G 1/25: Enlarged Board Of Appeal Rules On Amendment Of The Description

The Enlarged Board of Appeal (EBA) has issued its decision in case G 1/25. The case concerns whether the description of a European patent application should be amended to address any inconsistencies with the claims. The EPO is unique among major patent offices in its longstanding requirement for the description to be adapted in pre- and post-grant proceedings in such a way.

The three questions referred to the EBA by the referring board of appeal in T 697/22 are set out below, together with decision of the EBA in relation to each question. Further information on the background to the present referral can be found in our briefing note on the referring board’s decision.

When must the description be amended?

Question 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?

Question 1 essentially asks whether it is necessary to amend the description of a patent such that it is consistent with any amendments made to the claims during post-grant opposition proceedings. To answer this question, the EBA first considers the implications of its previous decision G 1/24 (which is discussed in more detail in our news item on this decision). G 1/24 concluded that the description (including any drawings) of a patent application is always to be consulted to determine the meaning of a claim in the context of the application or patent as a whole. The EBA goes on to summarise the post-G 1/24 line of case law, which establishes that the description may affect the meaning which the skilled person attributes to the claim wording (i.e. a technically reasonable definition found in the description can be read into the claims if it complies with the overall teaching of the patent), but cannot be used to impose on the claim a limitation or expansion for which the claim wording provides no basis.

Against this understanding of how the claims of a European patent should be interpreted, the EBA sets out a two-part test to determine whether any adaption of the description is required in any given instance, as follows.

• Is there an inconsistency between the claims and the description? The EBA considers an “inconsistency” to exist between the claims and the description (including any drawings) where one or more statements in the description suggest an understanding of a claim which is incompatible with the apparent meaning of the claim, and that incompatibility cannot be resolved by applying the claim interpretation principles of G 1/24. Interestingly, the EBA does not consider that an inconsistency is established merely because the description contains a technical teaching, examples or embodiments that do not fall within the claimed subject-matter (reasons 20 of the decision). Rather, an “inconsistency” requires that the content of the description creates real doubt about the meaning of the claims.
• Does that inconsistency lead to non-compliance with one or more requirements of the EPC? The EBA considers that an “inconsistency” between the claims and description only needs to be rectified in cases where the inconsistency leads to non-compliance with one or more requirements of the EPC, including patentability requirements under Arts. 52-57 EPC, the sufficiency requirement under Art. 83 EPC, the clarity requirement of Art. 84 EPC and disclosure requirements under Arts. 76(1) and 123 EPC. Any “inconsistency” that does not lead to non-compliance with any of these Articles of the EPC does not need to be removed or neutralised from the description. In this latter regard, the EBA finds that the EPC does not require adaption of the description only for the sake of formal concordance of the claims and description.

If the answer to both parts (1) and (2) of this test is “yes”, adaptation of the description is required.

How is this likely to change EPO practice?

In practice, the EBA’s decision therefore represents a slight relaxation to the current practice of the EPO examination and opposition divisions, which typically require strict adaptation of the description for conformity with the claims. That wholesale adaptation of the description no longer appears to be necessary – though it will be interesting to see which type of amendments examiners still consider essential going forwards. The EBA decision does not give much detail in this regard and therefore leaves scope for this to continue to be a topic for debate.

It does seem, from the limited guidance provided by the EBA on how to apply the two-part test, that any statements pertaining to what the invention is held out to be should still be amended for conformity with the claims (reasons 38). Thus, it is likely that EPO examiners will still require claim-like counterparts in the description to be amended for conformity with the claims as ultimately allowed, if they are stated to be a summary of the invention. Likewise, if limitations to a particular definition are incorporated into the claims during prosecution, the corresponding definition in the description also should be adapted to ensure conformity with the claims.

On the other hand, it no longer seems necessary to delete “embodiments” or “examples” from the detailed description section of an application simply because they do not fall within the scope of the claims, so long as their presence in the description does not cast doubt on the meaning of the claim language (reasons 20). Likewise, it may no longer be necessary to signpost any working examples that fall outside the scope of the claims as “reference” examples or explicitly as being outside the scope of the invention. It further seems logical that statements in the description that subject-matter is an aspect or embodiment “of the disclosure” should no longer be objectionable, so long as such statements do not lead to real doubt as to the meaning of the claims. This would appear to apply even in the summary section of the description.

One important point to note regarding the EBA decision is that it does not impose on applicants a requirement to take a “lighter touch” approach to description amendments, merely that such an approach is now permissible. Thus, should an applicant still wish to amend a description thoroughly for formal compliance with the allowed claims, there should not be any basis for EPO examiners to now reject that approach.

The legal basis for description amendments

Question 2. If the first question is answered in the affirmative, which requirement(s) of the EPC necessitate(s) such an adaptation?

The EBA notes that the referring decision T 697/22 identifies two conflicting lines of EPO case law. A first line of case law considers that Art. 84 EPC (which states inter alia that “[The claims] shall be clear and concise and be supported by the description”) provides legal basis for requiring the description to be amended for consistency with the claims. A second, divergent, line of case law (notably exemplified by the decision in T 56/21) however sets out that Art. 84 EPC requires only that the subject-matter of a claim must be taken from the description of the application, but this does not constitute legal basis for requiring the description to be brought into line with an amended set of claims.

The EBA firmly rejects the second line of case law, and concludes that Art. 84 is not a “one-way street” as proposed by T 56/21: rather, the requirement of Art. 84 that “[The claims] shall be clear and concise and be supported by the description” and the requirement of G 1/24 that claims must always be interpreted in light of the description means that the requirements of Art. 84 do apply to the patent as a whole (including the description).

That said, the EBA notes that Art. 84 EPC does not require a purely formal concordance between the description and the wording of the claims, or impose a general obligation to remove from the description all matter not reflected in the claims. This influences the second part of the two-part test discussed in detail above.

However, applying the concept of “inconsistency” as defined in the first part of the two-part test discussed above, such inconsistency may affect compliance with Art. 84 EPC.Accordingly, the answer to the second referred question is that the legal basis for any necessary adaptation is the provision of the EPC (any of Arts. 52-57, 76(1), 83, 84 or 123) with which compliance is lacking by reason of the inconsistency in question.

This approach is general and applies to all EPO proceedings

Question 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?

Finally, the referring board noted that although the specific issue before it concerned amendments to a patent in post-grant opposition proceedings, the requirement to amend the description arises routinely during pre-grant examination proceedings. The referring board thus also asked the EBA to rule on whether description amendments are also required during pre-grant examination proceedings.

The answer of the EBA to this question is simply “no” – the board sees no reason to distinguish between proceedings in examination and proceedings in opposition with regard to description amendments. This is not a surprising conclusion.

The EBA further notes that although the present referral arises in the context of amendments to the claims, the same considerations may arise where the claims are not amended if there is an inconsistency between the claims and the description and that inconsistency leads to non-compliance with one or more requirements of the EPC (reasons 25).

When should an amended description be filed?

Finally, one closing remark that the EBA makes as obiter dictum regarding the timing of description amendments is also of interest. One of the facts underlying the referring decision in this case was that the Technical Board of Appeal held inadmissible the filing of a newly adapted description by the patentee during the appeal proceedings (for reasons that it was late-filed and should have been submitted earlier in the procedure). The EBA appears to disagree with this, noting that “in appeal proceedings, the description, including any drawings, is almost always finalised in the oral proceedings before the Board. Nothing in this decision calls for a change to this practice.” (reasons 46).

Whilst a non-binding conclusion, this is a pragmatic comment that will be welcomed by applicants in examination-appeal and patentees in opposition-appeal proceedings. It is sensible to await the outcome of appeal proceedings vis-à-vis the allowed claims before finalising the text of any description adapted thereto, rather than to impose a burden on applicants and patentees to submit adapted descriptions for every different claim Request earlier in the course of such proceedings.

Likewise, during examination proceedings, there should be no change to the current common practice of deferring description amendments until an EPO examiner has agreed that the claims are allowable.

Conclusions

In summary, therefore, the EBA decision concludes with the following Order in answer to the referred questions:

If the claims of a European patent, or patent application, are amended during proceedings before the departments of the EPO, or in appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description, including any drawings, of the patent, or application, and because of that inconsistency Articles 52 to 57, 76(1), 83, 84, 123(2) or 123(3) EPC are not complied with, it is necessary to adapt the description, including any drawings, to the amended claims so as to remove that inconsistency.

We will be following any future evolution of the case law on adaptation of the description – particularly in respect of how strictly examining and opposition divisions apply the new two-part test – with interest.