
No directly contradictory logic? What about GL, F-IV, 4.3:
Delete"Any inconsistency between the description and the claims must be avoided if it casts doubt on the subject-matter for which protection is sought, thereby rendering the claim either unclear or unsupported under Art. 84, second sentence, or objectionable under Art. 84, first sentence"?
Para [0008] of EP 3 086 087 B1 contains a definition of “excitation area” that is very different to the definition adopted by the Board in T 1999/23. There is no doubt that, according to GL, F-IV, 4.3, that description definition would count as an “inconsistency”. And yet the Board in T 1999/23 had no doubts about the subject-matter defined by Claim 1 of EP 3 086 087 B1. How is the Board’s conclusion not based upon “directly contradictory logic” to the approach set out in the GL?
Regarding contract law, I would suggest that patent claims have a lot in common with the operative clauses of a contract. I have yet to see a contract with an “executive summary”. Did you mean a heads of terms agreement? If so, I don’t think that your analogy quite works, as that is a separate and non-binding agreement which represents a precursor to a binding contract.
I disagree. With what I disagree with is as yet unclear to me, but may be clear to others.
ReplyDeleteIt is acceptable to disagree, but an apodictic reply has never brought any discussion forward. Another possibility for your reply: unclarity squared?
DeleteHmmmn. To me, this decision reads very much as a Board carrying on with business as usual and essentially ignoring crucial aspects of the EBA's ruling in G 1/24.
ReplyDeleteIn particular, I am at a loss to understand how the Board squares its approach to claim interpretation with G 1/24, Reasons 14:
"The Enlarged Board, in adopting the above position, is thus rejecting the case law of the Boards that sees no need to refer to the descriptions and drawings when interpreting a claim, unless the claim is unclear or ambiguous".
Also, at Reasons 15, the EBA explicitly stated that the case law it rejected "is contrary to the wording, and hence the principles, of Article 69 EPC".
These statements of the EBA would appear to explicitly prohibit the position adopted by the Board in T 1999/23, in which the default position for allegedly "clear" claims is to effectively interpret them in isolation.
The decision in T 1999/23 is also troubling on other grounds. For example:
(1) Why did the (different) definition in the description not lead the Board to conclude that the claims lacked clarity?
(2) Why was the Board certain that the skilled person would ignore the description definition and instead afford the claims a broader interpretation?
(3) What evidence was there that the broader definition adopted by the Board was the accepted, "standard" definition for the term in question (in the specific technical area to which the invention relates)?
(4) Did the Board consider whether the case law principles relied upon (those in CLBA II-A, 6.3.4) are still valid in the light of G 1/24? Those principles appear to derive from Articles 69(1) and 84 EPC ... which G 1/24 concluded do NOT provide basis for any claim interpretation rules.
(5) Would a national court, or the UPC, interpret the claims in the same way? G 1/24 specifically mentions the benefit of aligning EPO and UPC / national court approaches to claim interpretation. Thus, any claim interpretation approach that does not realise that benefit is certainly very questionable.
It remains to be seen whether G 1/24 ends up being treated by the Boards in the same way as G 1/21, namely being paid lip service but otherwise roundly ignored. Whilst the evidence so far is hardly encouraging, I do hope that other Boards take the time to consider whether it really is possible to adhere to the ruling in G 1/24 whilst essentially carrying on with how things were done beforehand.
Mr Snodin,
DeleteIn G 1/24, the EBA was crystal clear: the description ought to be consulted, independently of whether a claimed feature is unclear or not.
I wrote a blog on T 1999/23, and one commenter who remained “Anonymous”, insisted upon the fact that the attitude of the board was disingenuous, as according to “Anonymous” it was “clearly doing its best to ignore the EBA”.
Besides the fact, that calling the board’s attitude disingenuous, is derogatory towards the board, the board did exactly what the EBA wanted.
The EBA did not say read in the claims limitations or broadening interpretations which are clear as such for the skilled person, when reading the claim with a will to understand it.
This is what you want the boards to do, but this is your private opinion, and does not represent the truth, if ever something like this exists. For the rest, I refer to my reply to “Proof of the pudding” in another IPKat blog entry, explaining that, as an opinion, it worth being considered, but it cannot be considered the only answer to some legal questions.
It is for the EBA to interpret the EPC, not to some representative. The EBA is even capable of changing its interpretation of the EPC!
As jurisdictions are free in their evaluation of evidence and interpretation of claims, it is inevitable that diverging decisions might come to light between the EPO and jurisdictions acting post grant.
I would just like to draw your attention to the Agfa/Gucci decision of the UPC LD Hamburg. The LD did not buy Agfa’s contention that the claimed scope was actually broader than that of the granted claim. The granted independent claim was limited in view of a novelty objection raised in the opinion accompanying the search report.
In T 1999/23, it was the contrary, a limitation in the description was not read into the claim. The position was again expressed recently in T 1846/23.
The LD-UPC and the boards did actually what was required in G 1/24: consult the description. That the result is not the one you would have liked to see, is a matter of opinion. But it is not correct to say that the boards were ignoring G 1/24.
As far G 1/21 is concerned, I can agree with you. Following G 1/21, Art 15a(1) RPBA should have been amended. Giving the boards the discretion to decide the form of the OP is in clear contradiction with the gold standard valid for OP: in person OP is the rule and should not become the exception.