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T 439/22 - Referral case applies G 1/24 order on claim interpretation

Catchword of the Boards of Appeal:

“1. In interpreting the language used in a claim, ‘consulting’, ‘referring to’, ‘using’ and ‘taking into account’ the description and figures are synonyms for the act of deriving the necessary information from the patent as a whole to understand which meaning a person skilled in the art would attribute to the terms used in the claim.

2. Claim interpretation is the result of both reading the claims and consulting the description and drawings as a unitary process (holistic approach taken by the Enlarged Board of Appeal in decision G 1/24).

3. In line with this approach, a person skilled in the art reading the claim in the context of the description and figures will try to take a definition found in the description at face value. As long as the definition is technically reasonable and complies with the overall teaching of the claims, description and figures, the skilled person will read terms in the claim in the sense of the definition, taking into account both the broadening and limiting aspects.”

Summary:

EP 3 076 804 B1 referring to a HEATED AEROSOL GENERATING ARTICLE WITH THERMAL SPREADING WRAP survived opposition proceedings at the European Patent Office (EPO). Claim 1 was held novel and inventive by the opposition division due to feature “a gathered sheet of aerosol-forming material circumscribed by a wrapper” allegedly not encompassing a spirally wound tobacco sheet as disclosed in document D1. The opponent appealed the opposition division’s decision and argued in view of broader and specific definition of the decisive feature in the patent description, D1 would take away novelty.

In interlocutory decision of T 0439/22 the Board of Appeal (BoA) referred questions regarding the interpretation of patent claims to the Enlarged Board of Appeal (EBA) leading to case G 1/24. Therein, the EBA clarified that “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” (G1/24, Order).

The BoA now has applied this order in the decision of T 0439/22 dated 11 December 2025. It did not follow the patent proprietor’s (respondent in appeal) conclusion of G 1/24. The respondent alleged G 1/24 would infer a two-step approach of claim interpretation of (i) assessing the meaning of the claim in isolation and then (ii) to “consult” (i.e. to “consider”), but potentially disregard the description and drawings in view of what the skilled person gathered from reading the claims in light of its common general knowledge. In the contrary, the BoA alleged that “consulting” would be one of several synonyms for “deriving the necessary information from the patent as a whole to understand which meaning a person skilled in the art would attribute to the terms used in the claim” (Catchword point 1). Furthermore, the BoA infers “reading the claims and consulting the description and drawings as a unitary process” for claim interpretation (Catchword point 2). 

The BoA applied G 1/24 such that the term "gathered sheet" of claim 1 hat to be interpreted in view of definitions of the terms “sheet” and “gathered” in paragraphs [0030]  and [0035]  of the patent in suit, respectively. According to the BoA, even if interpretation of the term “gathered sheet” when read in isolation would lead to a different result compared to when read regarding the definitions in paragraphs [0030](1) and [0035](2), this would not be sufficient to disregard these definitions. The BoA hence concluded the skilled person would have consulted these definitions and arrived at the conclusion “gathered sheet” would also encompass an embodiment(3) disclosed in prior art document D1 and thus claim 1 would lack novelty over D1.

Finally, the BoA concluded the referral to the EBA would be an exceptional circumstance in view of which the respondent could not have reasonably been expected to file a meaningful auxiliary request prior to the Enlarged Board's decision. Hence the BoA admitted the respondent’s auxiliary request filed in response to the conclusions of the Enlarged Board of Appeal in case G 1/24. The sole amendment was the deletion of paragraph [0035] from the description. The claims remained unchanged. The BoA followed the appellant-opponent’s argument that deletion of [0035] would extend the scope of protection in that said embodiment of D1 would not be encompassed anymore and thus violate A. 123(3) EPC.

The patent was thus revoked in its entirety.

Comment:

The BoA alleges that the skilled person would take into account both broadening and limiting aspects when reading the claim in the sense of a definition it tried to take from the description. The BoA goes even further and concludes it would be “not permissible to consider only the broadening aspects contained in a definition and disregard any limiting aspects.” (T 0439/22, reasons at point 6, fourth para.). In my opinion however, care must be taken when applying limiting aspects to claim interpretation. Because the EPO itself is emphasizing in its 2026 Guideline Preview that “the description and drawings cannot be relied on to read into the claim a restrictive feature not suggested by the wording of the claim.” (Preview of the English version of the amended EPC Guidelines due to enter into force on 1 April 2026, F-IV 4.2, second paragraph, accessed on 2 March 2026). 

Practice notes:

Care should be taken when drafting broad definitions of claimed terms in the patent description that broaden the interpretation of a claim when read in conjunction with the claim compared to when reading the claim in isolation. Such controversy might not allow to disregard a definition for claim interpretation as claim interpretation can be considered to reading the claims and consulting the description and drawings in a unitary process.

Broadening and restrictive aspects contained in a definition might be taken into account for claim interpretation. However, limits may still remain if the claim wording itself is not suggesting restrictions. 

Referral of a case to the EBA can be an exceptional circumstance for admitting auxiliary requests to the appeal case filed after the EBA’s decision, if for example it would not have been possible to file a meaningful auxiliary request prior to the EBA’s decision.

Footnotes:

(1) “As used herein, the term ’sheet’ denotes a laminar element having a width and length substantially greater than the thickness thereof.” 

(2) “As used herein, the term ’gathered’ denotes that the sheet of tobacco material is convoluted, folded, or otherwise compressed or constricted substantially transversely to the cylindrical axis of the rod.” 

(3) A tobacco sheet that is "compressed or constricted substantially transversely to the cylindrical axis of the rod”.  

T 1296/23 (Puff count/FONTEM) 18-12-2025

Catchword:

"Requests filed during the first-instance proceedings on which the department of first instance took no decision are not automatically part of the appeal proceedings."

Abstract:

In T1296/23, the Board of Appeal (BoA) of the European Patent Office continues a strict approach when not admitting auxiliary requests that have been raised in the proceedings of first instance but were not discussed in the decision under appeal and not expressly raised before oral appeal proceedings.

According to the BoA, such requests would not automatically be part of the appeal proceedings (A. 12(2) RPBA). Unless expressly maintained on appeal until the parties reply to the summons to oral proceedings, but raised for the first time in oral proceedings, such requests would constitute an amendment to the appeal case (A. 13(2) RPBA). The board further held that the mere believe of a party that such requests would be part of the appeal proceedings would not be an “exceptional circumstance” for admittance under A. 13(2) RPBA.

The board also held that admittance of such auxiliary requests in oral proceedings in this case would have contravened the principle of procedural economy due to alleged postponement of the oral proceedings or remittal to the opposition division.

Summary of the case:

European patent EP3071273 (Application Number: 14864703.5) refers to a method of logging smoking data. It was maintained in amended form according to auxiliary request 2 (AR 2) filed in opposition proceedings. Together with AR 2 further auxiliary requests 3 to 9 (ARs 3 to 9) were filed by the proprietor at the same time in the opposition proceedings.

In subsequent written appeal proceedings, the appealing opponent (appellant) requested the decision under appeal be set aside and the patent be revoked. The responding proprietor (respondent) did not raise express requests in the written proceedings but countered the appellant’s arguments.

In oral appeal proceedings, the BoA held that the subject matter of AR 2 would not be inventive. Subsequently, the respondent requested in the alternative of maintaining AR 2 that the patent be maintained on the basis of the claims according to AR 3 to 9.

However, the BoA decided not to take ARs 3 to 9 into account in the appeal proceedings as they would constitute an inadmissible amendment to the appeal case (A. 13(2) RPBA), because:

• The obligation of the BoA to review the decision under appeal would not extend to ARs 3 to 9, because the opposition division took no decision on those requests;

• Even if ARs 3 to 9 were admissibly raised and maintained in the opposition proceedings (A. 12(4) RPBA), this would be immaterial unless ARs 3 to 9 had also been expressly maintained on appeal, the latter not being the case;

• Even if the respondent disagreed with the BoAs finding that ARs 3 to 9 were not part of the appeal proceedings, they should have stated so in reply to the summons and had sufficient time before the oral proceedings;

• In view of the above, ARs 3 to 9 were first raised in the oral appeal proceedings and could not be admitted under exceptional circumstance, because respondent’s believe that ARs 3 to 9 were part of the appeal proceedings would not be such a circumstance;

• Admitting ARs 3 to 9 at the stage of the oral proceedings would contravene the principle of procedural economy (i.e. postponement of the oral proceedings or remittal to the opposition division).

Comment:

The BoA in T1296/23 confirms the established strict approach that opposition-appeal proceedings are not intended to carry out a general review of decisions at first instance (cf. Case Law of the BoA 11th edition 2025, section V.A.3.2.3.i)). The board also confirms that in the contrary it is the parties obligation to set out clearly and concisely the reasons why it is requested that the decision under appeal be reversed, amended or upheld, and they should specify expressly all the requests, facts, objections, arguments and evidence relied on (cf. Case Law of the BoA 11th edition 2025, section V.A.3.2.2).

T1296/23 is in line with the established case law that submissions made by a party during administrative proceedings are not automatically part of any subsequent appeal proceedings (cf. Case Law of the Boards of Appeal 11th edition 2025, section V.A.4.2.3.b)). The board adds in the present case that auxiliary requests admissibly raised in first instance proceedings that were not discussed in the opposition division’s decision are not automatically basis of the appeal under A. (1)(a) RPBA, and should have been expressely raised at the latest in an answer to the summons of the boards of appeal (A. 12(1)(d) RPBA).

Lastly, the board in T1296/23 seems to push the strict line of case law (cf. Case Law of the BoA 11th edition 2025, section V.A.4.5.1.e)) in that the “exceptional circumstances” under which an amendment to the appeal case could be taken into account (A. 13(2) RPBA) are to be interpreted narrowly, i.e. explaining that the mere believe auxiliary requests were part of the appeal proceedings would not be such a circumstance.

Practice note:

Opposition-appeal proceedings at the European Patent Office are not for the Boards of Appeal to revisit the facts and circumstances of the case as if it was in the first instance department's place. It is the parties obligation to timely and expressly specify all its requests that should be part of the appeal proceedings as they could otherwise be considered amendments to the appeal case. Exceptional circumstances for admittance of such amendments might be interpreted narrowly and are no safe harbor.