In June 2025, the Enlarged Board of Appeal issued its decision in seminal case G1/24 in what has been described as one of the most important cases in decades.

In the already much discussed decision, the Enlarged Board stated that the claims were the starting point for assessing patentability of an invention but that 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 claims to be unclear or ambiguous when read in isolation.

On its face, the application of the decision seems relatively straightforward but it has been left to the Technical Boards of Appeal to address the meaning of ‘consulted’ from the statement above.

There has already been a string of cases decided by Technical Boards of appeal following G1/24, cases which include T1561/23, T1999/23, T0161/24 and T1465/23.

In general, the Technical Boards of Appeal have applied G1/24 in a similar way though not necessarily in decisions which use similar language.  Overall, the Technical Boards interpret the claims, having taken the position that ‘consulting’ the description and drawings does not mean that definitions from the description can be or should be read into the claims, when there is a clear meaning to a term in the claims.

T1999/23 for example states that ‘the description cannot be relied on to read into the claim an implicit restrictive feature not suggested by the explicit wording of the claim’. In T1561/23, the Board stated that to ‘consult’ the description ‘does not even explicitly require that the definition of a term from the description must be used for interpretation of a claim’. T1465/23 expressly stated that the description cannot override a stable and well-understood meaning of a term in the claim.

Of note in T1465/23, the scope of the claim was not read more narrowly after consulting the description, and that consequently, the technical effect of the invention was not present across the entire scope of the claim, and the claim did not therefore involve an inventive step.

The Technical Board decisions to date have been on the issue of whether the description and drawings can be used to narrow the meaning of terms in the claim and we await the issue of the decision in T459/22 (which is the decision which resulted in G1/24) in which the description provides a broader definition than that in the claims.

Patentees (and their attorneys) must therefore continue to hold uppermost in their minds that terms in the claims are likely to be given the “broadest reasonable interpretation” and their “ordinary meaning” in proceedings before the EPO and its Boards of Appeal.

Interestingly, the UPC Court of Appeal has taken a different view. In NanoString Technologies v Genomics which was the first ever substantive UPC Court of Appeal decision issued in February 2024, the UPC Court of Appeal stated that the claim is ‘the decisive basis for determining the protective scope of a European patent’, but that ‘the description and the drawings must always be used as explanatory aids for the interpretation of the patent claim and not only to resolve any ambiguities in the patent claim’. This position is much more aimed at balancing adequate protection for the patent owner with legal certainty for third parties.

The relatively new but developing UPC case law pays much more heed to the description and drawings than the EPO Boards of Appeal.

A final point to consider is the combined effect of G1/24 with the upcoming decision in G1/25 concerned with whether and to what extent the EPC requires a patentee to adapt the description to the amended claims.

Given that the description shall always be ‘consulted’, although the effect of the consultation varies depending on the deciding body, the content of the description will continue to be a very important factor.  There is no guarantee that G1/25 will give a decisive answer to the question of whether and to what extent adaptation of the description is required, but it seems clear that there will be a lot riding on what the contents of the description are, before the effects of ‘consulting’ the description in interpreting the scope of a claim, are truly felt.

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