G1/25 Enlarged Board of Appeal to consider the need for description amendments in European patent applications and patents

The Enlarged Board of Appeal (EBoA) is tasked with ensuring the uniform application of the European Patent Convention, and provides answers to questions of law referred to it by a Board of Appeal. The latest referral, G1/25, relates to the EPO’s practice of requiring amendments to the description to remove any inconsistency with amended claims.

The EPO’s stricter regime for amending the description to conform to the claims began with the introduction of the 2021 EPO Guidelines for Examination. The current Guidelines state that the applicant must either delete subject matter in the description that is inconsistent with the amended claims, or state that such subject-matter is not part of the claimed invention.

While these Guidelines are themselves inconsistently applied by different examiners, the stricter requirement has generally led to significantly more work for patent professionals, with a corresponding increase in legal costs for applicants and patentees. An even greater concern is that amendment of the description may affect the interpretation of the claim scope during opposition and national court proceedings, which is a strong motivation for resisting such amendments.

A referral to the EBoA generally requires divergent decisions at appeal level. The referring Board, in its interlocutory decision T 0697/22, found two clearly diverging lines of case law. The first and most common line of cases (exemplified by T 1024/18 and T 438/22) finds that there is legal basis for requiring the description to be consistent with the amended claims, although there is no consensus in these decisions on one precise legal basis. The second (exemplified by T 1989/18 and T 56/21) finds that there is no legal basis for the refusal of a patent application if there is an inconsistency between any amended claim and the description.

The specific case before the referring Board is an appeal from a decision of the opposition division. However the referring Board noted that the referral affects the practice of all departments of the EPO, from examination through to opposition appeal. It also referenced the recent EBoA decision G 1/24, discussed here.

In G 1/24, the EBoA considered whether the interpretation of patent claims should focus solely on the wording of the claims themselves, or whether the accompanying description and drawings should also be used to interpret the claims. It decided that “[t]he description and drawings shall always be consulted to interpret the claims when assessing the patentability of an invention under Articles 52 to 57 EPC, and not only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation”.

The referring Board considered that the decision in G1/24 gave even greater significance to the question as to whether an application can be granted or a patent upheld in the event of an inconsistency between an amended claim and the description.

It therefore referred the following questions to the EBoA:

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?

The EPO is currently the only patent office that considers it necessary for patent quality or legal certainty that the detailed description is amended to align with the claims. While many applicants and patent professionals would welcome a relaxation of the EPO’s requirements, it is by no means certain that the EBoA will give a clear and definitive answer, in part because an answer to question 3 is not directly relevant to the issue before the referring Board. Furthermore, the recent decision in G1/24 might be considered to point in the opposite direction; if the EBoA has recently ruled that the description must be consulted when interpreting the claims, it would seem counter-intuitive for it to decide that inconsistencies between the description and the claims do not need to be addressed.

With its potentially significant consequences, this EBoA decision will be eagerly awaited.