PATENTS | EPO Board of Appeal on interpretation of claims and description amendments

On 28 September 2023, the Board of Appeal of the EPO (“BoA”) issued its decision in the appeal case T 0447/22, concerning the limits of claim interpretation in the light of the description and the need to amend the description of a granted patent. The BoA first highlighted that claims can be interpreted only in the context of the relevant patent application “which must be read as a whole”. In the event of inconsistencies between the claims and the description, the elements of the description which are not reflected in the claims should not be taken into account for the examination of novelty and inventive step. The BoA highlighted that an opposition is admissible under Article 84 of the European Patent Convention if there is a lack of clarity due to inconsistencies between the claims and the description resulting from a post-grant claim amendment. By applying these principles, the BoA found the claim amendments submitted as an auxiliary request to be novel and inventive and stated that the inconsistencies between the claims and the description were already present when the patent was granted and not as a result of the post-grant amendments.

Newsletter n. 95 – April 2024