G 1/24: the description and the drawings must always be consulted for the assessment of patentability before the EPO
The Enlarged Board of Appeal (EBA) of the EPO has just issued a long-awaited decision on the interpretation of claims in the context of patentability examination, and clarifies the practice to be adopted in this regard.
In T 439/22, which had been referred to the EBA, the question arose as to whether a wording in a claim (“gathered sheet”), which had a clear and commonly accepted meaning in the technical field in question, was to be interpreted without reference to the description, or whether account should be taken of a definition provided in the description which gave the term a broader meaning. This question is essential for the resolution of this case in so far as, depending on whether or not one of the interpretations is followed, the subject-matter of claim 1 is considered to be lacking novelty. The contribution of G 1/24 is likely to have an overall impact on examination or opposition proceedings before the EPO, going beyond T 439/22.
The questions brought to the EBA aimed at clarifying the legal basis on which to rely for the interpretation of claims in the assessment of their patentability, and the extent to which description and drawings should be used for this interpretation. In particular, the question is whether this subject-matter is to be consulted systematically or, on the contrary, only if the subject-matter of the claim, taken in isolation, is considered to be unclear or ambiguous from the point of view of the person skilled in the art.
In G 1/24, the EBA states that “the claims are the starting point and basis for assessing the patentability of an invention […] The description and drawings shall always be consulted in order to interpret the claims when assessing the patentability of an invention […] and not only if the person skilled in the art considers a claim to be unclear or ambiguous when read in isolation.”
In this case, the EBA states that neither Article 69 EPC and its Protocol on Interpretation nor Article 84 EPC constitute entirely satisfactory legal bases for the interpretation of claims for the purpose of assessing their patentability, thus departing from previous decisions. More specifically, the EBA considers that Article 69 EPC and its interpretative protocol should only be used to assess infringement before the national courts and the Unified Patent Court (UPC). The EBA further emphasises that Article 84 EPC is merely of a formal nature by simply indicating to the drafter what the claim is to contain.
In the absence of a clear legal basis in the EPC, the EBA relies upon an existing line of case law of the Boards of Appeal (BoA) in line with the principle of interpretation referred to above, as well as on the practice of the national courts and the UPC to reject another existing line of case law of the BoA according to which the consultation of the description and drawings must be conditional on the existence of a lack of clarity or ambiguity in the claim. The EBA adds that, for the purposes of harmonisation, it is undesirable for the EPO to adopt a practice contrary to those of the Courts which hear disputes based on European patents.
G 1/24 is an alignment of the EPO’s practice with the recent UPC case law. As the EPO now applies the same principles of interpretation as the national courts and the UPC, it is possible that the examination file will become more important in post-grant disputes. In any event, this decision confirms the importance of paying close attention to the drafting of the description and drawings, and to their adaptation during examination before the EPO, so that the interpretation based on these elements is consistent with the scope sought by the applicant in the claims.
*Decision of the Enlarged Board of Appeal of 18 June 2025, G 0001/24
ECLI: EP:BA:2025:G000124.20250618