Tag: clarity

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G 1/24 – claim interpretation

On 18 June 2025, the Enlarged Board of Appeal (EBA) rendered its decision on claim interpretation in EPO proceedings in matter G 1/24 . The EBA held that (headnote of the decision): “The description and any drawings are always referred to when interpreting the claims, and not just in the case of unclarity or ambiguity.” Thus, claim interpretation in proceedings before the EPO is based on the same principles as in infringement proceedings. Prior to G 1/24, some Boards of Appeal took the position that the description and drawings are to be consulted for claim interpretation only in case the claims were unclear or ambiguous.

Many useful and valuable resources on G 1/24 are already available online, such as:

While the headnote of G 1/24 stipulates that the description is to be taken into consideration for claim interpretation in proceedings before the EPO, this does not mean that clarity issues in the claims can be resolved by simply referring to the description. Point 20 of G 1/24 highlights “… the importance of the examining division carrying out a high quality examination of whether a claim fulfils the clarity requirements of Article 84 EPC. The correct response to any unclarity in a claim is amendment.”

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Adaptation of the description in EPO proceedings

It is rare for a Board of Appeal decision to spark widespread interest on (business and/or IP-related) social media. This was different last week, when many patent practitioners enthusiastically posted about T 0056/21 of 04 October 2024.

Datasheet of T 0056/21

The headnote of this decision reads:

“In examination of a patent application, neither Article 84 nor Rules 42, 43 and 48 EPC provide a legal basis for requiring that the description be adapted to match allowable claims of more limited subject-matter.”

Some have suggested that T 0056/21 will significantly change the EPO’s practice when it comes to adaptation of the description. This will remain to be seen.

Roche’s IP department and the counsel handling T 0056/21 deserve praise for seeking clarification on this issue. This even more so, as the adaptation of the description appears to be very dear to some examiners in light of the quality discussions. And Board 3.3.04 is to be applauded for reasons of the decision that are not only comprehensive, but are guided by what the drafters of the EPC had in mind when it comes to clarity.

Not everyone reading the various posts on T 0056/21 might be aware of the fact that the same applicant (Roche) has previously pushed this matter to the Board of Appeal. The previous appeal has resulted in T 1989/18 of 16 December 2021. While the latter decision does not have a headnote, the reasoning in points 4-13 of T 1989/18 reaches conclusions similar to those in the headnote of T 0056/21. T 1989/18 did not appear to do much to alter the EPO’s practice as regards the adaptation of the description. Hopefully, Roche (or other applicants) will continuetheir commitment to resolving the question of whether, and if so to what degree, an adaptation of the description to amended claims is required. At least in US proceedings, all IP stakeholders appear to be comfortable working with a description that is not modified in light of claim amendments during prosecution.