Intellectual and industrial property go hand in hand with innovation, which makes it a dynamic and constantly evolving field. One way to measure these changes is through the decisions issued by the competent authorities when resolving various cases. These rulings help clarify doubts and provide a better understanding of the many issues that arise from different circumstances.
One such significant decision was issued in mid-June by the European Patent Office (EPO): decision G1/24.
This decision stems from appeal case T439/22, which raised a conflict over how to interpret a key term in a claim (gathered sheet). The central question was whether it should be assessed according to its usual technical meaning or a broader definition provided in the description. The issue led to significant differences in the novelty assessment and raised questions about whether the description and drawings should always be consulted or only when the claims are ambiguous.
In response, the EPO’s Enlarged Board of Appeal issued a conclusion based on two key points:
- The claims are the starting point for assessing patentability.
- The description and drawings must always be consulted when interpreting claims during examination and opposition, not only when the wording is ambiguous or unclear.
What does this mean?
This decision has major implications for the interpretation of claims in European patents, directly affecting how they must be interpreted during examination, opposition proceedings, and even litigation, with a direct impact on the analysis of novelty, inventive step, and the scope of patent protection, such as:
- Increased drafting requirements for applicants. Applicants must ensure that key terms are clearly and consistently supported and defined in the description and drawings. The alignment between claims and description is now crucial.
- Reinforced technical examination. Examiners, opponents, and courts must consider the complete file when assessing novelty and inventive step. Opposition strategies must also factor in the description to identify inconsistencies between claims and technical content.
- Legal certainty. It harmonizes EPO practice with that of the Unified Patent Court and national courts, providing consistency in claim interpretation. It strengthens the link to Article 69 of the European Patent Convention and its Protocol on Interpretation, consolidating a unified approach to claim interpretation in Europe.
Decision G1/24 marks a turning point in European patent practice, establishing that claim interpretation cannot be detached from the complete technical content of the file.
This measure reinforces the need to avoid ambiguous, contradictory, or isolated definitions in the description, which could compromise the clear and unequivocal interpretation of claims.
Ultimately, it introduces a new level of responsibility for inventors and patent attorneys in drafting all patent documents, as well as when reviewing applications and defining defence strategies. It wouldn’t be surprising, for instance, to see adjustments in examination practice—especially concerning consistency between the description and claims—or the emergence of new attack points from competitors upon detecting inconsistencies.
That is why even greater care will be required when drafting a patent.
