Recent decisions of the Enlarged Board of Appeal, G 1/24 and G 1/25, together with other recent Board of Appeal decisions, contain a number of important observations regarding claim interpretation before the European Patent Office. When read together, these decisions emphasise several established principles concerning the relationship between the claims, the description and the skilled person’s understanding of the patent.
These principles are not merely academic. They influence how claims are assessed for novelty and inventive step, how patentees defend granted claims in opposition and appeal proceedings, and how applications should be drafted and prosecuted in the first place. Understanding the emerging approach to claim interpretation is therefore critical for both applicants and third parties.
The following six principles can be distilled from the case law.
In G 1/24, the Enlarged Board confirmed that “the claims are the starting point and the basis for assessing the patentability of an invention“. Subsequent decisions have emphasised that the claims are the decisive reference point for claim interpretation.
The central question is what a skilled person would objectively understand the claim language to mean. The wording chosen by the patentee is therefore the primary source of claim meaning.
A longstanding principle of EPO case law is that non-specific claim language is given its broadest technically sensible meaning.
As summarised in the Case Law of the Boards of Appeal (I.C.4.1):
“It is a well-established principle laid down by the boards’ case law that a non-specific definition in a claim should be given its broadest technically sensible meaning (see T 79/96, T 596/96). For a feature defined in a negative manner, which excludes the presence of a specific element, the broadest scope of the claim corresponds to the narrowest (i.e. most limited) technically sensible definition of the element to be excluded (T 1553/19).”
The consequence is that general claim language cannot ordinarily be confined to a narrower scope merely because a narrower interpretation would better reflect a preferred embodiment, align with the invention described in the specification, or improve the patent’s prospects of validity. Unless the claim wording itself provides a basis for a limitation, the claim is generally assessed across its full technically sensible scope.
This principle was reaffirmed in T 2027/23, where the Board reiterated:
“the board finds no authority for interpreting a claim more narrowly than the wording of the claim as understood by the person skilled in the art would allow.”
For opponents, this often provides a powerful response to attempts to read additional technical restrictions into broad claim language. For patentees, it highlights the importance of ensuring that any genuinely important limitation appears in the claims themselves.
The phrase “a mind willing to understand” frequently appears in EPO case law, but it is sometimes misunderstood.
In T 10/22, the Board explained that the principle simply means that:
“the skilled person when considering a claim should rule out interpretations which are illogical or which do not make technical sense”.
This does not mean that a claim should be interpreted according to what would be most convenient for the patentee.
On the contrary, the Board explained that the deciding body should take into account:
“all technically meaningful interpretations of this claim … that would objectively occur to a skilled reader“.
The relevant perspective is therefore:
“a mind willing to objectively construe a claim“,
not:
“a mind willing to understand the applicant’s or patent proprietor’s alleged intention“.
Claim construction is an objective exercise focused on the understanding of the skilled person rather than the subjective intentions of the drafter.
One of the questions addressed by G 1/24 was whether the description and drawings should always be considered when interpreting a claim. The Enlarged Board answered that question in the affirmative.
G 1/25 clarified the nature of that exercise. The Enlarged Board in that decision explained that references to interpreting claims “in the light of” or “by consulting” the description and drawings do not describe different legal tests or different stages of interpretation. Rather, they describe: “the same interpretative operation: determining the meaning of the claim wording from the perspective of the skilled person based on the claims, the description and any drawings taken together.“
This emphasises that claim construction is not a two-stage exercise in which the claims are first interpreted in isolation and then corrected by reference to the description. It is a single interpretative process conducted from the perspective of a skilled person reading the patent as a whole.
The requirement to consult the description and drawings is substantive rather than merely formal. As recognised in G 1/25, the description may affect the meaning which the skilled person attributes to the claim wording. Where the patent contains an express definition of a term or a clear contextual explanation, the skilled person will ordinarily take that into account when interpreting the claim.
At the same time, the description cannot be used to impose a limitation or expansion for which the claim wording provides no basis. As the Enlarged Board stated:
“The description and drawings may affect the meaning which the skilled person attributes to the claim wording, but they cannot be used to impose on the claim a limitation or expansion for which the claim wording provides no basis.”
The key question therefore remains whether the interpretation advanced can reasonably be derived from the language of the claim itself. The description may influence the skilled person’s understanding of that language, but it cannot supply limitations that find no basis in the claim wording.
The final principle follows naturally from the preceding five.
Where the patentee wishes to rely upon technical limitations that are not reflected in the claim language, the solution is amendment rather than interpretation.
In G 1/24, the Enlarged Board stated unequivocally:
“The correct response to any unclarity in a claim is amendment.”
Similarly, T 2027/23 identified as a major takeaway from G 1/24 that “it is up to a patentee to remedy discrepancies between the description and the claims“, stating that “patentees are the masters of their fate.”
In short, where narrower protection is required, amendment rather than interpretation is the appropriate mechanism.
Taken together, G 1/24, G 1/25, and the subsequent Board of Appeal decisions have important practical implications for applicants and patentees.
First, broad claim language will be assessed across its full technically sensible scope.
Second, the decisions reinforce the importance of precise claim drafting. If a particular technical feature is essential to patentability, it should generally appear in the claims rather than being left to implication from the description.
Third, the description remains critically important. While it cannot be used to import limitations unsupported by the claim wording, it helps inform the skilled person’s understanding of claim language and may provide definitions that influence how claim terms are interpreted. It also provides the basis for future amendment should broader claims later prove vulnerable.
The practical lesson for applicants is therefore straightforward. Claim drafting proceeds on the assumption that the claims will be interpreted according to their broadest technically sensible meaning. Patentability will be assessed against that full scope. At the same time, the specification should be drafted with sufficient detail, clear terminology and appropriate fallback positions to support both claim interpretation and future amendment if required.
The claims are the primary determinant of scope, but their meaning is determined from the perspective of the skilled person reading the claims, description and drawings together. The description informs, and may in some cases define, the meaning of claim terms; it does not override the claim language or supply limitations for which the claims provide no basis. Where narrower protection is required, the appropriate remedy is amendment, not interpretative rewriting.
For growing innovative businesses, expanding into international markets is an exciting development which invites intellectual property considerations. Securing patent protection across multiple jurisdictions is vital to safeguard a competitive edge, but attempting to file individual patent applications in every target country at the same time can quickly overwhelm working capital and administrative resources.
This is where the Patent Cooperation Treaty (PCT) becomes one of the most powerful tools within a company’s IP strategy. Here we break down what a PCT patent application is, how the process works, and why making use of this framework can give your business a commercial advantage.
A common misconception is that a PCT application results in a single, overarching “international patent” that automatically protects an invention worldwide. In reality, no single application can grant global patent rights. Patent rights remain strictly territorial and must ultimately be granted by national or regional patent offices (such as the UK Intellectual Property Office, the European Patent Office, or the US Patent and Trademark Office).
Instead, the Patent Cooperation Treaty – administered by the World Intellectual Property Organization (WIPO) – is a single procedure for filing a patent application which can ultimately be applied to any of its 150+ contracting states. Filing a Patent Cooperation Treaty application acts as a unified “placeholder.” By submitting one international application in a single language at one ‘receiving Office’, you can effectively preserve a filing date across more than 150 countries at once at a significantly reduced cost.
Almost all major economies are contracting states of the PCT. For territories which are not PCT contracting states (such as Taiwan and Argentina), patent protection can only be achieved under the Paris Convention by filing national applications and paying the requisite fees within 12 months of a domestic priority application.
The PCT application process is divided into two distinct phases: the International Phase and the National (or Regional) Phase.
The International Phase begins with filing a PCT application, typically within 12 months of filing a domestic priority application. The International Phase comprises four main stages:
At 30 or 31 months from the initial priority date (depending on the target jurisdiction), the application transitions into the National Phase. At this point, you decide which countries or regions you wish to pursue patent protection in and pay the requisite national entry fees. Your application is then evaluated by each selected national or regional patent office under their respective patent laws.
Choosing the PCT patent application path offers several commercial and strategic benefits for growing companies, venture-backed startups, and multinational enterprises.
Without the PCT, a business wishing to protect an invention internationally under the Paris Convention must file all individual national applications within 12 months of the initial priority filing. This requires paying substantial foreign filing fees, official search fees, and local attorney representation fees in multiple countries all at once.
The PCT extends this window from 12 months to 30 or 31 months. This extra 18+ months allows your business to:
Receiving the International Search Report (ISR) and Written Opinion (WO-ISA) during the PCT International Phase provides an early, high-quality assessment of the patentability of your invention. The ISR and WO-ISA is often later taken into account by national and regional patent offices during examination. If the ISR and WO-ISA identifies relevant prior art, this provides an opportunity to adapt strategy, modify claims, or decide not to proceed into costly national filings at all, potentially saving significant sums in foreign prosecution costs.
A pending PCT patent application can be attractive to prospective investors, licensees, and commercial partners during early-stage negotiations, by showing that your IP assets are in the process of being secured internationally. A pending PCT application also allows you to mark your products or marketing materials as “Patent Pending” across PCT contracting states in the same way as a national patent application.
Budgeting for international patent protection requires understanding how PCT patent fees are structured across the timeline.
While filing a PCT application adds an initial layer of administrative fees, it defers the significantly larger expenses associated with national filings (such as translation costs and foreign attorney fees). An illustration of the administrative fees is set out below.
| Fee type | Description | Timing | Approximate cost |
| Transmittal fee | Paid to the local receiving Office for processing the international application. | At filing (International phase) | 150 GBP |
| International filing fee | Fixed fee paid to WIPO for international administration. | At filing (International phase) | 1100 GBP (additional fees apply for longer specifications) |
| International search fee | Paid to the designated International Searching Authority (e.g. EPO) to perform the prior art search. | At filing (International Phase) | |
| Optional preliminary examination fee (‘Chapter II’) | Paid to the designated International Preliminary Examining Authority (e.g. EPO) to perform the optional examination. | Month 22 (or 3 months from transmittal of ISR) | 1800 GBP |
| National phase entry fees | Official fees, local attorney fees and translation fees for each target country/region. | Month 30 or 31 | Varies per territory (typically ~3-6k GBP per territory) |
If you are planning to launch an innovative product or technology in international markets, early strategic planning is critical. Contact us today to discuss how choosing the Patent Cooperation Treaty route can support your global business objectives.
Partner Edd Cavanna has been featured in The Banker, a Financial Times publication, Fintech Finance News, Financial IT and Finextra, discussing the increase in patent filings for quantum-resistant and post-quantum cryptography technology.
His commentary highlights how hackers may be able to use quantum computing to gain access to banks’ datasets, a big concern for consumers’ safety, and patenting preventative technology could give banks a significant competitive edge.
Read the extended press release below
Banks and tech companies filed 1,455 patents for technology to prevent hackers from using quantum computing to intercept consumer’s bank transactions and steal their passwords in the year to 31 March 2026, shows new research by leading intellectual property law firm Mathys & Squire*.
It is expected that quantum computers will be able to crack many consumers’ banking passwords, as they perform exponentially faster than today’s computers. Quantum computers will be able perform tasks in hours that would take today’s most powerful computers thousands of years**.
Some experts believe quantum computers could be commercially available within the coming years, potentially enabling hackers to break into consumers’ bank accounts and cryptocurrency wallets.
Bank of America (47 patents), Wells Fargo (44), JP Morgan (12) and Mastercard (9) are among the top patent filers of ‘quantum-resistant’ or ‘post-quantum’ cryptography technology. Many of the technologies filed are designed to prevent hackers from intercepting consumers’ transactions and stealing their personal data.
Edd Cavanna, Partner at Mathys & Squire, says: “The looming threat of quantum computing is fuelling a race to develop and patent technologies that can protect consumers.”
“Developing quantum resistant technologies could give banks a significant edge over competitors. Quantum computing could make most of today’s security systems obsolete, and no real alternative has been found yet.”
“If robust security systems aren’t developed before quantum computers are rolled out, consumers’ savings would be exposed to criminals who could simply break into their bank accounts and take their money out.”
“This is not a remote risk. Some of the world’s largest banks and financial institutions are now involved in finding solutions.”
Edd Cavanna says cryptocurrencies are particularly vulnerable as they are built on traditional encryption methods that might not resist a quantum computing attack.
In the year to March 2026, 116 patents were filed for patents relating to protecting cryptocurrencies against quantum attacks, up 20% from 97 the previous year.
Examples of the ‘quantum-resistant’ technologies patented last year include:
* The research considers patent applications published between 1 April 2025 and 31 March 2026
** IBM article (02/04/26): What is quantum computing?
Partners Nicholas Fox and Dylan Morgan have been featured in ‘Biggest UK and EU Patent Developments of 2026 So Far’ in Law360.
In the article, Nicholas Fox comments on the Supreme Court’s ruling in Emotional Perception, discussing the monumental impact of the ruling on case law and whether this impact will be reflected in upcoming legal decisions regarding the patentability of AI and software.
Dylan Morgan shares his insights on the Amazon v InterDigital case in the telecoms space, suggesting that we may be moving towards an outcome where licensors are able to bring separate actions in different courts, with one court rejecting orders determined by other courts.
Click to read the full article in Law360 here.
The Supreme Court’s decision in Emotional Perception AI Ltd v Comptroller General of Patents marks the most significant change to UK computer-implemented invention jurisprudence in two decades. In adopting an approach aligned more closely with EPO jurisprudence and G 1/19, the Court held that the four-stage Aerotel test should no longer be followed. Instead, the analysis focuses on the technical character of the claimed invention, including an intermediate assessment of which features contribute to that technical character before substantive patentability requirements are considered.
As the UKIPO’s updated examination guidance recognises, the question is no longer whether a claimed contribution passes the Aerotel framework, but whether the invention, considered as a whole, contains features that contribute to technical character in a manner recognised by Article 52 EPC jurisprudence.
The obvious starting point for the new intermediate step, namely identifying features capable of contributing to the technical character of an invention, is the existing EPO Board of Appeal jurisprudence. In practice, the Supreme Court’s endorsement of G 1/19 appears likely to bring UK law much closer to the COMVIK approach applied by the EPO. The focus therefore shifts to identifying which features contribute to technical character and which instead relate to non-technical aims, such as commercial, administrative or cognitive requirements.
In general, EPO case law indicates that the following are considered “technical”:
Conversely, EPO case law generally treats applications directed to the following matters as non-technical:
Notably, none of the EPO categories is technology-specific. AI, simulation, modelling and data analysis appear on both sides of the technical/non-technical divide. What matters is not the technology being used, but whether the claimed features contribute to a technical purpose. The same machine-learning technique may therefore be technical in one context and non-technical in another.
Under the COMVIK approach, the decisive question is not whether a claim contains technical features, which most computer-implemented inventions inevitably do, but whether the features relied upon for inventiveness provide a technical solution to a technical problem. It is against that background that the historic UKIPO decisions become particularly interesting.
Previous UKIPO decisions were decided using the Aerotel test, whereas the post-Emotional Perception analysis focuses on identifying features that contribute to the technical character of the claimed invention. Although the analytical framework has changed, the underlying enquiry is often directed at similar questions. In Emotional Perception itself, the Supreme Court noted that, although Aerotel was no longer to be followed, there was likely to be little change in what was and was not patentable, and no examples of a change in outcome had been identified to the Court. That observation provides an important reason for examining historic UKIPO decisions: while they were decided under a different legal framework, they may nevertheless offer useful evidence of the types of problems that the Office has historically regarded as technical.
Against that background, it is instructive to compare EPO jurisprudence with UKIPO decisions made under the Aerotel framework to determine whether similar patterns emerge.
Perhaps the clearest category of cases to succeed before the UKIPO comprises inventions operating directly within industrial environments.
An example is Fisher-Rosemount Systems (O/141/21), which concerned the management of maintenance activities within a process plant, including identification of suitably qualified personnel, provision of process diagrams and automated verification of completed work. In that case the hearing officer considered the interaction with the process plant itself to provide the necessary technical contribution.
Similarly, in General Electric (O/029/19), the invention analysed generator sensor data to identify faults and anomalies. The hearing officer concluded that the invention went beyond a computer program as such and remitted the application for further examination.
Applications involving the processing of measurements derived from the physical world also fare well.
In Accipiter Radar Technologies (O/390/17), the invention concerned a three-dimensional radar system capable of real-time tracking and analysis of airborne targets. The hearing officer found that the contribution lay not merely in the presentation of information but in the operation of the radar system and associated database architecture for generating previously unavailable information in operational timeframes.
Likewise, in Hitachi (O/809/18), a construction-site management system used laser-scanned three-dimensional representations of a site to identify congestion and safety issues. The hearing officer accepted that the claimed alerting system produced a technical contribution.
These decisions suggest that the processing of measurements obtained from physical systems remains one of the strongest indicators of technical character.
A further category of successful cases concerns simulation linked to physical systems.
In Landmark Graphics (O/112/18), seven applications concerning visualisation and manipulation of subterranean geology were found not to relate merely to excluded subject matter. The hearing officer considered that the inventions addressed technical issues arising in the modelling of subsurface formations.
A second group of applications from the same applicant in Landmark Graphics (O/138/18) concerning computer-implemented geological modelling similarly resulted largely in success, with three of four inventions being held non-excluded.
These decisions are notable because they demonstrate that software modelling can be technical where it is sufficiently connected to physical reality.
Business methods remain among the least successful categories.
In Google (O/0115/23), a privacy-preserving system for gathering store visit analytics was refused because the contribution was characterised as a business method implemented by conventional computing means.
Likewise, in Reaux-Savonte (O/0722/25), a distributed ledger system involving transaction validation and reward mechanisms was found to relate to a business method and computer program as such.
Notably, neither privacy features nor blockchain architecture were sufficient to transform the inventions into technical solutions in the eyes of the hearing officers.
The UKIPO also consistently rejected inventions directed primarily to deriving information for human decision-making.
In IBM (O/0528/25), an invention for identifying molecular dynamic states from large datasets, potentially useful in drug discovery, was refused because the hearing officer found no technical effect beyond analysis of information.
Similarly, healthcare decision-support systems predicting patient treatment requirements have struggled where the outcome is ultimately information for a clinician rather than an improvement in a technical process.
The most informative decisions are often those where similar technologies appear on both sides of the line.
Landmark Graphics provides a striking example.
As noted above, in O/112/18 and O/138/18, geological modelling inventions were largely allowed because they addressed technical issues associated with modelling subterranean formations.
However, in a later case, O/1058/23, Landmark’s application for a seamless geological model spanning scales from planetary down to pore level was refused as a computer program as such.
The distinction appears to lie in whether the invention is directed to solving a technical problem associated with modelling physical reality, or merely providing a more sophisticated representation of information.
Medical inventions also divide sharply.
Where inventions relate to the processing of physical image data or operation of imaging systems, they tend to be viewed as technical. By contrast, where machine learning is used to predict outcomes, allocate resources or assist clinicians in decision-making, UKIPO decisions have often treated the contribution as lying in the provision of information to a clinician rather than in the solution of a technical problem.
Viewed through the post-Emotional Perception framework, the principal lesson from these UKIPO decisions is that the decisive issue was rarely the technology itself. AI, simulation, data analytics and modelling all appear in both successful and unsuccessful cases.
Instead, the recurring question even under the Aerotel test was whether the invention addresses a technical problem in a technical context.
Applications that improve the operation of industrial systems, process physical measurements, control equipment or solve engineering problems have always generally been successful, regardless of whether those applications are pursued before the UKIPO or the EPO. Conversely applications that organise information, support decision-making, optimise business activity or provide recommendations have generally failed.
UK practice will undoubtedly develop as the UKIPO applies the approach mandated by Emotional Perception. Nevertheless, given the lack of any significant change in subject matter which is considered patentable by the office, these older decisions may provide useful indicators of the types of features likely to be regarded as contributing to technical character at the new intermediate assessment stage. While Emotional Perception has changed the legal framework, it may not dramatically alter the types of inventions that succeed in practice. The historic UKIPO decisions discussed above suggest that inventions directed to technical systems, technical measurements and technical processes are likely to remain on the right side of the line, whereas inventions directed primarily to human decision-making, business activity and information processing may continue to face significant challenges.
We are proud to share that we are sponsoring the ELRIG Innovation Award at Drug Discovery 2026, taking place in London, UK, from 14th to 15th October. Drug Discovery 2026 is Europe’s leading drug discovery and life sciences conference, offering attendees access to the most cutting-edge innovation and knowledge in the field.
The ELRIG Innovation Award is a celebration of the exciting new companies making tracks in drug discovery and development. The winner will gain the opportunity to present their innovation to an audience at the conference. In sponsoring the award, Mathys & Squire will be part of the judging panel and also provide winners with dedicated follow-on patent attorney support as a component of the prize.
The deadline to apply for the award is 28th August. To apply and learn more, click here.
In addition, we will be delivering a workshop focused on the importance of IP for attracting investment, as part of the event’s Breakthrough Zone.
Mathys & Squire is a leading intellectual property firm with unrivalled expertise in patents, trade marks, design protection and litigation. The firm’s agile team of attorneys, scientists and strategists are steeped in experience, working with IP-rich and high-growth industries to leverage complex technologies and sophisticated commercial models. In particular, we have a dedicated life sciences group whose attorneys combine their knowledge of IP with a strong academic foundation in a varied range of areas, including small molecules, biologics, advanced therapeutics, antibodies, vaccines, drug delivery systems and diagnostics.
Preventing your competitors from taking advantage of your innovation is a crucial step for any business. Building a strong IP strategy will not only provide protection, but also vital fuel for commercial growth. At Mathys & Squire, we support you at every stage of the innovation cycle to maximise the potential of your IP and underpin the commercial success of your business.
ELRIG is a not-for-profit organisation that brings together the global life science and drug discovery community through free-to-attend events. With a network of over 12,000 professionals, it is dedicated to promoting inclusion and accessibility whilst encouraging innovation across the sector.
To learn more about Drug Discovery 2026, click here.
Partner Claire Breheny has been featured in television program, 60 Minutes Australia, sharing her insight on the interplay of brand protection, trade mark law and identity in the Beckham dispute.
In her commentary, Claire emphasises the importance of celebrities having measures in place, when their name is also a commercial asset, to ensure the name is not misused and protect its value.
You can read more about how trade mark law comes into play when celebrity names become valuable global brands and the background of the Beckham dispute in our article here.
Watch the full episode below:
Managing Associate Richard Jaszek has been featured in IAM with commentary on Elon Musk’s IP strategy in the article, ‘Patents for Starlink, secrets for rockets: SpaceX’s IP playbook’.
In his commentary, he breaks down what we can learn from SpaceX’s IP portfolio, compared to other key players such as Jeff Bezos’ Blue Origin and the New Zealand-founded Rocket Lab. He also discusses Musk’s focus on trade secrets, what his international patent strategy implies about his level of confidence, and whether his approach is sustainable in a competitive market.
Click to read the full article on IAM here.
Mathys & Squire is delighted that Partners Sean Leach, Anna Gregson, Dani Kramer and Martin MacLean have all been identified in the 2026 edition of IAM Strategy 300: The World’s Leading IP Strategists.
The IAM Strategy 300 directory recognises a distinguished group of leading IP strategists whose expertise, achievements and forward-thinking approaches have made a significant impact on the IP landscape. The individuals selected come from a wide range of organisations and sectors, demonstrating the breadth of specialism and experience within the global IP community.
Those included in the IAM Strategy 300 are recognised as leading authorities in the field and are selected through a confidential nomination and research process. This involves in-depth interviews and discussions with senior members of the global IP community, including IP leaders from North America, Europe and Asia.
Individuals featured in the guide have demonstrated outstanding skills in developing and implementing effective IP strategies, as well as a strong track record in managing, commercialising and maximising the value of IP.
We would like to extend our thanks to all of our clients and contacts who contributed to the research process.
The 2026 rankings are available on their website here.
Mathys & Squire is proud to share that our firm has been featured in the World Intellectual Property Review (WIPR) UK Patent Rankings 2026.
The firm has been ranked as ‘Recommended’ in the Non-contentious category, with Partner Chris Hamer also featured as a recognised individual in this year’s guide.
Now in its second edition, the WIPR UK Patent Rankings 2026 showcases some of the leading firms and practitioners across a range of patent practices in the UK. The guide provides an independent reference point for organisations seeking specialist patent advice, as the firms and individuals featured are selected through an objective research and selection process.
Our inclusion in the guide reflects our expertise in IP and our strength in patent prosecution and transactional IP work, as well as our continued commitment to providing commercially focused, high-quality IP advice and support for our clients.
The rankings can be viewed in full on the WIPR website here.
