2025 Week 32
As the Unified Patent Court continues to build its jurisprudence, recent decisions have confirmed and refined the Court’s general approach to claim interpretation, the principles of which were set out by the UPC Court of Appeal (CoA) in 10x v. Nanostring.
The CoA emphasised that the claims are the decisive basis for determining the scope of protection under Article 69 EPC, but that the description and drawings must always be consulted—not just to resolve ambiguity, but to inform the skilled person’s understanding of the invention. The CoA also stressed the need to balance appropriate protection for the patentee with legal certainty for third parties and made clear that interpretation is a judicial task, not one delegated to experts.
That decision laid down a structured framework for how claims should be construed at the UPC, which is now consistently applied across the first instance divisions, including in the following recent decisions on a diverse range of subject matter.
Textiles: Texport v. Sioen
In this 31 July 2025 decision on infringement the Nordic-Baltic Regional Division considered the meaning of the term “waffle structure” in a claim directed to knitted fabrics used in firefighters’ clothing in EP 2186428 B2.
The court found that the skilled person would understand this to be a three-dimensional structure resembling a waffle, based on the technical function described in the patent—namely, the creation of air cushions for thermal protection. The court rejected the defendant’s suggestion that the term, as used generally in the art, would require that both sides of the fabric look the same. This decision reflects the CoA 10x approach: the claim was interpreted based on what the skilled person would reasonably understand in light of the description, but without reading in additional limitations not required by the claims.
Building and construction: X v. Essetre
This 28 July 2025 decision was in a revocation action against EP 2875923 B1. The revocation action was filed in the name of an individual, and for this reason the court has anonymised the claimant.
The patent is for machines for machining wooden walls, such as in prefabricated building structures. Slightly unusually for UPC proceedings to date, the patentee opted to make an amendment to the independent claim as its main request in defending the revocation action. This worked – the patent was maintained in amended form.
The Paris Central Division considered the phrase “a working surface” in the claim and concluded that it referred to a single working surface, rather than “at least one working surface”, thereby covering multiple working surfaces. The court relied on the objective of the invention as set out in the patent - eliminating lateral carriages - to support its interpretation and noted that “a patent is its own lexicon.” This reinforces the idea that the description can redefine terms when context demands it, provided that the interpretation remains anchored in the claim language.
Wigs: N.J. Diffusion v. Gisela Mayer
This 1 August 2025 decision from the Paris Local Division was for infringement of EP 2404516 B1, but there was no counterclaim for revocation.
The patent related to wigs and methods of making them. In this case too, the court dealt with the relationship between the claim language and the description, but here the power of the description to broaden or narrow claim scope was held to be limited. The patent described two embodiments, one in which two components were “on top of each other” and one where they were “edge-to-edge” – however the claims had been expressly limited to the latter. The court held that the descriptive part could not override the clear language of the claims, stating clearly that:
“It does not matter that the descriptive part still contains the embodiment called “on top of each other”; what matters is the scope of protection as delimited by the claims, which are expressly limited to the embodiment called “edge-to-edge”.
and quoting earlier case Agfa v. Gucci which confirmed that:
“Specifications in the description that are not consistent with the granted claims cannot serve as a basis of a broad interpretation of a claim.”
Notably, this case also delved into infringement under the doctrine of equivalents (DoE). But the Local Division followed the approach of several earlier cases that we reported on in UPC Weekly 2025 w24. Here, the court was also reluctant to try to establish a full test for DoE, merely saying that the alleged variant did not perform essentially the same function in order to achieve essentially the same effect. So, there was no infringement.
How does the UPC approach square with the EPO approach?
In probably the most consistent thread of case law and reasoning in all of the UPC decisions to date, it is clear that the UPC will always follow the 10x v. Nanostring framework for claim interpretation. The claims serve as the decisive basis for determining the scope of protection under Article 69 EPC, but the description and drawings must always be consulted, not merely in cases of ambiguity.
If you think that sounds familiar, then you are probably aware of the recent decision from the EPO Enlarged Board of Appeal (EBA) on the same point. In G 1/24 the EBA confirmed that the description and drawings must always be consulted when assessing patentability, and not only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation.
The EPO’s now-confirmed position when interpreting claims for patentability is therefore consistent with that of the UPC when assessing infringement and validity. In fact, the EBA specifically noted that its approach is in harmony with that of the UPC for claim interpretation.
But for all this, there are still differences between the UPC and EPO. We have consistently seen that the UPC will apply the same claim interpretation for infringement and validity. The EPO is only concerned with validity. More than that, G 1/24 was specifically limited to whether the claims should be interpreted in the light of the description when considering patentability according to Articles 52-57 EPC. These parts of the EPC relate to validity on substantive grounds such as novelty, inventive step, industrial applicability, excluded subject matter (such as computer programs) and exceptions to patentability (such as methods of treatment). In particular, G 1/24 did not consider other grounds of invalidity, such as added subject matter.
We see many decisions from the UPC in which added subject matter is raised as a ground of invalidity. The structure of UPC decisions consistently interprets the claims first, before considering any ground of invalidity, including added subject matter. This is most clearly seen in the CoA decision in Abbott v. Sibio, which we reviewed here.
What about description amendments?
Looking forwards, it will be interesting to see whether the EPO EBA similarly looks to UPC case law when answering the more recently referred questions in G 1/25. This new referral asks the EBA to opine on the longstanding question of whether the description must necessarily be amended to be consistent with the claims, when the latter are amended. The EPO currently insists that inconsistent embodiments should be deleted or clarified during prosecution, but it has been questioned (including by some EPO Boards of Appeal) whether this practice is necessary and whether it actually has any legal basis.
The comments of the UPC judges might offer a fresh perspective on this question. In the NJ Diffusion v. Gisela Mayer case mentioned above, the Paris Local Division noted that the amendment of claim 1:
“should have resulted, at the grant stage of the patent, in the deletion [of the unclaimed embodiment] mentioned in the description, as this mode does not fall within the scope of protection”.
That would have been consistent with current EPO practice.
Similarly, in earlier case Agfa v. Gucci, the Hamburg Local Division stated that passages in the specification relating to unclaimed embodiments “should have been deleted”.
But crucially, in both of these cases, the courts had no difficulty interpreting the claim to exclude the inconsistent embodiment and made it clear that the presence of an apparent contradiction did not affect the scope of protection. The court (assuming the mantle of the notional skilled person) was well able to disregard descriptive content that conflicted with the granted claims.
So what does this mean for G 1/25? On the one hand, the UPC’s comments could be seen as supporting the EPO’s current position: consistency is preferable and helps avoid confusion. On the other hand, they also demonstrate that the courts can interpret claims correctly even when the description contains inconsistent material - suggesting that mandatory amendments may not be strictly necessary.
