G 1/24 established that the claims are the starting point and basis for assessing patentability, but that the description and drawings must always be consulted when interpreting them. In the referral underlying G 1/26, the Enlarged Board is asked to clarify how far features disclosed only in the description or drawings may influence the meaning of a granted claim. In particular, question 2(a) asks whether the fact that the claims are the starting point and basis for assessing patentability generally precludes such a feature from being read into the meaning of the claim, especially where this leads to a restrictive interpretation. Question 2(b) then asks whether claim interpretation should be understood as a unitary process involving both the claims and the description and drawings, and where the limits of that process lie.
Our position: technical identity as the boundary
In our amicus curiae brief, we argue that the decisive distinction should not be whether the description makes a claim term broader or narrower. Both may in principle be permissible.
The relevant limit is whether the interpretation preserves the technical identity of the claimed feature within the claimed invention. A definition or technical explanation in the description may therefore restrict or broaden the meaning of a claim term, provided that the skilled person still recognises the resulting feature as the same technical feature in its technical function within the claimed subject-matter.
This approach keeps claim interpretation contextual, as required by G 1/24, while preserving the central role of the claims. The description may explain what a claimed feature means, but it should not replace that feature with a different technical concept.
The technical function assigned to a feature within the claimed invention can be an important indicator when assessing whether its technical identity has been preserved.
Definitions are not the same as embodiment
A further distinction is necessary between genuine patent-specific definitions and individual embodiments. The fact that the description must always be consulted does not mean that limitations from particular embodiments may simply be read into the claim.
UPC case law illustrates this distinction. In Agfa v Gucci, the Hamburg Local Division accepted that a patent may serve as its own lexicon, while at the same time refusing to use description passages that were inconsistent with the granted claims as a basis for broader claim interpretation.
Our proposed answer to G 1/26
Our position can therefore be summarised as follows: patent-specific definitions or technical explanations disclosed in the description or drawings may influence the interpretation of a claim term, whether restrictively or broadly. The decisive boundary is that the resulting interpretation must preserve the technical identity of the claimed feature and must be recognisable to the skilled person as a definition or explanation of that feature.
The full amicus curiae brief contains our detailed analysis of the referred questions and the relevant EPO and UPC case law.
[Read the full Amicus Curiae Brief in G 1/26 – PDF]
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Author: Dr. Michael Schmid