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.

New decision G 1/23 of the Enlarged Board of Appeal of the EPO

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Publicly available product is prior art, even when not reproducible

In decision G 1 /23 issued on July 2, 2025, the Enlarged Board of Appeal of the European Patent Office was confronted with the question of whether a product put on the market is considered prior art regardless of enablement. In particular, the referral asks whether the non-enabling prior use of a product excludes the composition of the product, and also the product as such, from the prior art.

Key takeaways of the decision

  • Availability is sufficient: A product that was made publicly available before the filing date (e.g. through sales) is considered part of the prior art, even if it could not be technically analyzed or reproduced at that time.
  • No reproducibility requirement: Article 54(2) EPC does not require that a skilled person must have been able to reproduce the product before the filing date. Major impact on inventions in the fields of chemistry and materials science, where the internal composition is often hard to detect.
  • Possible impact also on computer-implemented inventions, where it is rather difficult to verify the exact code and algorithms or for prototypes delivered to clients under agreements forbidding reverse-engineering or internal manipulation.

Particulars of the case

The case originated from an opposition by Borealis GmbH (Opponent) against the European Patent No. 2 626 911, held by Mitsui Chemicals, Inc. and Mitsui Chemicals ICT Materia, Inc. (Patent Proprietors), concerning a solar cell sealing material.

At the center of the dispute was the commercially available product “ENGAGE® 8400,” a complex polymer used for sealing in solar modules. Although this product had been made commercially available before the priority date of the opposed patent, it was not possible to fully analyze its chemical composition and thus to reproduce it by the relevant date.

Against this background, it was controversially discussed whether such a (disclosed but allegedly non-reproducible) product could be considered prior art when assessing inventive step.

In previous decision G1/92, it had been ruled that “The chemical composition of a product is state of the art when the product as such is available to the public and can be analysed “and reproduced” by the skilled person, irrespective of whether or not particular reasons can be identified for analysing the composition”. There, the Enlarged Board of Appeal held that where it is possible for the skilled person to discover the composition or the internal structure of the product “and to reproduce it” without undue burden, then both the product and its composition or internal structure become state of the art”. This lead to the possibility of excluding from the prior art non-reproducible disclosures, including non-reproducible public prior uses.

The case was referred to the Enlarged Board of Appeal to seek clarification as to whether the non-enabling prior use of a product excludes the composition of the product from the prior art or whether it also excludes the product per se.

This is of significance, because if the product per se is excluded it cannot be used as a starting point for an inventive step analysis. The referral also seeks clarification over the definition of enablement with respect to the prior use of a product, and particularly whether “enablement” requires that the skilled person be able to fully analyse and reproduce the exact same product.

The decision and its aftermath

In new decision G 1/23, the Enlarged Board of Appeal sets the criterion that the chemical composition of a product is part of the state of the art when the product as such is available to the public and can be analysed by the skilled person, irrespective of whether or not particular reasons can be identified for analysing the composition.

Accordingly, while decision G1/92 is not being overturned, it is being partly amended in that the “reproducibility requirement” is no longer used when assessing whether a public prior use is deemed publicly available and hence belongs to the prior art.

In reaching this decision, the Enlarged Board of Appeal emphasized that the prior art refers to abstract technical teachings or information, which, once made public, do not disappear even if the physical carrier (e.g., the product itself) is no longer available. Problems in proving what was disclosed by a product (e.g., if it is no longer available) are issues of evidence, not reasons to deny its prior art status.

While a non-reproducible product now belongs to the state of the art and could potentially destroy novelty, it does not necessarily follow that it will be equally relevant to assessments of inventive step. As the Enlarged Board of Appeal explicitly found, the skilled person may still disregard such a product as relevant prior art for good reason. This is because the assessment of inventive step depends on the context and is influenced by numerous factors, including the general knowledge of the skilled person, the analyzable properties of the product and practical limitations.

This triggers the question of whether analysis of a chemical product, as considered in G 1/23. may be handled on the same footing as analysis of a (compiled) software product available on the market in terms of determining whether its internal functioning (e.g. underlying algorithm) “can be analysed”. It should be borne in mind that decompiling a software product is allowed in the EU only under special circumstances, since reproduction and translation of any code form (i.e. de-compilation) is generally seen as an exclusive right of the copyright owner (see CJEU October 6, 2021, ECLI:EU:C:2021:811 (Top Systems/Belgian State) on Directive 2009/24/EC). This may influence the assessment of what the skilled person might be expected to do. Notably, cooperation and license-agreements may also explicitly ban decompiling and reverse-engineering. By contrast, in chemistry, analysis of a chemical product typically is considered as belonging to the standard abilities of the skilled person and is not legally restricted.

Impact on Practice

  • For examination proceedings: Novelty can now also be destroyed by products whose exact composition cannot be reconstructed or reverse-engineered – the sole decisive factor is their public availability.
  • For patent applicants: Exercise caution when marketing innovative products before the filing date of a first patent application, even when they are difficult to analyze, as they may also be considered novelty-destroying. Early filing of the patent application has thereby become even more important, as there will be even less chances to still a product once put on the market.
  • For search and opposition: Pay increased attention to actual products on the market, regardless of their complete technical disclosure.
  • For licensing agreements, cooperations and delivery of customer prototypes, especially for mechanical and software products: Try including in the agreement a clause explicitly forbidding de-compilation and reverse-engineering.

New Decision G 1/24 – Claim Interpretation at the European Patent Office

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On 18 June 2025, the Enlarged Board of Appeal of the European Patent Office (EPO) issued the long-awaited decision G 1/24, which is expected to have significant implications for claim interpretation under the European patent system.

According to Article 69(1) EPC, the extent of protection conferred by a European patent is determined by the claims, but the description and drawings are to be used to interpret the claims. The Unified Patent Court (UPC) has also adopted this principle[1]. Consequently, the description and drawings are always to be considered when interpreting the claims in the context of assessing potential patent infringement and invalidation.

In contrast, the EPO’s Boards of Appeal have so far been divided in their case law concerning whether the description and drawings must be taken into account when assessing the patentability of an application or the validity of a patent in opposition proceedings. Some decisions held that the claims alone should be interpreted if they appear clear on their face –even if the interpretation contradicts the description.

This divergence had serious consequences in certain cases. Notably, in decisions T 1473/19 (30 September 2022) and T 1127/16 (18 February 2021), European patents were revoked due to a missing comma in the claim wording. The deciding boards took the view that claims must be interpreted in isolation if they are deemed clear, and that it was not permissible to modify their meaning by reference to the description – even when the result conflicted with it. In these and other decisions, the Boards of Appeal refused to consult the description and drawings to interpret otherwise unambiguous claims. In contrast, other decisions allowed such reference to the description and drawings to aid in construing the subject-matter.

This inconsistency also became evident in appeal case T 0439/22. In an interlocutory decision dated 24 June 2024, the board was confronted with the issue of whether a term in the main claim should be interpreted according to its narrower, customary technical meaning (without reference to the description) or according to a broader definition given in the description. In the former case, the claimed subject-matter was considered novel; in the latter, it was not. The question of patentability therefore hinged on whether the claim term could be interpreted in isolation or only in light of the description.

Unable to resolve the legal question itself, the board referred the matter to the Enlarged Board under Article 112 EPC, which has the task of ensuring uniform application of the law and settling important points of legal principle.

With its decision G 1/24 of 18 June 2025, the Enlarged Board has now settled the issue: the description and drawings must always be taken into account when interpreting patent claims when assessing the novelty and inventive step, also in examination and opposition proceedings.

This decision sets a paradigm for the examination of the novelty and inventive step before the EPO as well as for the opposition proceedings. Future decisions on novelty and inventive step must consult the description and drawings – an interpretation based solely on a claim wording  should no longer occur.

Ultimately, this decision harmonises the EPO’s claim interpretation practice with that of national courts across Europe and the Unified Patent Court.

On the practical side, the decision by the Enlarged Board of Appeal seems to pave the way for an even harsher check of the need to adapt the description to the claims during examination before the EPO.

For the daily practice, this decision means in particular:

  • When drafting a new application, the utmost care is required. Terms, expressions, and parameters used in the claims should be specifically supported by definitions, explanatory clarifications, and fallback positions in the description (and, where appropriate, in the drawings).
  • The description should be drafted in a way that allows for the broadest possible interpretation of the claimed subject-matter, without compromising consistency with the claims.
  • Special attention must be paid to ensuring that the embodiment intended by the inventor or applicant – or the preferred technical implementation – clearly falls within the scope of interpretation of the claimed subject-matter.

BOEHMERT & BOEHMERT has already implemented the new decision in practice and will be happy to consult you further on this topic.

 

[1] UPC decisions CoA_335/2023 / App_576355/2023 of 26 February 2024 and CoA_1/2024 / ApL_8/2024 of 13 May 2024

Portrait of Stella Euchner, Attorney at Law at BOEHMERT & BOEHMERT

A sandal remains a sandal – also in the opinion of the German Federal Court of Justice

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Summary of the latest decision of the German Federal Court of Justice (BGH) on the copyright protection of Birkenstock sandals

On February 20, 2025, the Federal Court of Justice ruled in a landmark decision that the world-famous Birkenstock sandals do not enjoy copyright protection. The central question was whether the design of the popular sandals is protected as a work of applied art within the meaning of Section 2 (1) no. 4 of the German Copyright Act (UrhG). The District Court in Cologne had still assumed that the sandals were protected by copyright, but the Higher Regional Court in Cologne then denied this. These first-instance decisions had caused great uncertainty in the shoe-producing industry.

Basis of the decision

The plaintiff, which distributes various models of sandals as part of the Birkenstock Group, wanted to ensure that the sandals enjoy copyright protection as works of applied art – primarily to prevent cheaper copies. It argued that the special sole cut and choice of materials had resulted in an iconic and typical design, which, as a creative achievement, must be protected by copyright.

No sufficient creativity

However, the BGH does not share this view, as already became apparent in the oral hearings: the design of the Birkenstock sandals is not sufficient to be considered a work of applied art.

Copyright protection requires a certain level of creativity that reveals the individuality of the author. There must be a scope of creative design that has been used in an “artistic way”. Purely technical work using formal design elements cannot be protected. In simple words: what is required is a creative design that goes beyond the functionality. However, according to the BGH, this is precisely not the case here.

Functionality instead of art

The BGH emphasized that the existing scope for design had not been artistically exhausted in this case, but that the design of the Birkenstock sandals was primarily geared towards functionality. The sandals were not designed as works of art, but as practical “everyday objects”. Therefore, the simple and functional design of the sandals does not meet the requirements for copyright protection.

Impact of the decision

The decision of the BGH has far-reaching consequences for the question of the extent to which everyday objects can be protected by copyright. It shows that copyright protection in Germany is only granted for works that reach a sufficient creative level and do not merely have functional features.

Design protection instead of copyright?

However, Birkenstock announced that it would continue to take legal action against imitators. This is likely to be difficult after the BGH-decision. Although there is still design protection, the deadlines for Birkenstock sandals have already expired a long time ago: the term of protection for a registered design lasts up to 25 years maximum from the filing date, but the sandals were already designed in the 1970s. Therefore, copyright protection, which only expires 70 years after the death of the author, would have been more advantageous for Birkenstock…

Landmark ruling of CJEU with significant impact on european patent litigation strategies

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Earlier this week, the CJEU has issued its long-awaited ruling in the matter of BSH vs Electrolux (CJEU, judgement of February 25, 2025, C-339/22), thereby significantly expanding the possibilities for both the UPC and national courts in the EU Member-States to grant cross-border injunctions and decide on matters of patent infringement in countries outside the respective court’s own territory.

In its final and non-appealable ruling, the CJEU responded to several questions on the interpretation of the Brussels I-bis Regulation (“BR”). These were raised by a Swedish Court when confronted with BSH’s request to decide on the alleged infringement by Electrolux of all national parts of its European bundle patent, including in a non-EU state. The Swedish court was principally tasked to render a decision on these requests, considering Electrolux is a Swedish company and that Art. 4 (1) BR grants the courts of the EU-Member States general jurisdiction over all infringing acts committed by a person or company domiciled in their respective territory (irrespective of where the act occurs).

However, Art. 24 (4) BR limits such jurisdiction for cases concerning the “validity of patents”. So far, and following a number of earlier CJEU rulings (in particular: Roche v. Primus, Solvay v. Honeywell and GAT v. LUK), this limitation had been understood to apply as soon as a validity challenge had been brought by a defendant in any of the foreign countries concerned. As this challenge is generally available to any defendant, the above understanding and corresponding court practice led most patent owners in the past years to limit their litigation at a national court in the EU (or now also at the UPC) to infringing acts having occurred in the actual territory of the respective court.

The CJEU has now clarified the scope of Art. 24 (4) BR in relation to patent infringement cases. In the view of the CJEU, the “validity of patents” mentioned in Art. 24 (4) BR only concerns validity challenges that would lead to an erga omnes nullification of the attacked patent. These challenges still need to be brought in the courts of the patent concerned, e.g. at the Bundespatentgericht in case of a German validation of an EP.  In view of the CJEU, Art. 24 (4) BR does not however apply to an inter partes validity defense raised against a patent infringement claim. Consequently, even if an invalidity challenge was brought in a foreign country, Art. 4 (1) BR would still allow the court of the EU Member-State in which the infringement case has been brought to rule on the infringement in such foreign country, by assessing and taking into account the validity challenge in the foreign country for its inter partes decision.

This ruling is expected to have significant implications for global patent litigation and corresponding strategies, only some of which are:

  • The patent owner may now sue any EU-based defendant in the national courts of its domicile for patent infringement in any country (worldwide), including the request for an injunction and/or damages. Obviously, the question of infringement would then need to be determined on the basis of the applicable foreign law, which could then lead to the necessity of multi-national litigation teams, expert opinions on foreign law, as well as some possible “twist and tweaks” in relation to how a European court may assess and apply foreign (e.g. US) law.
  • Similarly, the owner of a non-opted-out (or opted-in) EP may now sue any defendant domiciled in a UPC member state at the UPC in relation also to EPC states which are not part of the UPC system. In fact, there is already some early precedent in this regard (even predating the CJEU’s decision), namely the LD Dusseldorf’s decision of 28 January 2025 in the matter of Fujifilm vs. Kodak, UPC_CFI_355/2023). Here, the UPC accepted jurisdiction also in relation to alleged infringement of an EP in the UK.
  • While granting broad jurisdiction to national courts and the UPC, the CJEU has accepted that an invalidity challenge in a foreign country is to be considered by the infringement court and could also lead to a potential stay of the infringement case. For defendants, this could imply the need to bring multiple invalidity attacks in national courts at the same time, if patent owners decide to bring an infringement action in only one national court for infringement in various countries. Depending on the scale of such action and the number of countries involved, this could put significant economic pressure upon defendants, who obviously will need to advance most of these costs.
  • One of the big questions left open by BSH vs. Electrolux is the precise scope of the concept of “domicile”, including the highly relevant question of whether joint defendants could be sued using the aforesaid regime, if only one of them does in fact have a place of business in the relevant EU Member-State. While earlier case law of the CJEU provides for some guidance in this regard, there will certainly be many attempts to broaden this concept and hopefully some clarifying decisions in the months and years to come.
  • Lastly, the question of enforcement lingers upon the decision by the CJEU. In case that local authorities of a state, which the decision on infringement extends to, but is not the state of the court seised, are needed to enforce the decision, it is likely that there will be significant pushback by that state, inferring jurisdictional/judicial overreach (especially in the case of a non-EU or non-EPA third party state). Where, however, no help from local authorities of a state, to which a decision extends, is needed, such possible “enforcement-gap” should not be of issue.

For patent owners and possible defendants alike, this is a significant development  that has to be taken into account when planning enforcement strategies or considering the corresponding risk of doing business in the EU. While the discussion of possible further implications of this landmark ruling is evolving rapidly, we will provide further updates within due course.

Dr. Julian Wernicke, Attorney at Law at BOEHMERT & BOEHMERT

EU Commission confirms: “Emmentaler” remains a generic term

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The cheese is not recognized as a protected designation of origin.

On January 23, 2025, the EU Commission ruled that the term “Emmentaler” will not be recognized as a protected designation of origin within the European Union. Instead, it confirmed that the term is a generic name that may be used freely. BOEHMERT & BOEHMERT successfully represented an international dairy consortium in this case, preventing Switzerland from monopolizing the name.

Background: Dispute Over Origin Protection

In March 2024, Switzerland applied for the international registration of the term “Emmentaler” as a protected designation of origin under the Geneva Act of the Lisbon Agreement. The goal was to reserve the name exclusively for cheese produced in the Swiss Emmental region. However, the EU Commission’s Directorate-General for Agriculture and Rural Development rejected the application, arguing that the term is no longer historically or culturally limited to Switzerland.

EU Commission’s Decision

In its Implementing Decision (EU) 2025/107, the EU Commission justified its ruling by stating that “Emmentaler” has been produced in several EU countries since the 19th century. Three protected geographical indications within the EU already include “Emmentaler” or a linguistic variation of the name, referring to cheese produced outside Switzerland:

  • “Allgäuer Emmentaler” (PDO), produced in Germany,
  • “Emmental français est-central” (PGI), produced in France,
  • “Emmental de Savoie” (PGI), also produced in France.

Implications: Legal Certainty and Fair Competition

The EU Commission’s decision ensures legal certainty and prevents market distortions, as the term “Emmentaler” has long been recognized internationally as a type of cheese with characteristic holes—rather than as an indication of Swiss origin.

Dairies in the EU and beyond retain their production freedom. Manufacturers may continue using the name as long as they comply with national production regulations, such as Germany’s Cheese Ordinance. Protecting the term as a PDO would have led to significant adaptation costs and market confusion. In Austria alone, approximately 14,000 tons of Emmentaler are produced annually—more than in Switzerland itself.

By classifying “Emmentaler” as a generic term, the EU Commission also strengthens the position of other countries seeking to defend traditional names against excessive protection claims. Furthermore, the case highlights the importance of strategic legal representation that takes into account both international agreements and European regulations, as well as industry-specific market and consumer perceptions.

Malte Windeler, Attorney at Law at BOEHMERT & BOEHMERT

Greenwashing – Federal Court of Justice decision and new requirements for environmental advertising in the EU

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After various regional and higher regional courts in Germany have examined the conditions under which companies may advertise the alleged “climate neutrality” of their products and services in recent years, the Federal Court of Justice (BGH) has now issued clear instructions. Companies must also prepare for fundamental new regulations concerning sustainability advertising as a result of two European Union directives.

Background

The judgement of the Federal Court of Justice (I ZR 98/23, 27 June 2024) was based on an advertisement by a confectionery manufacturer that advertised in a magazine with the statement “Since 2021, [manufacturer] has produced all products in a climate-neutral manner.”  The advert also included a label with the words “climate neutral” and “product”. Scanning the QR code included in the label took the reader to a third party website where further information on the product’s alleged climate neutrality was available. The German Centre for Protection against Unfair Competition took legal action against this advertising, arguing that it suggested an emission-free production. If the claimed “climate neutrality” was not achieved through actual emission savings in production, but only through offsetting activities (such as environmental protection projects), this should have been made clear in the advert itself – and not only on the website accessible via the QR code.

The lower courts in the form of the Regional Court of Kleve and the Higher Regional Court of Düsseldorf had deemed the advertising to be permissible and in particular based their decision on the fact that the consumer would understand the term “climate neutral” as an indication of a balanced carbon footprint. If this is not (only) achieved through savings in production, but also through offsetting methods, this must be disclosed. However, in the case of the advert in question, this was done on the website which could be accessed via the QR code in the advert. Therefore, the consumer was not misled.

Decision of the BGH

The Federal Court of Justice overturned the judgement of the Düsseldorf Higher Regional Court and prohibited the advertising by the confectionery manufacturer on the grounds that it was misleading within the meaning of Section 5 (1) of the German Act against Unfair Competition (UWG). Strict requirements apply to advertising with environmental claims, as the public has been increasingly aware of environmental issues for decades and the environmental compatibility of a product plays a special role in many people’s purchasing decisions. At the same time, however, vague terms such as “climate-neutral” or “environmentally friendly” would harbour a considerable potential for misleading advertising in such a scientifically complex topic. Accordingly, ambiguous advertising claims would have to be clarified.

In the case of the term “climate-neutral”, the public could understand this as a reference to the reduction of CO2 emissions during production as well as a subsequent CO2 compensation. The court emphasized a “principle of prioritising reduction over compensation”. The advertising company must therefore provide information about the exact background of the claimed climate neutrality.

The BGH stated that the confectionery manufacturer had not sufficiently met these requirements. In particular, the court took into account that the advertised climate neutrality explicitly referred to production (“Since 2021, [the manufacturer] has been producing all products in a climate-neutral manner.”). It was therefore not immediately apparent to the consumer that this was actually only about offsetting measures.

The manufacturer had also not fulfilled its duty to provide information by including a QR code which led to the website explaining the details of the claimed climate neutrality. Rather, the information had to be provided in the advert itself. The BGH did not accept the argument that this was not possible due to lack of space within the advert.

Overall, the Federal Court of Justice specifies the requirements for advertising with environmental claims and sets strict standards. When using ambiguous terms, companies should carefully check whether sufficient information is provided in the advertising or on the respective product. Caution is required in particular if the consumer is required to actively investigate, for example by visiting a website.

Outlook: EU reforms to combat greenwashing

The requirements for advertising with environmental claims specified by the Federal Court of Justice are likely to be only a provisional guideline for companies in Germany. This is because the European Union is currently working on new regulations that will set new standards as part of the “Green Deal” with the aim of more effective environmental protection. As a result, this will lead to stricter requirements for environmental advertising.

The EU Directive on Empowering Consumers for the green transition (EmpCo Directive) came into force in March 2024. Its provisions must be implemented in the member states by 27 March 2026. In particular, the directive stipulates that companies may only use sustainability labels (e.g. organic labels) that are based on an independent certification scheme or are determined by government bodies. This means that companies will no longer be able to certify the sustainability of their products themselves.

In addition, the EmpCo Directive stipulates that generic environmental claims may not be made if a claimed recognised excellent environmental performance cannot be proven. This makes it particularly difficult to advertise with bold and simple statements such as “environmentally friendly”. Furthermore, an environmental claim may not be made about an entire product or the company’s business operations if the environmental performance only relates to partial aspects or specific activities.

Another important provision concerns advertising with benefits of offsetting of greenhouse gas emissions. Such advertising claims will be prohibited if they claim a neutral, reduced or positive impact on the environment. This means that in future, statements such as “climate neutral” or “CO2 reduced” will be prohibited if they are merely based on compensation measures and not on the actual avoidance or reduction of greenhouse gases in the value chain. As a result, these regulations go beyond the requirements of the BGH.

Finally, the Directive prohibits claims related to future environmental performances (“We will be climate neutral by 2035”) if these are not based on clearly defined and verifiable commitments by the company that are set out in a transparent, detailed and realistic implementation plan.

The EmpCo Directive is supplemented by the Directive on the substantiation of explicit environmental claims and related communication (“Green Claims Directive”). The directive is currently only available as a proposal from the European Commission and has not yet been finalised.

The Green Claims Directive is intended to further improve the verifiability and reliability of environmental claims. To this end, detailed substantiation requirements are initially established for explicit environmental claims (such with verifiable content), on the basis of which companies must evaluate the claims internally. In addition, consumers must be provided with detailed information that makes the environmental claim comprehensible. In particular, the content of the claim must be explained and the scientific basis and specific steps for implementation must be set out. To ensure that these requirements for justification and communication are met, the directive stipulates that environmental claims must be approved in advance by an accredited independent body. Only after receiving a certificate of conformity may the claim then be used in advertising.

The directive also sets out further provisions on environmental labels. Accordingly, new public environmental labels may only be developed at the EU level. New private ecolabels must not only prove that they pursue more ambitious goals than existing schemes, but must also be reviewed and authorised in advance. In addition, essential information on targets, implementation and monitoring of compliance must also be provided.

Companies that violate the new requirements for justification and communication face high fines of up to four per cent of their annual turnover, profit disgorgement and exclusion from public procurement procedures.

Conclusion

Environmental advertising is an important tool for many companies to promote their products and services to environmentally conscious target groups. The requirements for the permissibility of such advertising claims were only rudimentarily regulated in Germany in the past and have only been more clearly defined by case law in recent years. On the EU level, fundamentally stricter rules for environmental claims and environmental labels are now emerging. Companies should be prepared for the stricter legislation and review and adapt their own advertising strategies and product labelling practice if necessary.

Dr. Dennis Kretschmann, Patentanwalt bei BOEHMERT & BOEHMERT

DABUS – AI still no inventor

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The German Federal Court of Justice has confirmed that an artificial intelligence cannot be an inventor, thus joining a number of similar rulings in other countries.

Some time ago we reported in our B&B Bulletin on the decision of the European Patent Office to only allow natural persons as inventors (https://www.boehmert.de/en/its-only-human/). In the meantime, the same applicant had also named the artificial intelligence DABUS as the inventor in a related German patent application DE 10 2019 128 120, only to be rejected by both the German Patent Office and the Federal Patent Court. The applicant’s appeal to the Federal Court of Justice (BGH – X ZB 5/22) has now also turned out unsuccessful. The Federal Court of Justice has confirmed that inventors can only be natural persons, i.e. humans.

Similar decisions against DABUS had already been made by courts in the USA, the United Kingdom, Australia, New Zealand and Japan. As things stand, only South Africa has a heart for machines. The South African Companies and Intellectual Property Commission (CIPC) registered the corresponding patent with DABUS as the inventor back in 2021.

The judges at the Federal Court of Justice argued in their ruling that by law the inventor is the holder of a right. This can only be a person, i.e. a human. Furthermore, according to the current state of scientific knowledge, there is no system that searches for technical teachings without any human preparation or influence. In the court’s view, a human is involved in every invention, even if the invention is created using artificial intelligence as a tool. The human may be involved as a programmer, for data training, when initiating the search process or in selecting the results provided by the machine. This person can then be named as the inventor, even if, from the applicant’s point of view, the artificial intelligence has made the major contribution to the invention.

In its decision, the Federal Court of Justice does, however, allow the naming of a human inventor with the addition that the inventor “induced the artificial intelligence DABUS to generate the invention.” This addition is, however, “legally irrelevant” and is probably of little comfort to the patent applicant.

In summary, the current legal situation remains that only humans can be considered as inventors. In this respect, patent applications in the field of artificial intelligence are no special and are subject to the familiar rules of the game. However, when drafting such patent applications, a number of other important peculiarities must be taken into account. In particular, the patent application should contain extensive information on the training data used and on the results achieved in order to enable the patent office to understand the invention and to meet the feasibility requirements.

In practice, it is also important to define contractually at an early stage of an AI project, and with the involvement of all parties concerned to whom the rights to the invention should belong in order to avoid subsequent disputes.

We will continue to keep you regularly informed about developments in IP law in the exciting field of artificial intelligence.

Melanie Müller, Attorney at Law at BOEHMERT & BOEHMERT

Current G Decisions and Referral Questions to the Enlarged Board of Appeal of the European Patent Office

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The Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) addressed fundamental questions regarding the EPO’s competence and priority in PCT applications in its decisions G 1/22 and G 2/22. With the referral of case G 1/23, the question will be answered as to whether the reproducibility of a publicly available product is a prerequisite for it to be considered as prior art. Additionally, the referral of case G 1/24 will clarify how the interpretative rules of Art. 69 EPC apply to patentability, which is expected to ensure the consistent interpretation of patent claims in the future.

Introduction

The Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) plays a central role in ensuring the uniform application of patent law across Europe. It ensures the consistent interpretation of the European Patent Convention (EPC) by addressing fundamental legal questions referred to it by the President of the EPO or a Board of Appeal under Art. 112(1) EPC. The following article discusses recent decisions and pending referrals to the EBA.

Recent G Decisions

G 1/22 and G 2/22

In decisions G 1/22 and G 2/22, the EBA clarified two key questions regarding the EPO’s competence and priority in PCT applications.

The EBA confirmed that the EPO is competent to assess whether the applicant is entitled to claim priority under Art. 87(1) EPC. This includes verifying both the identity of the applicant of the priority application and whether a valid transfer of rights has occurred.

The Board reiterated that there is a rebuttable presumption that the applicant claiming priority in accordance with Art. 88(1) EPC is entitled to do so.

This rebuttable presumption also applies in cases where the European patent application derives from a PCT application, or where the applicants of the priority application and subsequent application are not the same. If party A is the applicant of the priority application and a PCT application is jointly filed by parties A and B, claiming the priority right, party B can also benefit from the priority right to which co-applicant party A is entitled. It is assumed that an implicit agreement exists between parties A and B, allowing party B to also claim the priority. No separate transfer of the priority right to party B is required. This rebuttable presumption is not limited to scenarios involving only two parties.

In practice, this means that for PCT applications with different applicants for different states, no explicit transfer of the priority right is necessary, unless there are indications to the contrary.
The decision strengthens legal certainty for applicants by creating a presumption in favor of the validity of priority claims, particularly in cases where formal transfer documents are missing but collaboration between the applicants is assumed.

Third parties, however, have the opportunity to rebut this presumption by providing substantial evidence that no implicit agreement or entitlement exists.

Pending Referrals to the EBA of the EPO

G 1/23

Technical Board of Appeal 3.3.03 referred questions regarding the prior art to the EBA in its interim decision 0438/19 of June 27, 2023, under Art. 112(1)(a) EPC.

The referral is based on decision G 1/92, where the EBA held that the chemical composition or internal structure of a publicly available product forms part of the prior art if it can be analyzed or reproduced by a skilled person without undue burden. The EBA identified three factors that must be met cumulatively for the composition of a product to be part of the prior art: (1) The product itself is publicly accessible, (2) the skilled person can determine the composition or internal structure of the product without undue burden, and (3) the skilled person can reproduce the product without undue burden. If the possibility of analysis or reproduction is lacking, the composition, despite the product’s availability, does not form part of the prior art.

In the case referred to the EBA in G 1/23, the assessment of inventive step depends on whether the material “ENGAGE 8400,” which was previously available on the market, formed part of the prior art. Various documents introduced into the proceedings, published before the earliest priority date, indisputably show that ENGAGE 8400 meets nearly all the features of the patented invention. The patent holder argues that, regardless, no information on the synthesis conditions has entered the public domain, and reproducing the material would require a time-consuming and costly research project, with no guaranteed success. Therefore, at least the reproduction would not be possible without undue burden as defined in G 1/92.

Practical Significance

The EBA’s decision will clarify whether the lack of reproducibility of a product is an exclusion criterion and how precise the required reproduction must be. This issue particularly affects technical fields where reproduction is difficult. For example in the field of polymer chemistry, where precise synthesis conditions are needed and cannot be deduced through material analysis alone.
If the EBA decides that non-reproducible products can still be considered part of the prior art if their composition is analyzable or publicly known, manufacturers will need to more carefully weigh whether to bring a product to market, as mere market availability could destroy novelty.

G 1/24

In its decision T 439/22, the Technical Board of Appeal referred questions to the EBA regarding the determination of claim scope and the interpretation of Art. 69(1), second sentence, and Art. 1 of the Protocol on the Interpretation of Art. 69 EPC.
It is debated whether the principle that the description and drawings should be used to interpret patent claims applies solely to determining the scope of protection or also in assessing patentability. Many decisions hold that Art. 69(1), second sentence, and Art. 1 of the Protocol apply only within the context of Art. 123(2) EPC. However, some decisions argue that these interpretation rules apply to the EPC as a whole — including the definition of the invention as a preliminary question of patentability. In this regard, the referring Board aligns with the EBA’s statements in G 6/88. Question 1 is intended to unify the inconsistent case law and clarify this matter of fundamental importance.

Another legal principle regarding claim interpretation is the subsidiarity of the description. The description should only be used to interpret the claims when the wording of the claim is unclear or ambiguous on its own. The referring Board discusses conflicting case law on this matter in detail in paragraphs 3.3.3 ff: In some cases, the description is used regardless of whether the claims are ambiguous, but subsidiarity is maintained by giving greater weight to the wording of the claims. Other decisions hold that claims must always be interpreted independently and without regard to the description. Question 2 aims to resolve these contradictions and unify legal practice.

The third question concerns a divergent practice among Boards of Appeal regarding the consideration of definitions and similar information provided in the patent description when interpreting the claims. Generally, the words of the claim are to be given their ordinary meaning in the relevant technical field. Some decisions hold that differing definitions in the patent description should be considered, effectively allowing the patent to serve as its own dictionary. Other decisions, however, argue that the need for legal certainty limits this, asserting that additional reference to the description must not restrict or alter the invention beyond what a skilled person can deduce from the plain wording of the claims. In some cases, a definition in the description is disregarded if it excludes a reasonably conceivable and technically plausible interpretation of the claim language (e.g., T 169/20, reason 1.4). Other decisions disregard such definitions only when they are outright incompatible with the usual meaning of the term (e.g., T 1473/19, reason 3.16.2). Question 3 seeks to resolve these ambiguities.

Practical Significance

The questions concerning the interpretation of patent claims are fundamental. The answers provided by the EBA will be considered in patent grants, as well as in European opposition and national nullity proceedings in the future.

Conclusion

Decisions G 1/22 and G 2/22 establish a clear basis for future cases by introducing a rebuttable presumption in favor of priority entitlement, which can only be overturned by substantial evidence from third parties. Referral G 1/23 raises fundamental questions about the reproducibility of a product, with the potential outcome being that the mere availability of a product on the market may destroy novelty, regardless of its reproducibility. Decision G 1/24 will clarify whether the interpretative rules of Art. 69 EPC and its Protocol apply not only to the determination of claim scope but also to questions of patentability, potentially leading to a unified and clear interpretation of patent claims.

 

Co-Author: Tamar Gelashvili

„KÖLNER DOM“ not registrable as a trademark

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The sign „Kölner Dom“ cannot be protected as a trademark and must remain free for the general public.

The High Cathedral Church of Cologne had applied for registration of the sign “KÖLNER DOM” for various goods and services with the German Patent and Trade Mark Office (DPMA). The DPMA rejected the application due to a lack of distinctiveness. This decision was confirmed by both the Federal Patent Court and the Federal Court of Justice (BGH, Beschl. v. 12.10.2023 – I ZB 28/23) and is meanwhile legally binding.

With regard to the word sign “KÖLNER DOM” all instances took the view that this designation had no distinctive character for the goods and services in question. The term is understood either as a purely content-related indication, as purely decorative or merely as a motif-like reference to the well-known sight.

The decision confirms the line that it is very difficult to protect the names of well-known buildings as a trademark in Germany. As a building becomes better known, the chances of registering the name dwindle. In the past, the DPMA has already refused to register the following signs:

– “Palais am Brandenburger Tor”
– “World Trade Center”
– “Berliner Schloss”

The European Trade Mark Office, on the other hand, appears to take a less strict approach in this context. For example, the office has granted protection to the “World Trade Center” sign. The registration of well-known names of buildings is therefore more likely to be successful there.