Claim interpretation: G1/24 case catch-up

In G 1/24, the EBA stated that:

"The claims are the starting point and the basis for assessing the patentability of an invention [...] The description and drawings shall always be consulted to interpret the claims when assessing the patentability of an invention [...] and not only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation."

So far, the Boards of Appeal have applied this order by consulting the description, but not using the description (and specifically definitions provided in the description) to override clear claim language (IPKat). However, this appears to have stoked rather than settled the debate on how G1/24 should be interpreted. 

Earlier this week, another referral was announced, on the related issue of whether it is necessary for the description to be amended in line with the claims (IPKat). 

The EPO's guidance to Examiners on G1/24

The guidance begins by noting that the Enlarged Board highlighted "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 (par. 20 of the reasons)". According to the internal guidance, the Examining Divisions should "therefore continue to apply the practices given in the Guidelines, in particular:

• During search, the search division considers the description and drawings (GL B-III, 3.2).

• In case of unclear claims, as far as possible, require the claims to be amended so that their meaning is clear from the wording of the claims alone (GL F-IV, 4.2).

• In case of inconsistencies between the claims and the description, continue to apply the current practice on adaptation of the description set out in GL F-IV, 4.3.

• If the claims are more limited than the description, the claims may be broadened or the description may be limited (and vice versa) (GL F-IV, 4.3(i)).

• In opposition, only inconsistencies between the description and the claims resulting from amendments during opposition proceedings are open for objections under Art. 84 (GL D-V, 5)."

The EPO then provides Examiners with two examples on how the guidance should be applied:

Scenario 1 (Claim narrower than the description)

Claim: layer 1 is positioned directly on layer 2.

Description: Definition of “layer 1 is positioned directly on layer 2” means that a maximum of two intermediate layers may be present between layer 1 and 2.

Action

1. The claim contravenes Article 84 EPC because of an inconsistency between the claim and the description (GL, F-IV, 4.3).

2. During search, you also look for prior art documents falling under the broad interpretation of “directly” given in the description. Your search should cover both definitions since the applicant can either broaden the claims or limit the description (GL B-III, 3.2).

3. You should explain in your search opinion/communication to the applicant how you interpret the claims. You justify using also the broad definition in the description by mentioning G1/24, GL B-III, 3.2
and GL, F-IV, 4.2.

4. You raise an objection under Art. 84 EPC and ask the applicant to remove the inconsistency (by broadening the claims or by limiting the description as appropriate, GL F-IV, 4.3(i)). Where relevant prior art is found for one of the definitions you raise an objection under Art. 54/56 EPC.

Where you see a good way for overcoming all objections, you should indicate this to the applicant

Scenario 2 (Claim broader than the description)

Claim: layer 1 is positioned over layer 2.

Description: Definition of “layer 1 is positioned over layer 2 means that layer 1 is directly positioned on layer 2 without intermediate layers present between layer 1 and 2”.

Action

1. The claim contravenes Article 84 EPC because of an inconsistency between the claim and the description (GL, F-IV, 4.3).

2. During search, you look for prior art documents (Art. 54, 56) falling under the broad definition of the claim AND the most restrictive definition in the description as an obvious fall-back position (GL BIII, 3.2).

3. You raise an objection under Art. 84 EPC and ask the applicant to remove the inconsistency (by broadening the description or by limiting the claims as appropriate, GL F-IV, 4.3(i)). Where relevant prior art is found for one of the definitions you raise an objection under Art. 54/56 EPC. [PatKat: It will be a brave applicant that chooses to broaden the description!]

Where you see a good way for overcoming all objections, you should indicate this to the applicant. If prior art is found only for the broad scope you may ask the applicant to limit the scope of the claims based on the description."

Final thoughts

Following G1/24, therefore, Examiners are being told to search both the claims and definitions provided in the description, if these are different.  Most of the guidance is otherwise directed at ensuring that there is alignment between the description and claims, and merely references the existing Guidelines for Examination. 

Whilst this internal guidance indicates that this is not citable, it does note that the EPO Guidelines for Examination "will be amended accordingly in the current revision cycle." We can therefore expect updates to the official Guidelines shortly on the search strategy aspect.  

Source: https://ipkitten.blogspot.com/2025/08/non-change-epos-guidance-to-examiners.html