Decision G1/25 – Adaptation of the description of a patent or a patent application

Early September, the Enlarged Board of Appeal of the European Patent Office gave a decision G1/25, relating to the adaptation of the description of a patent or a patent application when the claims have been amended.

The decision follows partly from an earlier decision G1/24, according to which the claims are the starting point and the basis for assessing the patentability. The description and drawings are however to always be used for interpreting them, and not only when the person skilled in the art considers the claim to be unclear.

Questions asked

The following questions were asked.

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 appeal at the root of the decision

We wrote about the appeal T697/22 in this article. In summary, the patentee had filed during appeal proceedings an amended set of claims, but there was a discrepancy between the claims and the description, as one feature was mandatory in the independent claim but optional in the description.

If such inconsistency between the amended claims and the description is against article 84 of the EPC, the conclusion is that the amended set of claims and the description are not allowable. However, if article 84 does not require adaption, these documents are allowable. Previous decisions of Boards of Appeal on this issue are divided into two groups, of which the larger concludes that the description must be amended to correspond to the amended claims. The referral was however possible, due to the inconsistent case law.

Earlier decision G1/24

This new decision refers strongly to the earlier decision G1/24 (you can read about it here), as was expected. The Enlarged Board of Appeal agrees with the referring Board that decision G1/24 is not to be understood as requiring that the claims would first be interpreted on their own, and the description and drawings used later only if the claims were not clear.

According to decision G1/24 the skilled person would take the definition given in the description and drawings as is, if the definition is technically sensible and fits the whole of the claims.

Third question asked

The Enlarged Board of Appeal starts their answer from the third question, which asked whether the situation would be different if it was question of amendments during grant proceedings and not during opposition proceedings. The decision states that the role of the description and drawings according to the provisions of the EPC does not change with the stage of the proceedings. Thus, the answer to the third question is no, i.e. the situation is the same also in grant proceedings.

What does ”inconsistency” mean

The Enlarged Board of Appeal found that in order to answer the questions asked, they first need to define what the term ”inconsistency” means in the questions asked.

In summary: the Enlarged Board of Appeal defined that ”inconsistency between the claims and the description” refers to a situation in which a skilled person cannot conclude, based on the claims, description and drawings what is the actual meaning of the claim, and which examples and/or embodiments fall within the scope of the claims. The description can however contain information that is not in the claims, and this as such is not an inconsistency in the meaning of this decision.

The inconsistency is to be removed by amending either the claims, the description or the drawings, or all of these.

The decision also deals with the relationship between such inconsistency and the following articles of the EPC: 84 (clarity and support of the claims), 52-57 (patentability), 83 (sufficiency of disclosure), 76(1) (content of a divisional application) as well as 123(2) and (3) (amendments). According to the decision, it is unlikely or at least very rare that articles 83, 76 or 123 would be relevant, but due to the scope of the questions asked, these are also considered in the decision.

The Enlarged Board of Appeal considers article 84 to be the most important one. The decision states that article 84 does not require that the description and drawings should not contain anything that is not in the claims, or that the wordings used in the description, drawings and claims should be exactly identical. However, if it is unclear whether something disclosed in the description or drawings is within the scope of the claims, it cannot be concluded that the description supports the claims, as article 84 requires.

The decision also gives an example concerning articles 52-57: if the claim has successfully been amended in such a way that the claim is inventive (article 56), but the description still gives the technical effect of the original claim, which is no longer valid for the amended claim that is considered to be inventive, such inconsistency must be removed.

What if there is an inconsistency between the claims and the description already when the application is filed?

In an atypical way, the Enlarged Board of Appeal considered also issues that had not been specifically asked, and states that the reasoning given in this decision is not relevant only for amendments in an application or patent, but rather that the same reasons are relevant when the application as filed has an inconsistency as described above. The decision does also mention that the questions asked only relate to amendments made during prosecution, but it can be concluded from the comments made that at least the examining divisions are expected to handle inconsistencies present from filing also in this manner in the future.

It is however important to note that if the patent has been granted as filed, articles 84 and 123 cannot be invoked in the opposition proceedings when the patent as granted is discussed. This is due to article 84 not being a ground of opposition according to the EPC. Article 123 is not relevant since no amendments have been made, i.e. the patent is identical to the application as filed. Article 84 is also not a ground for revocation in revocation proceedings in a court, and article 123 is not relevant if the patent is in force in the form of the application as filed.

Similarly articles 123(2) (amendments must be supported by the application as filed) and article 123(3) (scope of protection cannot be extended after grant) are naturally also not relevant in grant proceedings, when the original application is discussed.

When does the description need to be amended?

The Enlarged Board of Appeal gave an answer to another question that was not specifically asked, i.e. at which stage of the proceedings should the description be amended. This is presumably due to the fact that some boards of appeal are very strict and do not accept in appeal proceedings anything that has not been in the proceedings before appeal. In case the applicant or patentee is faced with such a strict board, an adapted description would thus have to have been filed every time an amended set of claims was filed, and the applicant or patentee could only hope that no objections are raised against the description. This is both laborious and difficult to predict, and in a worst case leads to the patent being revoked for lack of an allowable description, even when the claims would have been allowable.

According to the decision G1/25, it is typical and most efficient, that the description is adapted at the appeal oral proceedings, when the allowable set of claims is known. The Enlarged Board of Appeal does not see any need to change this practice. We can thus only hope that also all the boards of appeal will apply this practice in the future.

This process guidance, given as a side note, is part of the main teaching of G1/25. However, from a theoretical perspective, there seems to be a small internal tension in the decision. Firstly, the decision says that the interpretation of the claims and drawings is a single process in which the description and drawings are to be used for interpretation of the claims. The description is to be amended, if there is such an inconsistency between the claims and the description that the scope of protection of the claims is unclear. Despite this, the claims can however first be considered to be inventive (based on an interpretation that is in contradiction with the description), and thereafter this inconsistency is removed by amending the description. This process thus inevitably requires interpreting the claims when assessing the patentability, not based on a whole description, but only based on the non-contradictory part of the description.

Answers to the question asked

The Enlarged Board of Appeal answered the questions asked as follows.

1. Answer to question 1 is yes, if the inconsistency is such that a requirement of the EPC is not fulfilled.

2. Answer to question 2 depends on the situation, and not only of one article of the EPC that would be relevant in all cases. The need to adapt the description is thus in each case based in the article of the EPC, the requirements of which are not fulfilled by the application or patent, due to the inconsistency (summary by the authors).

3. Answer to question 3 is no, i.e. the situation is the same also during grant proceedings.

A headnote of the decision is:

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.

How does the decision affect proceedings at the European Patent Office?

The decision should at least make it clear that in some cases the description must be adapted to correspond to the claims, even though the decision leaves room for interpretation about when is the inconsistency so significant that adaption is necessary.

We can also hope that all the examiners of the EPO will know in the future that it is not necessary to remove from the description all information that is not in the claims, as long as this does not cause any inconsistency. Similarly, the boards of appeal hopefully in the future accept filing of an adapted description once a set of claims is deemed allowable. The process will also be clearer and faster, if/when the description is adapted during the oral proceedings, and the case is not remitted to first instance.

G1/25

G1/24