The Enlarged Board of Appeal (EBA) has now delivered its highly anticipated decision in G 1/25, providing updated guidance on whether an applicant or patentee must amend the description following amendment of the claims.
In summary, the EBA has confirmed that description amendments are only required where an inconsistency between the claims and the description results in non-compliance with a specific provision of the EPC. In doing so, G 1/25 builds directly on the principles established in G 1/24, which confirmed that claims should be interpreted using the claims, description and drawings together from the perspective of the skilled person.
Will this framework encourage a more applicant-friendly practice that limits the sometimes onerous and often considered unnecessary description amendments “merely for the sake of formal concordance” (G 1/25, Reason 22)? Or will it lead to greater scrutiny of EPC compliance, increased debate over the significance of individual description amendments, and potential ramifications in post-grant proceedings? Or will business as usual prevail?
Recap
The referral arose from opposition-appeal proceedings, T 697/22, where the patentee amended Claim 1 to incorporate a limiting feature from the dependent claims. The opponent argued that this amendment introduced an inconsistency between the allowed claims and the description, because in the description that feature was described more broadly, and in some cases was described as optional, in contrast to the amended claims.
The referring Board considered that the allowability of the patent depended upon whether such an inconsistency constituted a legal obstacle to maintaining the patent.
In reviewing the existing case law, the Board identified two diverging lines of case law:
- Adaptation of the description is required as it is necessary that the entire description is consistent with any claims;
- Adaptation of the description is not necessarily required because the claims should themselves be clear. The clarity of the claims should not be affected if the description contains subject matter that is not claimed, and there is no legal basis requiring that the description omits unclaimed features.
To resolve this divergence, three questions were referred to the Enlarged Board concerning:
- Whether a description must be adapted whenever claim amendments introduce an inconsistency between the claims and the description.
- Which EPC provision provides the legal basis for such adaptation.
- Whether the answers differ between examination of pending applications and during post-grant proceedings.
The decision
The EBA's answers to the questions above can be summarised as:
1. If the inconsistency is such as to cause a non-compliance with the EPC, yes.
2. There is no single provision of the EPC which, in all circumstances, mandates an adaptation of the description. Instead, whether adaptation is required depends on whether, in the circumstances of the case, the inconsistency results in non-compliance with a requirement of the EPC. The legal basis for any necessary adaptation of the description therefore lies in the provision of the EPC with which compliance is lacking because of the inconsistency in question.
The Board identified several provisions that may potentially be affected, including:
- Articles 52 to 57 EPC (patentability requirements);
- Article 76(1) EPC (divisional applications);
- Article 83 EPC (sufficiency);
- Article 84 EPC (clarity and support);
- Article 123(2) and 123(3) EPC (added matter and extension of scope).
3. No, the same principles apply during both examination of applications and during post-grant proceedings.
Central to the EBA’s reasoning for their decision is the influence of G 1/24. The EBA emphasised that claim interpretation is not a sequential exercise in which the claims are first interpreted in isolation and the description is consulted only if ambiguity remains. Instead, claim interpretation involves determining the meaning of the claims from the perspective of the skilled person using the claims, description and drawings together. This represents a clear endorsement of a holistic approach to claim interpretation and brings EPO practice closer to approaches commonly seen before national courts and the UPC.
However, the Board also stressed an important limitation. The description cannot be used to impose a limitation or confer a breadth on a claim that finds no basis in the claim wording itself. Claims remain the starting point and primary determinant of scope.
So, what counts as an inconsistency? Perhaps the most practically important aspect of the decision is the EBA's discussion of what actually constitutes an inconsistency. The Board indicated that an inconsistency exists only where the skilled person, reading the claims in light of the description and drawings, would be left in real doubt as to the meaning of the claims. This seems a relatively high threshold, though it is unclear how the term will be interpreted by examiners in practice.
The decision further clarifies that:
- An inconsistency does not arise simply because the description contains embodiments that fall outside the claims.
- An inconsistency may instead arise where it is unclear whether a particular embodiment or technical teaching falls within or outside the claimed scope.
- Many apparent conflicts may disappear once the claims are interpreted holistically using the principles of G 1/24.
The EBA therefore appears to have rejected the notion that every unclaimed embodiment must automatically be labelled or deleted.
In addition, the EBA has clarified that deletion of inconsistent passages is not the only available option. An alternative remedy is neutralisation of the inconsistency through appropriate clarification, a path already well-trodden by many to avoid the outright deletion of subject matter.
Key practical implications
The decision is unlikely to eliminate description objections at the EPO as many would have hoped. However, going forward there may be fewer objections requiring description amendments to be made, or a greater onus on the examining division to justify why an inconsistency exists, which specific EPC provision it contravenes, and why it cannot be resolved through ordinary claim interpretation applying the principles of G 1/24.
The timing of when amendments are required appears unchanged. Notably, the EBA indicated that the existing practice of finalising description amendments only after acceptable claims have been agreed can continue.
Whether the decision of G 1/25 results in a material reduction in description amendment objections will depend on implementation by examining divisions. Nevertheless, the decision appears to provide applicants and patentees with a stronger foundation for challenging requests to amend the description, while preserving the EPO's ability to require amendments where genuine uncertainty or EPC non-compliance exists.
