Home / Patent pending thoughts….
16th June 2026
Bruce Jones, Partner
17.06.2026
This is a very nerdy topic even for a very nerdy corner of the patent-verse. But….it’s just too captivating to not watch. The EPO now appears to be on a path of eating itself and its resources through a process of fractal-esque referrals of questions to the Enlarged Board of Appeal. The issue? The EPO has referred back to itself a question of interpretation arising from….a decision on interpretation: G1/26 concerning G1/24.
First, because the EPO doesn’t have the benefit of s125 (so it ends up wondering if it had to ‘choose’ between a69 and a84);
secondly, because it doesn’t have to deal with infringement; and
thirdly and possibly most critically, because, unlike under common law, it feels it has to provide a comprehensive quasi codification of the law rather than allowing it to evolve as disputes are resolved.
Thus, we end up with a decision of the Enlarged Board – surely not in any way revelatory – that the specification should “always be consulted to interpret the claims” (whoever drafted s125 take a bow). But does this clarify things? Apparently not. In T 0873/24 The Technical Board of Appeal has decided to refer questions to the Enlarged Board of Appeal on the application of G1/24 to the assessment of added matter. So the answer in G1/24 – supposedly an answer to a question of universal applicability – is now the subject of the same forensic focus as was the question before the Enlarged Board in G1/24. Or to put it differently, we now have a different set of words to pore over, pick at and agonise as to their real meaning. How long before the key question becomes whether G1/26 (if accepted by the EBA) simply produces a decision that itself spawns more referrals as to its meaning…..until the EPO’s resources are endlessly taken up interpreting its own words, spoken in the course of interpreting other words of its own? An alternative would be to allow the law to evolve organically rather than trying to frame broad conceptual propositions. The words of Birss LJ in his DABUS judgment when confronted with a somewhat abstract argument are hard to improve on: “That does seem odd, but it is something I prefer to decide in a case in which it actually matters”
09.06.2026
With the EPO tying itself into what, to this writer, seems like entirely unnecessary knots over claim interpretation and practice in relation to amendment of the specification, now is a good time to pause and remember that many of the potential pitfalls arising from this can be avoided with careful patent drafting from the outset. Within the UK profession at least, it is often seen as a very ‘American’ thing to place so much focus on describing examples of the invention.
More attention often goes on carefully creating what are, in essence, hierarchical introductory clauses that recite language imagined might, at some future point, assist in providing flexibility for claim amendments. This difference in focus is probably also responsible for the different way that part of a patent specification is described. In the UK, we refer to it as the ‘specific description’ – a term that almost seems to relegate its significance within the overall description of the specification. By contrast, our American colleagues refer to embodiments. This difference has always carried weight for me. A carefully and, critically, thoughtfully crafted set of embodiments provides an indispensable reservoir of genuine technical material upon which to draw. Actual, explicitly described alternatives are often the best way to demonstrate that claimed width is both supported and within the content of the application as filed. What does this mean for clients? Put simply, you may need to spend a little more time developing alternatives that can be included, and a little more money having the specification drafted to include them. But those costs will be entirely dwarfed by the costs later down the line of having to prepare an extensive argument for permissible claim amendments instead.