Patent Round Up Report 2025

European Patent Office – Enlarged Board of Appeal round-up

"Far-fetched and utterly implausible"

Novelty: G 1/23 – "Solar Cell"

On 2nd July 2025 the Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) released its decision in referral G 1/23, in which it had to consider the prior art effect of putting a complex nonreproducible product on the market. According to earlier EBA decision G 1/92, the chemical composition of a product is state of the art when the product as such is available to the public and can be "analysed and reproduced" by the skilled person, irrespective of whether or not particular reasons can be identified for analysing the composition.

The case arose from opposition/appeal proceedings (appeal number T0438/19) in connection with European patent number 2626911. The opposition was rejected by the Opposition Division, which found that the invention involved an inventive step, against which finding the opponent appealed. The closest prior art was the commercially available product "ENGAGE® 8400", a complex polymer. The method for manufacturing the product exactly was not in the public domain, and its exact reproduction is not straightforward, even if the material, i.e. the final product itself, is available to the skilled person for analysis. The opponent argued that the skilled person could make a product sufficiently similar to ENGAGE® 8400, and an exact reproduction (following G 1/92) is not required. The proprietor argued that this product is not prior art because its composition/internal structure cannot be reproduced (following G 1/92).

The EBA was thus asked to answer 1) whether a product put on the market before the filing date of a European patent application can be excluded from the state of the art under Article 54(2) EPC solely because its composition or internal structure could not be analysed and reproduced by the skilled person before the filing date. If the answer to this question is "No", then the EBA was also asked 2) whether any technical information about such a product that was made publicly available before the filing date forms part of the state of the art, regardless of whether the skilled person could analyse and reproduce the product and its composition or internal structure. (There was also a third question referred, but this was moot).

The EBA held that:

• A product made available to the public (e.g., by being put on the market) cannot be excluded from the state of the art simply because its composition or internal structure could not be analysed and reproduced by the skilled person before the relevant date (i.e. the answer to Question 1) is "no, it isn't excluded").
• Any technical information about such a product that was made publicly available before the filing date forms part of the state of the art, regardless of whether the skilled person could analyse and reproduce the product and its composition or internal structure (i.e. the answer to Question 2) is "yes, it does form part of the prior art").

The EBA found that answering "yes" to question 1) would mean that the product "simply does not exist" for a skilled person, which "directly contradicts everyday experience", and "is clearly far-fetched and utterly implausible, manifestly contradicting notorious facts". This leads to "an absurd result and cannot hold". The EBA thus found that the requirement for the product to be "reproducible" from G 1/92 must include being able to obtain the product from the market, to avoid the logical conclusion that otherwise "no material in the physical world would belong to the state of the art".

Thus, it is questionable whether this decision does anything other than clarify what most (sensible) patentees were already practicing, i.e. if you wish to seek patent protection for a new chemical product, then file your patent application prior to offering the product for public sale.

"Gather round the campfire, everybody – we're going to read a patent specification"

Claim interpretation: G 1/24 - "Heated Aerosol"

On 18th June 2025, the EBA issued its decision in case G 1/24, in which it needed to consider questions relating to the use of the description and drawings of a patent specification when interpreting the claims. The answers to these questions are fundamental to the assessment of whether an invention is patentable, with claim interpretation central to a determination as to whether a prior disclosure is inside or outside the scope of the claims.

The questions are set out in more detail below, and the response of the EBA is expressed in decision G 1/24. In summ

"The claims are the starting point and the basis for assessing the patentability of an invention under Articles 52 to 57 EPC. 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, and not only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation".

This will generally be seen as a simple and logical position for the EPO to take and addresses some perceived inconsistencies in prior case law from the EPO's Technical Boards of Appeal. Encouragingly, the EBA's decision is (deliberately) consistent with the positions of both national courts and the Unified Patents Court, in which litigation of patents granted by the EPO may take place.

Background

There are many cases in which the patent drafter has a particular intention in mind when using specific claim language to cover an invention. The selected terminology may be the best way to express the invention concisely, but other literal interpretations of that terminology may also exist in different contexts that are further removed from the invention. In such cases, the description and drawings are typically used by the drafter to provide guidance as to the meaning which is intended in a particular case.

There are also situations in which selected terminology may have a more established meaning in a technical field, with fewer alternative interpretations generally available. Nevertheless, the drafter may wish to deviate from an established meaning in a particular patent application by providing a particular definition in the description and drawings which they intend to be used to interpret the claims. This situation is the basis on which a referral was made to the Enlarged Board of Appeal.

The Appeal

The Patent at issue in this litigation was European Patent EP 3076804 (Philip Morris Products S.A.), relating to a vaping device. The claims as granted specify that an 'aerosol-forming substrate comprises a gathered sheet of aerosol-forming material circumscribed by a wrapper'. The term 'gathered' is defined in the patent, in the context of a tobacco sheet, as denoting that the sheet 'is convoluted, folded or otherwise compressed or constricted substantially transversely to the cylindrical axis of the rod'.

The Patent was opposed by Yunnan Tobacco International Co., Ltd, who submitted that such a definition would include a gathered sheet which had been disclosed in the prior art, and that the patent should be rejected as the invention was unpatentable. The Opposition Division took a different view, however, citing little more than a Wikipedia entry for the term 'gather' in the context of sewing, in which it is more widely used. The Opposition Division used the interpretation for 'gathered' as 'geometrically modified into a more complex shape', derived from the Wikipedia entry, as an analogy of how the patent should be interpreted, in the absence of a more established interpretation. The complexity of the geometric modification was interpreted to exclude, for example, the simpler rolling of a sheet (as was disclosed in the prior art), and as such, the claims were considered to be patentable and the opposition was rejected.

The rejection of the opposition was appealed. In its consideration, the Technical Board of Appeal identified diverging lines of case law as to when the description should be taken into account when interpreting an allegedly clear term, and referred the following questions to the EBA:

(1): Is Article 69(1), second sentence, EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC to be applied to the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC?

(2): May the description and figures be consulted when interpreting the claims to assess patentability and, if so, may this be done generally or only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation?

(3): May a definition or similar information on a term used in the claims which is explicitly given in the description be disregarded when interpreting the claims to assess patentability and, if so, under what conditions?

The Protocol on the Interpretation of Article 69 EPC is an integral part of the Convention and was introduced by agreement of the member states in 2000 to help further harmonise patent law and to promote innovation and economic growth in Europe. The wording of the Protocol referenced in question (1) provides the possibility of interpreting the scope of protection of a European patent by reference to the description and drawings in a way which combines a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties. The Protocol states that the protection should not be defined by strict, literal meaning of the wording used in the claims, nor that the claims provide only a guideline. However, the Protocol has been generally interpreted by the EPO as applying to determination of claim scope in infringement actions before national courts and the UPC, rather than in assessing patentability of claims during prosecution (whether this approach is justified is perhaps the subject of a separate debate).

The EBA considered that Article 84 EPC, requiring that the claims define the matter for which protection is sought, is the only credible alternative as a legal basis for claim interpretation to assess patentability, but that this provides only an instruction as to the formal requirement of the content of a claim, rather than guidance on its interpretation.

Despite the resulting absence of clear legal basis for claim interpretation in the EPC, the EBA does note that consistent principles can be derived from the case law.

Firstly, it is established that the claims provide the starting point. Secondly, divergence in case law as to whether the description and drawings should always be considered, or only in the event of ambiguity or a lack of clarity, should be resolved in a way which avoids divergence from the practice of national courts and the UPC, and which avoids conflict with the Protocol, by rejecting the interpretation that the description and drawings should only be considered in the event of ambiguity. Further, the EBA notes that the consideration that the finding that a claim is clear and unambiguous is an act of interpretation, not a preliminary stage to such interpretation, such that the identification of a reason to justify consideration of the description and drawings is not logical.

Conclusion

As a consequence, the importance of the content of the description and drawings of a patent specification is confirmed. Definitions of terminology must be carefully considered, particularly in cases where such definitions diverge from those which are more widely established. If a term in a claim has a clear meaning, a broader definition in the description may cause a claim to lack patentability. As an aside, the interpretation of the Opposition Division in this case of the term 'gathered' from the field of sewing is an interesting exercise in how a widely established meaning of a term might be derived.

The relationship between the description and drawings and the claim language must also, as is being considered via a growing body of EPO case law, be considered to ensure that there is no conflict resulting from amendment of the claims during prosecution, in which description wording might, for example, affect the patentability of a claim via its effect on the interpretation of the claim wording. Further, such a conflict in meaning may have implications when testing if an amendment is supported by the application as filed (Article 123(2) EPC) or if the claim scope has been broadened after grant in opposition proceedings (Article 123(3) EPC). There may, therefore, be an increased focus on clarity of terminology during prosecution as a result of this decision.

While there are consequently practical points to note in terms of how patent specifications should be drafted, the overriding alignment of this EBA's decision with the harmonisation philosophy underlying the EPC is exceptionally positive, and the simplicity and logic of the EBA's decision is to be commended.

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