Yesterday the EPO announced a Technical Board of Appeal has referred questions to the EBA concerning the adaptation of the description of a pending European patent application or of a European patent under opposition or appeal.
The Enlarged Board of Appeal (EBA), the EPO's highest legal authority, handles referrals from the lower Boards of Appeal or the EPO President seeking answers to legal questions. Technical Board of Appeal decision T 697/22 has lead to a referral pending under: G 1/25 - "Hydroponics". This follows on from recent EBA decisions (G1/23 and G1/24) in the last month or so.
Key legal questions referred in G 1/25
The following questions have been referred to the EBA in G 1/25:
- 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?
- If the first question is answered in the affirmative, which requirement(s) of the EPC necessitate(s) such an adaptation?
- 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?
Why description amendments matter in European patent practice
As adapting the description is currently an integral part of the European patent process, the answers to these questions - whatever they may be - are likely to have an immediate impact on how practitioners operate.
At present, the EPO's Guidelines for Examination require that the description must be brought into line with amended claims, including removal of any "inconsistencies" between the description and the claims. This requirement frequently gives rise to disputes between the EPO and patent practitioners or rights holders. The EPO is an outlier internationally here, most jurisdictions require much less amendment of the description to align with the claims.
In our experience, these Guidelines are somewhat inconsistently applied during examination, and there have been well-documented instances of Boards of Appeal not following these principles. Because of this, this referral has been anticipated for some time.
Will the EBA uphold description consistency requirements?
Given the ruling in another very recent EBA decision G 1/24, where: "The description and drawings shall always be consulted to interpret the claims when assessing the patentability of an invention", expectation might be that the EBA uphold the principle of amending the description to conform to the claims, and uphold the requirement to remove "inconsistencies". Indeed, G1/24 is referred to in the referring decision T 697/22:
"Following G 1/24, the question whether an application can be granted or a patent can be upheld if there is an inconsistency between an amended claim and the description has become of even greater significance."
In this up-coming EBA decision, how "inconsistencies" are even defined might first need to be considered. Also, the answer to the specific requirements of the EPC to necessitate this (question 2) will be very interesting; the EPO's Guidelines for Examination are Guidelines only, and not legal basis for practice.
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