Interpreting the claims – where EPO and UPC meet and part ways

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Claim interpretation compared: a closer look at EPO and UPC

As previously reported, the Enlarged Board of Appeal’s decision in G 1/24 has marked a significant restatement of the EPO’s principles on claim construction. It has confirmed that, for the EPO, the starting point for interpreting a patent is always the wording of the claims, which define the invention for the purposes of patentability under Articles 52–57 EPC. Crucially, the Board held that the description and drawings must always be consulted—not only when the claims are ambiguous. For the EPO, this obligation applies even where the claim language seems clear, ensuring that interpretation is rooted in the context provided by the patent as a whole. This approach is inclusive: the description is a constant interpretative tool, and examples given there may influence how a feature in the claim is understood. In practice, the EPO’s method tends to accommodate a broader view of the claim’s meaning, so long as that meaning can be reconciled with the claim wording.

The UPC’s general approach to claim construction is in some respects similar, but has its own procedural and conceptual framing. The Court of Appeal has made clear—most notably in NanoString v. 10x Genomics—that claim construction is a matter of law for the court to decide, not a question delegated to experts. The standard is how the skilled person, in light of the description and drawings, would understand the claim. Like the EPO after G 1/24, the UPC also regards the description and drawings as always relevant. But the court’s role is not to reconcile all embodiments in the description with the claim language; rather, it is to establish the autonomous technical meaning of the claim and assess whether the description supports, contradicts, or leaves that meaning unaffected.

It is in this framework that the recent Agfa decision (UPC CFI 278/2023, Hamburg Local Division) sits. The case concerned a claim to an “achromatic color” base coat. The description listed examples—off-white, pale clay, pale yellow—that might, on a descriptive reading, seem to fall within that category. The court, however, applied the technical meaning of “achromatic color” (wavelength components roughly equal in amount) and concluded that these examples did not meet the definition. They were therefore excluded from the claim’s scope. Agfa demonstrates that while the UPC consults the description as a matter of principle, it will not allow inconsistent description passages to expand the claim’s meaning beyond its clear technical sense.

In contrast, G 1/24 gives the description a more active, shaping role in EPO proceedings, even where the claims appear clear on their face. The contrast is subtle but important:

  • At the EPO, the description is integrated into the interpretative process for patentability and can influence meaning where possible.
  • At the UPC, as Agfa shows, the description informs the reading, but the claim wording may ultimately prevail if the two diverge.

This divergence means that the same claim language could, in certain edge cases, be construed more narrowly before the UPC than before the EPO—an outcome that may directly affect both infringement and validity assessments.

Proper service of a Statement of Claim in the UPC

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Legal framework and case law considerations

The initiation of proceedings before the Unified Patent Court (UPC) requires that a Statement of Claim is validly served on the defendant. This procedural act has significant importance, as it triggers key deadlines, including the period within which the defendant must submit a Statement of Defence.

Legal framework under the rules of procedure

Rules 270–279 of the UPC Rules of Procedure establish a sequence of service methods. The applicable method depends on whether the defendant is located within a UPC contracting EU member state or outside the EU.

Service within UPC contracting member states

Where the defendant is based within a contracting EU member state, the rules envisage a hierarchy of service options. It is generally advisable to proceed through this hierarchy in the order provided.The rules first refer to electronic service on the defendant or their representative. If this does not succeed, recourse can be made to other methods recognized under EU law, such as registered mail. Should these also fail, service may follow the methods available under the national law of the relevant member state.

The choice of service address depends on the defendant’s legal form. For companies, it would typically be the statutory seat, principal place of business, or central administration; for individuals, the usual or last known residence. When multiple defendants are involved, each must be served in accordance with the applicable rules for their location.

Service outside the EU

For defendants located outside the EU, the procedural framework largely mirrors that for service within the EU, but with reliance on international instruments such as the Hague Service Convention. Where these mechanisms prove unsuccessful, the court may—under Rule 275.1 RoP—permit an alternative method of service. Such permission generally requires evidence that conventional methods have been exhausted.

Case law illustrating the application of service rules

The evolving case law of the Unified Patent Court (UPC) provides important guidance on how its rules on service of a Statement of Claim are applied in practice. The Rules of Procedure, particularly Rules 270–279, set out a hierarchy of service methods. Recent decisions from both the Court of First Instance and the Court of Appeal show that the court interprets these provisions strictly, yet with a degree of flexibility when conventional means of service have proven impossible.

One of the early and significant decisions in this area is NEC v. TCL (UPC_CoA_69/2024 and UPC_CoA_70/2024), decided by the Court of Appeal on 29 July 2024. The court was asked to consider whether alternative service under Rule 275.1 could be used without having first attempted service through the standard procedures outlined in Rules 270–274. The Court of Appeal confirmed that the structure of the Rules requires a genuine, procedurally valid attempt at service via the primary methods before alternative measures may be considered. Attempts such as sending documents by email to an executive, or posting notices at the local division, were found insufficient in the absence of prior formal steps or explicit consent from the recipient. The decision also made clear that the UPC is not bound by pragmatic service practices developed in national courts, and that such practices do not create precedents within UPC proceedings.

A comparable insistence on procedural rigour can be seen in Daedalus v. Xiaomi & MediaTek (UPC_CoA_183/2024), decided by the Court of Appeal on 5 August 2024. The claimant had sought to serve Chinese and Taiwanese defendants via their subsidiaries located in Germany, relying on Rule 271.5(a), which permits service on companies with a statutory seat, principal place of business, or central administration in a Contracting Member State. The court rejected this approach, clarifying that the presence of an affiliated company in the EU does not satisfy the requirements for serving a foreign defendant. Instead, service must be effected according to the provisions for parties outside the UPC’s Contracting States, namely Rules 273 and 274, which direct parties towards international service channels such as the Hague Service Convention. The ruling reinforced the principle that corporate group relationships cannot be used to bypass the prescribed service hierarchy.

Flexibility in the court’s approach is clearly illustrated in air up group v. Guangzhou Aiyun Yanwu Technology (UPC_CFI_508/2023 and UPC_CFI_509/2023), decided by the Munich Local Division on 21 January 2025. In this case, all attempts at conventional service, including those under the Hague Service Convention, had failed. Faced with a defendant in China who could not be reached through ordinary channels, the court applied Rule 275.2 to deem earlier, unsuccessful attempts as constituting valid service. This pragmatic application of the rules extended to accepting the publication of the default judgment on the UPC’s own website as a form of effective service. The decision illustrates that, while the court expects strict compliance with the hierarchy of service methods, it is prepared to recognise exceptional measures when it has been convincingly shown that no viable formal route remains.

Practical implications

Taken together, these cases reveal a consistent pattern in UPC jurisprudence. The court gives priority to procedural orthodoxy, requiring parties to follow the established sequence of service methods before seeking alternative approaches. National court practices, even if more expedient, do not override the UPC’s framework.

At the same time, the court has demonstrated a willingness to accept non-traditional forms of service in rare cases where conventional means have been exhausted, and further attempts would be futile. This combination of procedural discipline and pragmatic flexibility reflects the UPC’s aim of balancing due process for defendants with the need to ensure that proceedings can move forward in a reasonable timeframe.

IP seminar on October 22, 2025 in Heidelberg for the life science & chemical industries

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This fall, in addition to a seminar in two modules on patent and trademark law, we are offering you a pure patent seminar in Heidelberg – also free of charge – which is primarily aimed at the life science and chemical industries. The subject “Mastering Current Challenges of Protecting Innovations in Life Science and Chemical Industry”. You can look forward to an entertaining morning with interesting encounters and stimulating discussions!

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IP Seminars “Patent” on October 15 and December 4, 2025, in Berlin

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Look forward to our patent evenings in Berlin, taking place in October and December 2025. You can expect engaging presentations on topics such as software, AI, and quantum computing. Afterwards, we warmly invite you to join us for a relaxed evening reception.

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New Referral G 1/25 to the Enlarged Board of Appeal of the EPO

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Must the description be adapted to amended patent claims?

Summary

On July 29, 2025, the Technical Board of Appeal of the European Patent Office issued an interlocutory decision in case T 697/22. In this decision, three questions were referred to the Enlarged Board of Appeal (EBA) to clarify whether the description of a European patent (or patent application) must be adapted to amended claims.

Background

The decision is based on appeals lodged by both the patent proprietor and the opponent against the first-instance decision in opposition proceedings. The Board concluded, in line with the Opposition Division, that the claims submitted as an auxiliary request were allowable. However, the proprietor had not filed an adapted description corresponding to these claims. The Board identified contradictions between the claims and the current description and rejected a later attempt to submit an amended description as inadmissibly late.
This raises the central issue: Do contradictions between amended claims and the description prevent the grant of a European patent?

Current practice

During examination, the EPO typically requires the description to be brought into conformity with amended claims. This practice is supported by long-standing case law, which holds that the description must be consistent with the claims. The legal basis cited varies, though reference is often made to Article 84 EPC, which requires claims to be clear and supported by the description (see, for example, T 1024/18).
However, recent Board decisions – most notably T 56/21 – have challenged this approach. According to these decisions, the EPC does not impose a strict requirement to adapt the description to amended claims, particularly if the claims are clear in themselves. In this view, examples in the description that fall outside the scope of the amended claims do not affect the clarity or support of the claims.

Referred questions

Given the divergence in recent case law and the relevance of the issue, the referring Board has put the following three questions before the EBA:
1. If the claims of a European patent are amended during opposition proceedings or opposition-appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description of the patent, is it necessary, to comply with the requirements of the EPC, to adapt the description to the amended claims so as to remove the inconsistency?
2. If the first question is answered in the affirmative, which requirement(s) of the EPC necessitate(s) such an adaptation?
3. Would the answer to questions 1 and 2 be different if the claims of a European patent application are amended during examination proceedings or examination-appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description of the patent application
All three questions ultimately seek to determine whether the description must be adapted to amended claims to eliminate inconsistencies.

Outlook

The EBA will first need to decide whether it intends to address all three questions, although only the answer to question 1 is directly relevant to the case at hand. Nevertheless, a different outcome in response to question 3 seems unlikely.
The decision will be of significant importance for applicants: adapting the description following claim amendments is often a time-consuming and costly exercise. It also carries the risk of negatively impacting the later interpretation of the patent before national courts, or limiting flexibility in subsequent validity proceedings.
Of particular interest will be how this referral aligns with the EBA’s recent decision G 1/24 (see our article). According to that decision, the description and drawings must always be taken into account when interpreting patent claims—even during examination and opposition proceedings. This gives renewed prominence to the role of the description and may lead to a more critical assessment of inconsistencies between the claims and description.
We will continue to monitor developments and are happy to advise on the best approach in light of this evolving legal landscape.

Cost reim­bursement before the UPC: latest develop­ments

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Clear guidelines on reimbursement of costs before the UPC

The Unified Patent Court is developing increasingly clear guidelines on cost practice – from the reimbursement of court fees paid to the determination of the value in dispute to the question of which costs are reimbursable and how far the control of the appeal court extends.

Reimbursement of costs in the event of early termination of proceedings

  • Withdrawal before the end of the written proceedings: 60% reimbursement

Pursuant to Rules 370.9(b)(i) and 370.11 EPGVerfO, the UPC will reimburse 60% of the court fees if the proceedings are terminated before the end of the written proceedings. In Hand Held Products, Inc. v. Scandit AG (UPC_CFI_76/2024, Local Chamber Düsseldorf, March 21, 2025), both parties had mutually withdrawn their claim and counterclaim. The court ordered that 60% of the fees paid be refunded to the party that had paid them (see Rule 370.11 VerfO).

  • Appeal court confirms this standard

In Tandem Diabetes Care Europe B.V. v. Roche Diabetes Care GmbH (UPC_CoA_120/2025, Paris Court of Appeal, July 3, 2025), the parties terminated the proceedings by settlement before the conclusion of the written procedure. The court then granted a 60% refund of the court fees to the plaintiff (Rule 370.9(c)(i) VerfO).

  • Withdrawal after the end of the written procedure: only 40%

The case Harvard College v. NanoString (UPC_CoA_24663/2025, Court of Appeal, May 28, 2025) shows how relevant the timing of the termination of proceedings is for the amount of the reimbursement of costs. NanoString withdrew its appeal only after the written proceedings had been completed but before the oral hearing had begun. The court ruled that, under these circumstances, only 40% of the appeal fee was to be reimbursed, in accordance with Rule 370.9(b)(ii) of the Rules of Procedure.

  • No refund in case of settlement after oral proceedings:

In Roche v. Tandem Diabetes Care (UPC_CFI_504/2023), the court refused to refund court fees because the oral hearing had already been concluded at the time of the settlement. In the court’s view, the proceedings were therefore considered concluded within the meaning of Rule 370.9(c)(iii) of the Rules of Procedure. A pro rata reimbursement of 20% of the court fees was also rejected due to the high court costs.

Determination of the value in dispute

With regard to the allocation of costs, the determination of the value in dispute is also decisive, as it limits both court fees and reimbursement of costs. In Progress Maschinen & Automation AG v. AWM s.r.l. (UPC_CFI_178/2024, Local Chamber Milan, July 8, 2025), the court set the value in dispute at EUR 2,000,000 in the absence of precise information, based on the plaintiff’s estimate. The court emphasized that the value in dispute must be measured in relation to the circumstances at the time the action was brought and that a subsequent increase or decrease can only be considered if it can be clearly proven.

Review of the decision on costs by the court of appeal

In the case of Tiroler Rohre GmbH v. SSAB Swedish Steel GmbH (UPC_CoA_153/2025, Court of Appeal, July 3, 2025), the UPC clarified that the Court of Appeal only marginally reviews a cost determination by the lower court. The focus is on whether the costs determined by the rapporteur are “reasonable and appropriate” or whether they clearly violate Article 69 EPGÜ. A complete reassessment does not take place.

Amount of reimbursable costs

According to Rule 152 EPGVerfO, reasonable and proportionate costs of representation are reimbursable  up to a limit set  by the Administrative Committee.

In Fujifilm Corporation v. Kodak GmbH & Co. KG (UPC_CFI_355/2023, UPC_CFI_186/2025, Local Chamber Düsseldorf, July 9, 2025), the court once again clarified that only costs actually incurred are reimbursable.

Costs for unnecessary or purely strategic measures are expressly not reimbursable – even if they were incurred internally. Representation costs in cost proceedings, on the other hand, are not reimbursable, as this would give the parties an incentive to invest more resources than necessary in the summary proceedings on the decision on costs pursuant to R. 150 et seq. EPGVerfO, which would lead to inefficient proceedings.

If the parties agree during the oral hearing to increase the upper limit for reimbursable costs, it is not possible to challenge the setting of the upper limit in the cost determination proceedings.

Conclusion

The decisive factor for the reimbursement of court fees is therefore the stage of the proceedings at the time of settlement. Anyone who withdraws a lawsuit early or reaches a settlement saves 60%—those who are too late receive only 40% or no reimbursement at all. The court also remains strict when it comes to the allocation of costs: only what is necessary will be reimbursed.