The G1/24 Referral: What to Expect and Why It Matters
8 May 2025
The Enlarged Board of Appeal (EBoA) of the European Patent Office (EPO) is set to decide on the referral G1/24 from appeal case T439/22. The central issue is whether the description and figures should be utilised to interpret the claims when evaluating patentability. While the referral is primarily concerned with post-grant opposition proceedings, it may also affect pre-grant proceedings before examining divisions.
The referral centres on the use of the term “gathered sheet” in Philip Morris’s Patent EP3076804. This term’s broader definition in the description contrasts with its narrower, industry definition. The Opponent (Yunnan Tobacco International Co.) argues that claim 1 lacks novelty using the definition of “gathered sheet” in the description, while the Proprietor argues that the subject matter of claim 1 is novel by adopting the narrower, industry definition. In so doing, the Proprietor effectively sets aside the broader description definition and argues for primacy of the claims over the description.
The result of this decision may also have knock-on effects on other areas of patent prosecution at the EPO, including the practice of amending the description to conform with the claims.
Referred questions
The key questions being deliberated by the EBoA are:
- Should Article 69(1), second sentence EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC be applied to 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?
The referral received an unusually high number of third-party submissions (amicus briefs), with most supporting the use of the description for claim interpretation, highlighting the strong interest in the outcome by a wide range of entities.
Preliminary opinion & Hearing
In February this year, the EBoA issued its preliminary, non-binding opinion. In the opinion, while the first two questions were found admissible, the EBoA found the third question inadmissible because it was not decisive for the outcome of the appealed case.
Although the preliminary opinion did not come to a clear conclusion for question 1, the EBoA recognised the importance in “uniform application of the principles of claim interpretation both in patent grant proceedings … and also in post-grant revocation and infringement proceedings … including the Unified Patent Court (UPC)”. As the UPC has already adopted an approach of referring to the description to interpret the claims when assessing patentability[1], this suggests that the EBoA are likely to conclude in the same way.
Regarding the second question, the preliminary opinion simply indicates that “the description and the figures can be referred to in the course of claim interpretation”.
Given that the preliminary opinion is non-binding and further oral proceedings were held in March of this year, we await the final written decision from the EBoA. It is evident that the
final decision in G1/24 will likely have significant implications for pre-grant examination as well as post-grant opposition proceedings at the EPO.
Key takeaways
Understanding the legal framework for claim interpretation is crucial for drafting strong, commercially valuable patents and creating robust enforcement strategies. This decision should provide further clarity, improving consistent and predictable outcomes in patent disputes.
Currently the EPO exhibits two diverging approaches to claim interpretation. One approach, exemplified by T 233/05, asserts that Article 84 EPC should be applied, meaning claims should be interpreted on their own merit without reference to the description and drawings, unless the claim lacks clarity. Conversely, another approach, such as in T 1473/19, emphasises that Article 69 EPC and its Protocol are primary provisions for claim interpretation, advocating that the description and drawings should generally be considered when interpreting the claims. Accordingly, the decision of G1/24 should bring consistency to the interpretation of claims, addressing these diverging practices and providing clarity on the role of the description in claim interpretation.
Additionally, this referral emphasises the importance of exercising caution when using boilerplate language in the description as it may, unintentionally, alter the scope of the claims.
As noted above, the final decision in G1/24 may also have implications in the practice of amending the description during prosecution at the EPO. Amendments to the description often involve removing or amending embodiments outside the scope of the amended claims. However not every embodiment is black-and-white, and some can be partially encompassed by the claims. Furthermore, amendments to the description can sometimes result in new combinations of features that were not originally disclosed (added matter) or impact post-grant proceedings in national courts. For these reasons, applicants are often hesitant to amend the description extensively.
While the referred questions for G1/24 did not include direct reference to the practice of amending the description, subsequent comments by the President of the EPO opens up the possibility for it to be considered in the final decision.
In particular, the President indicates that “the issue of adaptation of description is closely related to the [claim interpretation] issue raised in the present referral [G1/24]”. The President recognises that both issues concern the same legal provisions (Article 69 and 84 EPC), their relationship to each other, the link between pre-grant and post-grant proceedings, and the role of the description with respect to the claims. The President further stresses that a clarification from the EBoA when answering the referred questions of G1/24 would help resolve the debate[2].
What remains to be seen is whether the EBoA will provide such clarification when answering the referred questions.
References
[1] Nanostring v 10x Genomics, UPC_CoA_335/2023, App_576355/2023, Grounds for the Order at 4.d)aa)
[2] Point 75, G1/24 (“Heated aerosol”), Comments by the President of the EPO, 7 November 2024
Philip Horler
Electronic, Computing & Physics group
Bradley Wilson
Life Sciences & Chemistry group
Ozgur Aydin
Advanced Engineering group
This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.
© Withers & Rogers LLP May 2025
