The Enlarged Board of Appeal has issued a decision confirming that the description and drawings shall always be consulted to interpret the claims when assessing the patentability (i.e. novelty and inventiveness) of an invention.
In their decision on case G1/24, issued on 18th June 2025, the Enlarged Board of Appeal heard facts and arguments concerning a worrying divergence which had occurred in the case law, whereby questions of claim construction and interpretation had sometimes been made with reference to the description and drawings, and other times in isolation of the remainder of the specification. Oftentimes, this difference depended on the clarity of the claims, with it being generally agreed that the description and figures could be considered if the claims were unclear or ambiguous but potentially not otherwise.
In this new decision, the Enlarged Board have rejected any premise that the resources of the patent which are available to assist in interpreting the claims may depend on the clarity of the claims themselves, stating that: “To regard a claim as clear is in itself an act of interpretation, not a prerequisite to construction.” Thus, the decision of the Board fundamentally changes the impact of claim clarity on the assessment of claim construction, harmonising the approach for all claims.
The Board’s decision also serves to harmonise the approach of the EPO with that of the UPC and European national courts, with the Board confirming that their decision was consistent with recent decisions of the UPC, and acknowledging a need and desire for further harmonisation.
This decision is likely to be broadly welcomed by many users of the EPC due to the certainty it provides as to the scope of the patent teaching which may be relied upon for claim construction purposes. By bringing the EPO approach into greater conformity with that of the UPC and national courts, the EPO also increases its ability to grant and maintain robust patents. Alongside these benefits, care should be taken to consider closely the impact of any amendments or differences that may have arisen between the claims and the description or figures of an application to ensure that undesirable constructions are not arrived at which may impact upon the scope and/or patentability of the claims.
If you have any questions as to how this decision may impact on your IP strategy, please reach out to your usual contact at Mathys & Squire, or get in touch through a general enquiry and we would be happy to help.
