Event recap: EPO Webinar Series “G1/24, AI Inventions, and So Much More”

Speakers: Aurélie Jimenez, Martin Muller, Kenneth Weatherwax
By Cristina Cabezas, Student Reporter

THE BOARDS OF APPEAL OF THE EPO

Structure and Composition of the European Patent Organisation (EPO) Boards of Appeal

The Boards of Appeal are the EPO’s independent judicial body and act as the first and final judicial instance in EPO proceedings. They review decisions made by the Receiving Section, Legal Division, Examining Division, and Opposition Division within the framework of the EPC.

The Boards are organized into technical boards, a Legal Board, a Disciplinary Board, and the Enlarged Board of Appeal (EBA), which ensures consistency in the application of the EPC. Members are appointed by the Administrative Council and operate independently from the EPO’s management.

The Boards ensure an impartial, consistent review of first-instance EPO decisions, functioning as the backbone of judicial oversight in the European patent system.

Recent Decisions Of The Enlarged Board Of Appeal

G 1/24 is a landmark decision by the EBA that clarified how to interpret patent claims when assessing patentability, resolved a long-standing conflict in EPO case law, and brought the EPO’s practice in line with the Unified Patent Court and national courts.

The EBA held that the description and drawings must always be consulted when interpreting patent claims, not only when the claim language is unclear or ambiguous. However, the claim text remains the starting point, and limitations from the description cannot override the ordinary meaning of clear claim terms.

The pending referral G 1/25 (“Hydroponics”) addresses whether applicants must adapt the description when amending claims during examination or opposition. While EPO practice has long required the removal of inconsistencies, some Boards have questioned whether the EPC explicitly supports that requirement.

G 1/25 will clarify this once and for all and could affect how strictly the EPO enforces the claim description alignment going forward. Until G 1/25 is decided, continue aligning descriptions with amended claims to avoid objections or procedural delays.

G1/23 confirmed that commercially available products can form part of the state of the art, even if their internal composition couldn’t be thoroughly analyzed at the time of marketing. What matters is that the product was publicly available, its analyzable properties are considered prior art.

When relying on prior-art products, provide strong evidence, test data, documentation, or technical leaflets to establish what was publicly disclosed at the time.

Patent Issues Relating to Artificial Intelligence – An EPO Perspective

Under Article 52 EPC, patent protection is available for inventions in all fields of technology that are new, involve an inventive step, and are susceptible to industrial application.

A key distinction between European and U.S. patent law is that exclusions under the EPC are explicitly codified, while in the U.S., they have evolved through judicial precedent. Because AI systems often rely on mathematical methods implemented on computers, which are excluded, patentability is limited.

The EPO applies the problem-solution approach under Article 56 EPC to determine the inventive step. The step involves identifying the technical problem solved by the invention relative to prior art. If no technical problem is solved, or the contribution is purely abstract, the invention is not patentable.

For AI inventions, no sui generis standard applies. The same rules governing computer-implemented inventions are used. Technical effects may arise from direct interaction with physical reality via sensors, actuators, or improvements in computer functionality, or from indirect contributions to a technical task.

On AI inventorship, EPO case law (e.g., J 8/20 and J 9/20) confirms that AI-assisted inventions are patentable, but an AI system cannot be named as the inventor. A human contribution remains legally required.