The Technical Board of Appeal 3.3.05 has referred fundamental questions to the Enlarged Board of Appeal in interlocutory decision T 873/24. Now pending under case number G 1/26 (“Coated steel strips”), this referral seeks to clarify the extent to which the description and drawings can be used to interpret patent claims.

This case is set to be a landmark for legal certainty, as it addresses whether features disclosed only in the description can be “read into” a claim, particularly when this leads to a more restrictive interpretation.

Here are the specific questions referred to the Enlarged Board:

1. May a decision be considered to be “required” for the purposes of Article 112(1) EPC, if the referring Board demonstrates that the point of law in question arises out of the context of the case pending before it and, in the circumstances of the proceedings, it is reasonable for the Board to examine it and decide on it next?

2. (a) Does the fact that the claims are the starting point and the basis for assessing the patentability of an invention generally preclude a feature which is only disclosed in the description or the drawings of a patent from being read into the meaning of a granted claim, in particular if this leads to a restrictive reading of terms used in the claim?

2. (b) If the answer to question 2.(a) is no: is claim interpretation the result of both reading the claims and consulting the description and drawings as a unitary process and does the claim being the starting point and the basis for assessing the patentability rule out only those interpretations which can be derived from the patent as a whole but would clearly contradict the general technical understanding of the terms used in the claim?

3. (a) When assessing compliance with Article 123(2) EPC, must a term used in a claim be assessed against all interpretations that make technical sense to the skilled reader on the basis of the claim alone?

3. (b) If the answer to question 3.(a) is no: is it sufficient that only the interpretations of the subject-matter of the claim established against the background of the patent specification as a whole are directly and unambiguously derivable from the application as filed?

For those looking for an in-depth analysis and expert commentary as this case progresses, we highly recommend following the insights of Rose Hughes on The IPKat.