European Patent Office \u2013 Enlarged Board of Appeal
\nround-up<\/p>\n
“Far-fetched and utterly implausible”<\/p>\n
Novelty: G 1\/23 \u2013 “Solar
\nCell”<\/p>\n
On 2nd July 2025 the Enlarged Board of Appeal (EBA) of the
\nEuropean Patent Office (EPO) released its decision in referral G
\n1\/23, in which it had to consider the prior art effect of putting a
\ncomplex nonreproducible product on the market. According to earlier
\nEBA decision G 1\/92, the chemical composition of a product is state
\nof the art when the product as such is available to the public and
\ncan be “analysed and reproduced” by the skilled person,
\nirrespective of whether or not particular reasons can be identified
\nfor analysing the composition.<\/p>\n
The case arose from opposition\/appeal proceedings (appeal number
\nT0438\/19) in connection with European patent number 2626911. The
\nopposition was rejected by the Opposition Division, which found
\nthat the invention involved an inventive step, against which
\nfinding the opponent appealed. The closest prior art was the
\ncommercially available product “ENGAGE\u00ae 8400”, a
\ncomplex polymer. The method for manufacturing the product exactly
\nwas not in the public domain, and its exact reproduction is not
\nstraightforward, even if the material, i.e. the final product
\nitself, is available to the skilled person for analysis. The
\nopponent argued that the skilled person could make a product
\nsufficiently similar to ENGAGE\u00ae 8400, and an exact reproduction
\n(following G 1\/92) is not required. The proprietor argued that this
\nproduct is not prior art because its composition\/internal structure
\ncannot be reproduced (following G 1\/92).<\/p>\n
The EBA was thus asked to answer 1) whether a product put on the
\nmarket before the filing date of a European patent application can
\nbe excluded from the state of the art under Article 54(2) EPC
\nsolely because its composition or internal structure could not be
\nanalysed and reproduced by the skilled person before the filing
\ndate. If the answer to this question is “No”, then the
\nEBA was also asked 2) whether any technical information about such
\na product that was made publicly available before the filing date
\nforms part of the state of the art, regardless of whether the
\nskilled person could analyse and reproduce the product and its
\ncomposition or internal structure. (There was also a third question
\nreferred, but this was moot).<\/p>\n
The EBA held that:<\/p>\n
\nA product made available to the public (e.g., by being put on
\nthe market) cannot be excluded from the state of
\nthe art simply because its composition or internal structure could
\nnot be analysed and reproduced by the skilled person before the
\nrelevant date (i.e. the answer to Question 1) is “no, it
\nisn’t excluded”).
\n
\nAny technical information about such a product that was made
\npublicly available before the filing date forms part of the
\nstate of the art, regardless of whether the skilled person
\ncould analyse and reproduce the product and its composition or
\ninternal structure (i.e. the answer to Question 2) is “yes, it
\ndoes form part of the prior art”).
<\/p>\n
The EBA found that answering “yes” to question 1)
\nwould mean that the product “simply does not exist” for a
\nskilled person, which “directly contradicts everyday
\nexperience”, and “is clearly far-fetched and utterly
\nimplausible, manifestly contradicting notorious facts”. This
\nleads to “an absurd result and cannot hold”. The EBA thus
\nfound that the requirement for the product to be
\n“reproducible” from G 1\/92 must include being able to
\nobtain the product from the market, to avoid the logical conclusion
\nthat otherwise “no material in the physical world would belong
\nto the state of the art”.<\/p>\n
Thus, it is questionable whether this decision does anything
\nother than clarify what most (sensible) patentees were already
\npracticing, i.e. if you wish to seek patent protection for a new
\nchemical product, then file your patent application prior to
\noffering the product for public sale.<\/p>\n
“Gather round the campfire, everybody \u2013 we’re
\ngoing to read a patent specification”<\/p>\n
Claim interpretation: G 1\/24 – “Heated
\nAerosol”<\/p>\n
On 18th June 2025, the EBA issued its decision in case G 1\/24,
\nin which it needed to consider questions relating to the use of the
\ndescription and drawings of a patent specification when
\ninterpreting the claims. The answers to these questions are
\nfundamental to the assessment of whether an invention is
\npatentable, with claim interpretation central to a determination as
\nto whether a prior disclosure is inside or outside the scope of the
\nclaims.<\/p>\n
The questions are set out in more detail below, and the response
\nof the EBA is expressed in decision G 1\/24. In summ<\/p>\n
“The claims are the starting point and the basis for
\nassessing the patentability of an invention under Articles 52 to 57
\nEPC. The description and drawings shall always be consulted to
\ninterpret the claims when assessing the patentability of an
\ninvention under Articles 52 to 57 EPC, and not only if the person
\nskilled in the art finds a claim to be unclear or ambiguous when
\nread in isolation”.<\/p>\n
This will generally be seen as a simple and logical position for
\nthe EPO to take and addresses some perceived inconsistencies in
\nprior case law from the EPO’s Technical Boards of Appeal.
\nEncouragingly, the EBA’s decision is (deliberately) consistent
\nwith the positions of both national courts and the Unified Patents
\nCourt, in which litigation of patents granted by the EPO may take
\nplace.<\/p>\n
Background<\/p>\n
There are many cases in which the patent drafter has a
\nparticular intention in mind when using specific claim language to
\ncover an invention. The selected terminology may be the best way to
\nexpress the invention concisely, but other literal interpretations
\nof that terminology may also exist in different contexts that are
\nfurther removed from the invention. In such cases, the description
\nand drawings are typically used by the drafter to provide guidance
\nas to the meaning which is intended in a particular case.<\/p>\n
There are also situations in which selected terminology may have
\na more established meaning in a technical field, with fewer
\nalternative interpretations generally available. Nevertheless, the
\ndrafter may wish to deviate from an established meaning in a
\nparticular patent application by providing a particular definition
\nin the description and drawings which they intend to be used to
\ninterpret the claims. This situation is the basis on which a
\nreferral was made to the Enlarged Board of Appeal.<\/p>\n
The Appeal<\/p>\n
The Patent at issue in this litigation was European Patent EP
\n3076804 (Philip Morris Products S.A.), relating to a vaping device.
\nThe claims as granted specify that an ‘aerosol-forming
\nsubstrate comprises a gathered sheet of aerosol-forming material
\ncircumscribed by a wrapper’. The term
\n‘gathered’ is defined in the patent, in the
\ncontext of a tobacco sheet, as denoting that the sheet ‘is
\nconvoluted, folded or otherwise compressed or constricted
\nsubstantially transversely to the cylindrical axis of the
\nrod’.<\/p>\n
The Patent was opposed by Yunnan Tobacco International Co., Ltd,
\nwho submitted that such a definition would include a gathered sheet
\nwhich had been disclosed in the prior art, and that the patent
\nshould be rejected as the invention was unpatentable. The
\nOpposition Division took a different view, however, citing little
\nmore than a Wikipedia entry for the term ‘gather’ in the
\ncontext of sewing, in which it is more widely used. The Opposition
\nDivision used the interpretation for ‘gathered’ as
\n‘geometrically modified into a more complex shape’, derived
\nfrom the Wikipedia entry, as an analogy of how the patent should be
\ninterpreted, in the absence of a more established interpretation.
\nThe complexity of the geometric modification was interpreted to
\nexclude, for example, the simpler rolling of a sheet (as was
\ndisclosed in the prior art), and as such, the claims were
\nconsidered to be patentable and the opposition was rejected.<\/p>\n
The rejection of the opposition was appealed. In its
\nconsideration, the Technical Board of Appeal identified diverging
\nlines of case law as to when the description should be taken into
\naccount when interpreting an allegedly clear term, and referred the
\nfollowing questions to the EBA:<\/p>\n
(1): Is Article 69(1), second sentence, EPC and Article 1 of the
\nProtocol on the Interpretation of Article 69 EPC to be applied to
\nthe interpretation of patent claims when assessing the
\npatentability of an invention under Articles 52 to 57
\nEPC?<\/p>\n
(2): May the description and figures be consulted when
\ninterpreting the claims to assess patentability and, if so, may
\nthis be done generally or only if the person skilled in the art
\nfinds a claim to be unclear or ambiguous when read in
\nisolation?<\/p>\n
G 1\/24 Answer: Yes, always<\/p>\n
(3): May a definition or similar information on a term used in
\nthe claims which is explicitly given in the description be
\ndisregarded when interpreting the claims to assess patentability
\nand, if so, under what conditions?<\/p>\n
G 1\/24 Answer: Dealt with in answer to question (2).<\/p>\n
The Protocol on the Interpretation of Article 69 EPC is an
\nintegral part of the Convention and was introduced by agreement of
\nthe member states in 2000 to help further harmonise patent law and
\nto promote innovation and economic growth in Europe. The wording of
\nthe Protocol referenced in question (1) provides the possibility of
\ninterpreting the scope of protection of a European patent by
\nreference to the description and drawings in a way which combines a
\nfair protection for the patent proprietor with a reasonable degree
\nof legal certainty for third parties. The Protocol states that the
\nprotection should not be defined by strict, literal meaning of the
\nwording used in the claims, nor that the claims provide only a
\nguideline. However, the Protocol has been generally interpreted by
\nthe EPO as applying to determination of claim scope in infringement
\nactions before national courts and the UPC, rather than in
\nassessing patentability of claims during prosecution (whether this
\napproach is justified is perhaps the subject of a separate
\ndebate).<\/p>\n
The EBA considered that Article 84 EPC, requiring that the
\nclaims define the matter for which protection is sought, is the
\nonly credible alternative as a legal basis for claim interpretation
\nto assess patentability, but that this provides only an instruction
\nas to the formal requirement of the content of a claim, rather than
\nguidance on its interpretation.<\/p>\n
Despite the resulting absence of clear legal basis for claim
\ninterpretation in the EPC, the EBA does note that consistent
\nprinciples can be derived from the case law.<\/p>\n
Firstly, it is established that the claims provide the starting
\npoint. Secondly, divergence in case law as to whether the
\ndescription and drawings should always be considered, or only in
\nthe event of ambiguity or a lack of clarity, should be resolved in
\na way which avoids divergence from the practice of national courts
\nand the UPC, and which avoids conflict with the Protocol, by
\nrejecting the interpretation that the description and drawings
\nshould only be considered in the event of ambiguity. Further, the
\nEBA notes that the consideration that the finding that a claim is
\nclear and unambiguous is an act of interpretation, not a
\npreliminary stage to such interpretation, such that the
\nidentification of a reason to justify consideration of the
\ndescription and drawings is not logical.<\/p>\n
Conclusion<\/p>\n
As a consequence, the importance of the content of the
\ndescription and drawings of a patent specification is confirmed.
\nDefinitions of terminology must be carefully considered,
\nparticularly in cases where such definitions diverge from those
\nwhich are more widely established. If a term in a claim has a clear
\nmeaning, a broader definition in the description may cause a claim
\nto lack patentability. As an aside, the interpretation of the
\nOpposition Division in this case of the term ‘gathered’
\nfrom the field of sewing is an interesting exercise in how a widely
\nestablished meaning of a term might be derived.<\/p>\n
The relationship between the description and drawings and the
\nclaim language must also, as is being considered via a growing body
\nof EPO case law, be considered to ensure that there is no conflict
\nresulting from amendment of the claims during prosecution, in which
\ndescription wording might, for example, affect the patentability of
\na claim via its effect on the interpretation of the claim wording.
\nFurther, such a conflict in meaning may have implications when
\ntesting if an amendment is supported by the application as filed
\n(Article 123(2) EPC) or if the claim scope has been broadened after
\ngrant in opposition proceedings (Article 123(3) EPC). There may,
\ntherefore, be an increased focus on clarity of terminology during
\nprosecution as a result of this decision.<\/p>\n
While there are consequently practical points to note in terms
\nof how patent specifications should be drafted, the overriding
\nalignment of this EBA’s decision with the harmonisation
\nphilosophy underlying the EPC is exceptionally positive, and the
\nsimplicity and logic of the EBA’s decision is to be
\ncommended.<\/p>\n