Description adaptation after G 1/25: when is amendment required?

To date, the European Patent Office has been unusual compared to most of its foreign counterparts in that it requires applicants and patent proprietors to adapt the description of an application or patent in line with amendments to the claims made during examination or opposition proceedings.  Last week, the Enlarged Board of Appeal issued its decision in case G 1/25, which questioned whether this practice was necessary and in accordance with the EPC.

Background

In the referring decision, T 697/22, Board 3.3.02 asked the Enlarged Board to consider the following questions:

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?

In the referring decision, the referring Board identified two approaches in the case law.  The first line of case law held that there is a requirement in the EPC that the description be adapted to conform with the amended claims.  The second line of case law held that Article 84 EPC requires that the claims are clear in themselves, and therefore that amendment of the description is not necessary. 

The relevance of G 1/24

The present case is the latest decision from the Enlarged Board following the recent decision G 1/24, which examined claim interpretation.  In decision G 1/24, the Enlarged Board confirmed that the description and drawings must always be consulted when interpreting the claims for assessing patentability under Articles 52-57 EPC. 

The Enlarged Board endorsed the understanding of G 1/24 given by Board 3.2.01 in T 439/22, in which the claims, description and drawings are read as a unitary process (“the holistic approach”), noting that where a definition given in the description is technically reasonable and complies with the overall teaching of the claims, description and drawings, the skilled person will normally read the claim term in the sense of that definition.  However, the Enlarged Board also emphasised that the description cannot impart a limitation or broadening of claim scope for which the claim wording provides no basis.

G 1/25: the test

The Enlarged Board rejected both lines of case law identified by the referring Board and instead adopted an intermediate position.  The Enlarged Board found that, where an amendment to the claims introduces an inconsistency between the amended claims and the description, and that inconsistency leads to non-compliance with one or more requirements of the EPC, the description (including any drawings) must be adapted to remove the inconsistency.

There are, therefore, two points to consider.

First, what constitutes an “inconsistency”? 

A simple discrepancy between the claim scope and the teaching of the description is not considered an “inconsistency” if it can be resolved by applying the “holistic approach” to claim interpretation set out in G 1/24.  So if an embodiment is clearly not within the scope of the claim, the presence of that embodiment in the description does not introduce an “inconsistency”.  If, however, the skilled person is left in real doubt as to the meaning of the claim, an inconsistency exists.

Secondly, does the inconsistency introduce non-compliance with the EPC?

The Enlarged Board identified Articles 52-57, 76(1), 83, 84, 123(2) and 123(3) EPC as requirements which may, depending on the circumstances, necessitate adaptation.

The Enlarged Board examines when such non-compliance with the EPC might arise.  Non-compliance with Article 84 EPC might arise if there was ambiguity over whether certain information or embodiments in the description are in the scope of the claim.  Non-compliance with Article 56 EPC might arise where a claim has been narrowed to establish inventive step, but the description continues to contain technical teaching reflecting the claim before amendment which conflicts with the basis on which the amended claim was found non-obvious. 

Although not specifically illustrated in the decision, the same principle could be relevant to exclusions and exceptions to patentability under Articles 52 and 53 EPC. For example, if the holistic interpretation of a claim in light of the description causes it to encompass excluded or excepted subject-matter, adaptation may be required to restore compliance with the relevant EPC provision.

The timing of amendment

There are two points regarding the timing of description adaptation.

In answer to the third question of the referring decision, the Enlarged Board states that the requirements for adapting the description are the same for each stage of proceedings at the EPO and therefore apply equally to examination and opposition proceedings (and their respective appeal proceedings).

The Enlarged Board also provided obiter comments noting that it is usual to adapt the description at the end of oral proceedings before the Board of Appeal, and that there is no reason to change this practice.  This was in response to the referring Board refusing to admit an adapted description during appeal proceedings.  Keeping description adaptation to the end of proceedings is a sensible approach, as the alternative would be the costly requirement to prepare amended descriptions for every auxiliary request filed during examination or opposition and the subsequent appeal proceedings.

Relevance to G 1/26

The next case in this developing line of Enlarged Board case law on claim interpretation is the pending referral G 1/26.  G 1/25 may in part answer the second question of the latest referral, which asks:

1. Does the fact that the claims are the starting point and the basis for assessing the patentability of an invention generally preclude a feature which is only disclosed in the description or the drawings of a patent from being read into the meaning of a granted claim, in particular if this leads to a restrictive reading of terms used in the claim?

2. If the answer to question 2.(a) is no: is claim interpretation the result of both reading the claims and consulting the description and drawings as a unitary process and does the claim being the starting point and the basis for assessing the patentability rule out only those interpretations which can be derived from the patent as a whole but would clearly contradict the general technical understanding of the terms used in the claim?

Following G 1/25, it is likely that the answer to question 2(a) will be ‘no’, as the Enlarged Board has stated that definitions in the description which are technically reasonable and comply with the overall teaching of the claims, description and drawings will be taken into account when interpreting the claim.  The answer to at least the first part of question 2(b) is likely to be ‘yes’, as the Enlarged Board has endorsed the holistic approach, which looks at the claims, description and drawing in a unitary process.

The specific questions concerning Article 123(2) EPC remain formally unresolved pending G 1/26, although G 1/25 appears to point strongly towards applying the same holistic approach in that context.

Practical implications

G 1/25 does not abolish the requirement to adapt the description, but it rejects a general requirement to do so merely to achieve formal concordance with the amended claims.

The Enlarged Board states that adaptation of the description is not required merely for the sake of formal concordance.  However, applicants and proprietors are still required to amend the description where an amendment to the claims introduces an inconsistency between the description and the claims, and where that inconsistency causes non-compliance with the EPC.

The Enlarged Board also makes clear that the underlying principles of claim interpretation are not contingent on the existence of an amendment and apply more generally.

In practice, how much actually changes will depend on how the decision is implemented in the Guidelines and by Examining and Opposition Divisions.  It is likely that in the short-term examiners will continue to take a broadly business-as-usual approach.

However, there is now room to argue for a lighter-touch amendment when the information in the description is clearly outside the scope of the claims, meaning there is more room for applicants and proprietors to push back against amendments that they do not wish to make.  This could be particularly relevant if an applicant or proprietor wanted to avoid re-labelling examples as “reference” examples, where it is obvious to the skilled person that they do not fall within the claim scope.

Summary

It remains to be seen how quickly Examining and Opposition Divisions adjust their practice. In the short term, the EPO may continue to take a relatively strict approach, but G 1/25 now gives applicants and proprietors a basis for resisting amendments directed merely to formal concordance.

For more detailed advice in relation to any of the issues discussed above, or for advice relating to other matters regarding European practice, please do not hesitate to get in contact with your E+F representative or email us at elkfife@elkfife.com.  More information about the authors can be found at the links below: