G 1/24 - Referral: Can the description and figures be consulted when interpreting the claims to assess patentability?
Today, the Boards of Appeal published the following communication (no changes made, except for emphasis added and references to points in the referring decision added cf. the Order of the latter) on their website:
Referral to the Enlarged Board of Appeal – G 1/24 ("Heated aerosol")
Under Art. 112(1)(a) EPC, a Board of Appeal refers a question to the Enlarged Board of Appeal if it considers that a decision is required, in order to ensure uniform application of the law [see point 3] or if a point of law of fundamental importance [see point 4] arises.
Technical Board of Appeal 3.2.01 has by interlocutory decision T 439/22 referred the following questions to the Enlarged Board of Appeal (referral pending under G 1/24 - Heated aerosol):
- 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? [see points 3.2, 4.2 and 6.1]
- 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? [see points 3.3, 4.3 and 6.2]
- 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? [see points 3.4, 4.4 and 6.3]
Contact
Nikolaus Obrovski
Jeannine Hoppe
Spokespersons of the Boards of Appeal of the European Patent Office
boa-press@epo.org
Referring Board's decision: T 0439/22 (Gathered sheet) dd 24-06-2024
The EPO posted the following message today:
ReplyDeleteNotice from the European Patent Office dated 1 July 2024 concerning the continuation of examination and opposition proceedings in view of referral G 1/24
1. Referral G 1/24 ("Heated aerosol") is pending before the Enlarged Board of Appeal. The referring board seeks to clarify three questions.
(1) 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 Article 52 to 57 EPC?
(2) 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?, and
(3) 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 questions referred to the Enlarged Board of Appeal can be found in decision T 439/22. (https://www.epo.org/en/boards-of-appeal/decisions/t220439eu1)
2. To ensure the proper functioning of the EPO and for legal certainty, the President of the EPO has decided that proceedings before the examining and opposition divisions should continue.
3. This notice applies with immediate effect.
See https://www.epo.org/en/legal/official-journal/notice-european-patent-office-dated-1-july-2024-concerning-continuation-examination-and-opposition
item 2 is interesting: how would the examining and opposition divisions act if a situation occurs of which the outcome depends on the answers from the Enlarged Board, while they are not allowed to wait but must continue? And how is "for legal certainty" than guaranteed, while it is not known whether the way they continue is legally correct? How does this match with the purpose of the referral: "The [following] questions are referred to the Enlarged Board of Appeal, both to ensure the uniform application of the law [see point 3] and because a point of law of fundamental importance arises [see point 4]" (citation from the Catchword of the referring decision).