Continuation of examination and opposition proceedings in view of referral G 1/24

In case T 439/22 the Technical Board of Appeal 3.2.01 at the European Patent Office has referred legal questions regarding claim interpretation to the Enlarged Board of Appeal.

According to Article 69 (1) EPC the extent of the scope of protection of a European patent or patent application is determined by the claims. However, the description and drawings are to be used to interpret the claims.

The legal questions of the referral concern the interpretation of claims during prosecution of a patent application. The questions that are directed to the Enlarged Board of Appeal are as follows.

1. The first question to be answered by the Enlarged Board of Appeal is whether Article 69 (1) EPC should also be used for the interpretation of the claims when assessing patentability of an invention during prosecution.
2. Secondly, the Enlarged Board of Appeal is asked to determine whether the description and figures can be consulted when interpreting the claims to assess patentability? If that is so, may this be done generally or only if the skilled person finds a claim unclear or ambiguous when the claim is read in isolation.
3. Thirdly, it is to be determined if a definition on a term in the claims is explicitly given in the description, can this definition be disregarded when interpreting the claims to assess patentability? And, if so, under what conditions can the definition be disregarded?

Even though the answers to the referred questions might have a significant impact on examination and opposition proceedings at the EPO, the President of the EPO has decided that proceedings before the examining and opposition divisions should continue to ensure the proper functioning of the EPO and for legal certainty.