EPO ruling clarifies claim interpretation beyond patentability

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

Copyright © Legal Benchmarking Limited and its affiliated companies 2026

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

EPO ruling clarifies claim interpretation beyond patentability

Sponsored by

inspicos-400px recrop.jpg
Gavel and person holding lightbulb

Nils Byg Jørgensen of Inspicos says a recent EPO decision addresses the extent to which the description and drawings shall be consulted when interpreting claims under European Patent Convention provisions other than patentability

In G 1/24, the EPO’s Enlarged Board of Appeal held that the description and drawings must always be consulted when interpreting claims for the purpose of assessing patentability under articles 52–57 of the European Patent Convention (EPC).

This raised the question as to whether the description and drawings should also always be consulted to assess other requirements such as clarity, sufficiency, and added subject matter.

A recent decision, T 2488/22, sheds light on this question.

The ruling, which was handed down on February 18 2026, concerns an appeal against a first-instance decision that found that the claims of an opposed patent contained added subject matter. The proprietor argued that, following the approach endorsed in G 1/24 in June 2025, the skilled person would consult the description and understand the amended claim in a manner consistent with the disclosed embodiments.

The board’s first catchword states: “The description and drawings should be consulted to interpret the claims not only when assessing patentability under Articles 52 to 57 EPC but also when assessing compliance with other requirements of the EPC. Claims must be interpreted in a consistent and uniform manner when assessing compliance with the EPC.”

This suggests that the description plays a role in claim interpretation beyond the assessment of patentability.

Yet, the board draws an important line with regard to added matter. The decision further states that “if an amended claim is interpreted so that its subject-matter is limited to what can be derived from the application as originally filed, the comparison of this claim to the content of the application as originally filed would inevitably lead to the conclusion that the claimed subject-matter does not extend beyond the content of the application as originally filed”.

This reasoning is captured in the second catchword of the decision: “Limiting the claims based on the description and drawings when such limitations are not derivable from the claims’ wording would deprive Articles 123(2) EPC and 100(c) EPC from their meaning and purpose”.

Hence, T 2488/22 suggests that claims must be interpreted in a consistent and uniform manner when assessing compliance with the requirements of the EPC, but the decision further limits the extent to which this principle should be applied, particularly when assessing added subject matter and when using the description to read unclaimed limitations into the claims.

more from across site and SHARED ros bottom lb

More from across our site

A handful of US firms have quietly invested in European patent talent. Recent moves by Baker Botts and K&L Gates suggest that trend may be accelerating
Loke Khoon Tan and Stephanie Yip at Dentons explain what brand owners need to know ahead of January 1 2027, when updates to China’s Trade Mark Law come into force
New US bills signal that firms should work with clients to ensure they are complying with potential regulatory requirements
Octavio Espejo of Becerril, Coca & Becerril explains how sweeping patent reforms reshape filing strategies, prosecution, and divisional application practice
The UK Supreme Court’s decision in Tesla v Avanci enhances the UK's attractiveness for global FRAND battles, say lawyers at Simmons & Simmons
PE-backed practices now comprise the majority of ranked firms for patent prosecution in the Netherlands, but competitors are confident about their decision to remain independent
The firm says new additions position Brown Rudnick as a market leader in tech, life sciences, and global litigation
Richard Quatrano, counsel at Olshan Frome Wolosky, shares why technology M&A buyers and sellers must verify written IP assignments, as broken ownership chains can undermine valuation, deal terms, and closing certainty
Appointment of AI and copyright expert Anna Naydonov, as well as another partner from Orrick, shows how firms can attract top litigators through leveraging the power of their existing teams
K&L Gates and Baker Botts have recruited leading patent practitioners from Wende IP and EIP, respectively, as they seek to strengthen European patent litigation capabilities
Gift this article