BREAKING: Imminent new referral to the EBA on the relevance of G1/24 to added matter
Rose Hughes
BREAKING: Imminent new referral to the EBA on the relevance of G1/24 to added matter
The Board of Appeal in T 873/24 has decided to refer questions to the Enlarged Board of Appeal (EBA) on the application of G1/24 (claim interpretation) to the assessment of added matter.
According to the minutes of oral proceedings, the Board of Appeal concluded that the case hinged on whether the order from G1/24 that the description and drawings should always be consulted for claim interpretation applies to assessment of added matter (Article 100(c) EPC, Article 123(2) EPC), extension of matter in divisional applications (Article 76 EPC).
The Board of Appeal considered this seems to be a point of law of fundamental importance, and following endorsement from the opponent, the Board concluded that "The case will be referred to the Enlarged Board of Appeal with questions to be formulated in writing".
 |
| Weighing up the description |
Case details: Added matter and G1/24
The appeal in T 873/24 concerns EP3587104 B1 (Coated Steel Strips). The invention relates to an aluminium-coated steel strip comprising various metal components, of a particular length and width, and specified coating thickness. A core issue on appeal was whether the way in which the Titanium to Nitrogen ratio in the steel strip was specified in the claim added matter.
In its preliminary opinion (issued after G1/24) the Board of Appeal considered the Main Request to add matter because claim 1 lacked units for the specified Ti/N ratio. In the original application, the ratio was specified as weight. Particularly, whilst the parent and grandparent applications explicitly specified that the ratio of Titanium to Nitrogen must be expressed by weight, claim 1 of the Main Request merely stated that the ratio was "in excess of 3.42" without providing any units. The Board of Appeal was of the opinion that this omission would be an impermissible broadening that left the claim "open-ended, unlike the original application". The Board of Appeal's preliminary decision made no mention of G 1/24, sticking instead to the strict "gold standard" test of direct and unambiguous disclosure for added matter.
However, subsequent submissions from the Patentee argued that, according to decision G1/24, the description must always be consulted when interpreting the scope of the claims, and that if the skilled person consulted the description, they would be in absolutely no doubt that the content of any chemical element from the composition of the base steel was in weight percent.
In response the Opponent argued that G 1/24 cannot be used for the assessment of Art. 123(2), 76 EPС, citing T 0405/24, which found that:
"there is no indication in G 1/24 that 'consulting' or 'referring to' the description and drawings could translate to adopting a claim interpretation which ensures that the disputed feature is originally disclosed and thus necessarily complies with Article 123(2) EPC. Such an approach which inherently assumes that there may be only one 'correct' interpretation of a claim feature, namely the one derivable from the original description as its intended meaning [...] would not lead to an objective assessment of compliance with Article 123(2) EPC and thus jeopardise legal certainty. It would be tantamount to interpreting a claim feature such that, in the end, virtually no violation of Article 123(2) EPC within the meaning of the well-established "gold standard" could arise." (r.1.2.3)
Final thoughts
It seems unlikely to this Kat that the EBA would adopt a position that G1/24 does away with the EPO's exceedingly strict approach to added matter. However, it is worth remembering that the referral in G1/24 cited disagreements in Board of Appeal case law precisely in cases that hinged on added matter. These cases included the catastrophic comma cases, in which the deletion of a single comma was found to add matter, despite this rendering the claims entirely out of step with the entirety of the description (T 1473/19 (IPKat) and T 1127/16 (IPKat)).
This referral is going to be an interesting one to watch. Stay tuned to IPKat for further updates!