EPO Enlarged Board to consider principles of claim interpretation

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

EPO Enlarged Board to consider principles of claim interpretation

Sponsored by

inspicos-400px recrop.jpg
advertisement-2098989.jpg

Jakob Pade Frederiksen of Inspicos reviews a recent referral to the EPO Enlarged of Board of Appeal relating to the impact of statements in the description on the interpretation of claims

On April 10 2024, a technical board of appeal of the EPO decided at oral proceedings in relation to case T 439/22 (opposition proceedings against European patent 3 076 804) to refer a fundamental question of law to the Enlarged Board of Appeal (EBA). The issue to be considered by the EBA relates to claim construction, particularly with regard to the significance of statements in the description on the interpretation of claims.

The patent-in-suit relates to a heated aerosol-generating article comprising an aerosol-forming substrate, such as a tobacco substrate. The aim of such aerosol-generating articles is to reduce harmful smoke constituents produced in conventional cigarettes. Claim 1 of the patent recites “a gathered sheet of aerosol-forming material”. According to the description of the patent, the term “gathered” has a broad meaning.

While the written decision of the technical board of appeal has not yet become available at the time of writing, the preliminary opinion of the board, issued on December 5 2023, indicates that a particular piece of prior art potentially deprives the subject matter of claim 1 of novelty if the feature “gathered sheet” is interpreted according to the broad definition indicated in the description. However, the subject matter of claim 1 might be considered novel if the term “gathered sheet” is interpreted more narrowly in accordance with a skilled person’s ordinary understanding of the term.

As noted by the board in the preliminary opinion, according to one line of case law (e.g., T 1473/19), the broad definition given in the description of the patent cannot be left unconsidered, whereas, according to another line of case law (e.g., T 169/20), the description should only be resorted to for interpreting the claims in the exceptional case where clarification is required; i.e., when a skilled person does not have a firm understanding of what a particular feature means in the relevant field of art.

According to the preliminary opinion of the technical board of appeal, a narrow interpretation of the claim language ignoring a definition given in the description would potentially conflict with a broader interpretation by national courts of the Unified Patent Court in infringement proceedings.

more from across site and SHARED ros bottom lb

More from across our site

IPH, which owns several IP businesses in the APAC and Canada, reported a 16.5% increase in revenue and 13% jump in profit after tax
With Ireland’s government re-engaging with the idea of a UPC referendum, it provides a chance to improve the system further
US-based company says appointment of Jorge Ordonez shows its momentum as a private-equity-backed platform expanding in the IP services market
The firm hired an IP litigation team during the reporting period and has entered the Managing IP rankings for trademark work
Masaki Mikami of Marks IP explains how he helped prove acquired distinctiveness to secure protection for 'Pocky' in Japan
Daralyn Durie discusses the ‘amazing’ opportunity of working on an AI case, the value of celebrating women, and how to build the next wave of talent
New members of the Access Advance patent pool and Harvard University coming under fire were also among the top talking points
Team from Graham Watt & Co will join Beck Greener’s London office
The firm reported a small uptick in overall revenue and profit per equity partner, while its IP team secured notable life sciences victories
Paul Ainsworth, who secured a settlement for his client in a patent dispute, says the case shows why medical claims by dietary supplement companies can threaten IP rights
Gift this article