BLOG POSTs - Case law

T 439/22 - Referral case applies G 1/24 order on claim interpretation

Catchword of the Boards of Appeal:

“1. In interpreting the language used in a claim, ‘consulting’, ‘referring to’, ‘using’ and ‘taking into account’ the description and figures are synonyms for the act of deriving the necessary information from the patent as a whole to understand which meaning a person skilled in the art would attribute to the terms used in the claim.

2. Claim interpretation is the result of both reading the claims and consulting the description and drawings as a unitary process (holistic approach taken by the Enlarged Board of Appeal in decision G 1/24).

3. In line with this approach, a person skilled in the art reading the claim in the context of the description and figures will try to take a definition found in the description at face value. As long as the definition is technically reasonable and complies with the overall teaching of the claims, description and figures, the skilled person will read terms in the claim in the sense of the definition, taking into account both the broadening and limiting aspects.”

Summary:

EP 3 076 804 B1 referring to a HEATED AEROSOL GENERATING ARTICLE WITH THERMAL SPREADING WRAP survived opposition proceedings at the European Patent Office (EPO). Claim 1 was held novel and inventive by the opposition division due to feature “a gathered sheet of aerosol-forming material circumscribed by a wrapper” allegedly not encompassing a spirally wound tobacco sheet as disclosed in document D1. The opponent appealed the opposition division’s decision and argued in view of broader and specific definition of the decisive feature in the patent description, D1 would take away novelty.

In interlocutory decision of T 0439/22 the Board of Appeal (BoA) referred questions regarding the interpretation of patent claims to the Enlarged Board of Appeal (EBA) leading to case G 1/24. Therein, the EBA clarified that “The description and drawings shall always be consulted to interpret the claims when assessing the patentability of an invention under Articles 52 to 57 EPC” (G1/24, Order).

The BoA now has applied this order in the decision of T 0439/22 dated 11 December 2025. It did not follow the patent proprietor’s (respondent in appeal) conclusion of G 1/24. The respondent alleged G 1/24 would infer a two-step approach of claim interpretation of (i) assessing the meaning of the claim in isolation and then (ii) to “consult” (i.e. to “consider”), but potentially disregard the description and drawings in view of what the skilled person gathered from reading the claims in light of its common general knowledge. In the contrary, the BoA alleged that “consulting” would be one of several synonyms for “deriving the necessary information from the patent as a whole to understand which meaning a person skilled in the art would attribute to the terms used in the claim” (Catchword point 1). Furthermore, the BoA infers “reading the claims and consulting the description and drawings as a unitary process” for claim interpretation (Catchword point 2). 

The BoA applied G 1/24 such that the term "gathered sheet" of claim 1 hat to be interpreted in view of definitions of the terms “sheet” and “gathered” in paragraphs [0030]  and [0035]  of the patent in suit, respectively. According to the BoA, even if interpretation of the term “gathered sheet” when read in isolation would lead to a different result compared to when read regarding the definitions in paragraphs [0030](1) and [0035](2), this would not be sufficient to disregard these definitions. The BoA hence concluded the skilled person would have consulted these definitions and arrived at the conclusion “gathered sheet” would also encompass an embodiment(3) disclosed in prior art document D1 and thus claim 1 would lack novelty over D1.

Finally, the BoA concluded the referral to the EBA would be an exceptional circumstance in view of which the respondent could not have reasonably been expected to file a meaningful auxiliary request prior to the Enlarged Board's decision. Hence the BoA admitted the respondent’s auxiliary request filed in response to the conclusions of the Enlarged Board of Appeal in case G 1/24. The sole amendment was the deletion of paragraph [0035] from the description. The claims remained unchanged. The BoA followed the appellant-opponent’s argument that deletion of [0035] would extend the scope of protection in that said embodiment of D1 would not be encompassed anymore and thus violate A. 123(3) EPC.

The patent was thus revoked in its entirety.

Comment:

The BoA alleges that the skilled person would take into account both broadening and limiting aspects when reading the claim in the sense of a definition it tried to take from the description. The BoA goes even further and concludes it would be “not permissible to consider only the broadening aspects contained in a definition and disregard any limiting aspects.” (T 0439/22, reasons at point 6, fourth para.). In my opinion however, care must be taken when applying limiting aspects to claim interpretation. Because the EPO itself is emphasizing in its 2026 Guideline Preview that “the description and drawings cannot be relied on to read into the claim a restrictive feature not suggested by the wording of the claim.” (Preview of the English version of the amended EPC Guidelines due to enter into force on 1 April 2026, F-IV 4.2, second paragraph, accessed on 2 March 2026). 

Practice notes:

Care should be taken when drafting broad definitions of claimed terms in the patent description that broaden the interpretation of a claim when read in conjunction with the claim compared to when reading the claim in isolation. Such controversy might not allow to disregard a definition for claim interpretation as claim interpretation can be considered to reading the claims and consulting the description and drawings in a unitary process.

Broadening and restrictive aspects contained in a definition might be taken into account for claim interpretation. However, limits may still remain if the claim wording itself is not suggesting restrictions. 

Referral of a case to the EBA can be an exceptional circumstance for admitting auxiliary requests to the appeal case filed after the EBA’s decision, if for example it would not have been possible to file a meaningful auxiliary request prior to the EBA’s decision.

Footnotes:

(1) “As used herein, the term ’sheet’ denotes a laminar element having a width and length substantially greater than the thickness thereof.” 

(2) “As used herein, the term ’gathered’ denotes that the sheet of tobacco material is convoluted, folded, or otherwise compressed or constricted substantially transversely to the cylindrical axis of the rod.” 

(3) A tobacco sheet that is "compressed or constricted substantially transversely to the cylindrical axis of the rod”.