March 2025 Patent claim scope is not necessarily uniform between jurisdictions. However, one might expect the European Patent Office (EPO; which grants European Patents) and the Unified Patent Court (UPC; where European Patents are enforced) to have the same view of claim interpretation. However, this might not be the case.
Article 84 EPC seems clear in stating that “the claims shall define the matter for which protection is sought”.
More recently, the Unified Patent Court (UPC) on the face of it appears to concur. UPC Court of Appeal decision 335/2023 states “The Patent Claim is not only the start point, but the decisive basis for determining the protective scope of the European patent”. (UPC Court of Appeal decision 335/2023 paragraph 4.2).
This would appear to be in line, again with Article 69(1) EPC, first sentence, which states “the extent of the protection conferred by a European patent or a European patent application shall be determined by the claims”.
Claim Interpretation at the EPO – the Ongoing Saga and G1/24
However, there has been a long brewing controversy at the EPO regarding interpretation of the claims and the extent to which claims should be interpreted in the light of disclosures in the specification. This is, we expect, to be resolved in the decision of the EPO Enlarged Board of Appeal (EBA) following its hearing on 28 March 2025 in respect of Appeal G1/24.
In advance of the hearing the EBA has issued its (brief) preliminary opinion. The EBA is considering G1/24 because of two inconsistent strands of case law regarding interpretation of claims at the EPO.
In the case underlying G1/24 (European Patent EP3076804; Appeal T0439/22) the Opposition Division have applied what the EPO Technical Boards of Appeal (TBA) characterised as the “classical approach” to claim interpretation which follows the principle that only if claim terms are unclear from reading the claim on its own should the description be consulted to further construe those claims.
This approach might effectively prohibit consulting the disclosure of the description of the claims are clear on their face.
In contrast, the TBA also identified a divergent line of case law, of which TBA Decision T1473/19 is an example, which states that when the description provides definitions for terms in the claims these “cannot be left unconsidered”.
Thus there is a discrepancy at the EPO in claim interpretation.
Claim Interpretation at the UPC
In contrast, the developing case law at the UPC appears to have no such ambiguity because the UPC Court of Appeal in case 335/2023 stated (at page 24, fourth-to-last paragraph) that the interpretation of the claims “does not depend solely on the strict, literal meaning of the wording used [as] the description and the drawings must always be used as explanatory aids.” Thus following this decision, a Local Division of the UPC (e.g. the Paris Local Division of the UPC in Decision 230/2023) must examine both the claim language and the description in order to correctly interpret the claims.
Everyone Seeks Uniform Claim Interpretation
Furthermore, the Local Division of the UPC also emphasises that the principles of claim interpretation apply uniformly to infringement and validity assessments.
On this point, the EPO TBA has also stated that there is a strong interest in the “uniform application of the principles of claim interpretation both in patent grant proceedings […] and also in post-grant revocation and infringement proceedings before the court of the EPC contrasting state, including the Unified Patent Court.”
Thus both the EPO and the UPC appear on the face of it to be aiming for the same objective of uniform claim interpretation.
However, it has also been noted that: (i) the UPC does not deal with prosecution of patent applications; and (ii) the EPO does not deal with infringement proceedings. Thus each institution appears to be telling the other that they should follow their system of claim interpretation.
Thus we now await the decision of the EBA in G1/24 to see whether the “classical approach” of the EPO will be maintained or whether the EBA will decide that the approach to claim interpretation should be more closely or indeed completely aligned with the practice that has developed at the UPC.
We, and everybody else, await developments with great interest.
