G 1/24 EPO: Setting the Stage for a Landmark Decision

Opposition

 

An opposition to the grant of the patent was filed by Yunnan Tobacco International on 30 April 2020, citing grounds of lack of novelty and inventive step. One of the key considerations in the opposition proceedings, and on what the appeal centres, is the interpretation of the term "gathered sheet" within the claims.

 

The opponent argued that the term "gathered sheet" in Claim 1 cannot be read in isolation but should be construed in light of the description, and particularly cited paragraph [0035] of the description which provides an explicit definition of the term "gathered sheet" in the technical context of the patent:

 

“[0035] the term 'gathered' denotes that the sheet of tobacco material is convoluted, folded, or otherwise compressed or constricted substantially transversely to the cylindrical axis of the rod.”

 

The opponent contended that, under this definition, a “spirally wound aerosol-forming substrate”, as disclosed in cited document D1 (EP 2368449 A1), anticipates the novelty of the claimed “gathered sheet of aerosol-forming material” in the present patent.

 

In response, the proprietor argued that the feature of a “gathered sheet” has a well known and unambiguous meaning in the literature; and, therefore, the description should not be consulted to broaden that interpretation.

 

The Opposition Division ruled in favour of the proprietor, determining that the term "gathered sheet" has a recognised meaning within the tobacco industry, specifically referring to a sheet that is "folded and convoluted to occupy a three-dimensional space." As such, it was considered unnecessary to further interpret the term based on the description. The Opposition Division concluded that a rolled sheet, as disclosed in D1, does not meet the criteria to be considered a "gathered sheet." The subject-matter as granted was therefore deemed novel and the patent maintained as granted.

 

Appeal

 

When examining how the claim should be interpreted to assess patentability, the Technical Board of Appeal noted divergent case law in EPO proceedings regarding the legal basis for interpreting claims, particularly concerning the extent to which the description should be considered when construing a claim that is deemed clear based on common general knowledge.

 

Divergent Case Law

 

The Technical Board of Appeal considered that two distinct approaches to claim interpretation are applied within the European Patent Office, with particular reference made to decisions T 1473/19 and T 0169/20.

 

1. The Classical Approach (as adopted by the Opposition Division and the Proprietor)

 

• The Board cited decision T 0169/20, which determined that the legal basis for interpreting the meaning of claims in the context of patentability lies in Article 84, Rule 42, and Rule 43 EPC.
• The wording of the claim is considered independently in the first instance. If the claim's wording is sufficiently clear for a person skilled in the art to understand, the supporting role from the description is deemed neither necessary nor justified.
• Under this approach, Article 69 EPC, and Article 1 of its Protocol, are only deemed relevant for assessing infringement.

 

2. The Contextual Approach (as adopted by the Opponent)

 

• The Board cited decision T 1473/19, which determined that Article 69 EPC, together with Article 1 of its Protocol, provides a clear legal basis for considering the description and drawings when assessing claims for patentability.
• Under this approach, the description and drawings can and should be relied on when determining the claimed subject-matter in proceedings before the EPO.
• The claims are not read in isolation but in conjunction with the supporting documentation to ensure alignment with the invention's disclosed embodiments and objectives.

 

Referral to the Enlarged Board of Appeal

 

In view of the above highlighted divergence in existing jurisprudence, the Technical Board of Appeal, in decision T 0439/22, referred three critical questions to the EBoA under Art. 112(1)(a) EPC.

 

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 Articles 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?

 

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?

 

Final Thoughts

 

The patent community hopes that the decision in G 1/24 will bring much-needed clarity on the relationship between claim interpretation and the description and figures.

 

The outcome of G 1/24 could have a profound impact, potentially reshaping how patent applications are drafted and examined, and how resulting patents are enforced across Europe.

 

The team at Keltie will provide a further report after the Enlarged Board of Appeal publishes its response.