The recently published case from the EPO Enlarged Board of Appeal (EBA), G1/25, addressed the issue of to what extent the EPC requires a patent description to be amended for consistency with the claims. However, has anything, in practice, changed?
Historically the EPO has typically required applicants and patent proprietors to amend the description in line with the claims prior to allowance or at the end of opposition proceedings. The legal basis for such description amendments was put into question and two opposing lines of case law emerged.
The first line of case law supported there being a legal basis under Article 84 of the EPC requiring the description to be consistent with the claims. The second line asserted that the EPC provides no legal basis for such amendments, in particular because Article 84 EPC requires only that the claims are clear and imposes no requirement on the description (the so-called "one-way street" argument (T 56/21)).
The Technical Board of Appeal in case T 697/22 referred the following three questions to the EBA to ask for clarification on whether the EPC requires conformity of the description with the claims:
- 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?
The EBA started by answering the third question, stating that it made no difference whether an amendment was made during examination or opposition proceedings (Reasons 14).
To answer to the first question, the EBA considered its previous decision on claim interpretation in G 1/24. In G 1/24 (discussed here, the EBA concluded that the description and drawings should always be considered when interpreting the claims, even when the claims are clear and unambiguous. The EBA endorsed this approach in G 1/25, however, emphasised that the description "cannot be used to impose on the claim a limitation or expansion for which the claim wording provides no basis" (Reasons 10).
In G 1/25, the EBA held that the description must be adapted where an "inconsistency" arises between the claims and description, causing non-compliance with another requirement of the EPC. The EBA set out a two-part test to determine whether amendment to the description is necessary.
Firstly, is there an inconsistency between the claims and the description?
The EBA defined that an "inconsistency" between the claims and description (and any drawings) occurs "where one or more statements in the description, including the drawings, suggest an understanding of a claim which is incompatible with the apparent meaning of the claim, and that incompatibility cannot readily be resolved by applying the principles set out in G 1/24." (Reason 18). An inconsistency only arises if the skilled person is left in "real doubt" as to the meaning of the claim (Reason 19). G 1/25 explicitly states that the mere presence in the description of a technical teaching relating to embodiments that do not fall within the scope of the allowed claims do not introduce an "inconsistency". On the other hand, if it is not clear whether an embodiment falls within the claim scope, then an "inconsistency" exists (Reason 20).
Secondly, does that inconsistency lead to non-compliance with one or more requirements of the EPC?
The EBA considers that any "inconsistency" that leads to non-compliance with the patentability requirements under Articles 52-57 EPC, the sufficiency requirement under Article 83 EPC, the clarity requirement under Article 84 EPC, or the added matter and broadening provisions under Articles 76(1), 123(2) and 123(3) EPC, requires an amendment to remove the inconsistency (Reason 21).
The three referred questions were answered as follows:
- If the inconsistency is such as to cause a non-compliance with the EPC, Question 1 is to be answered "Yes".
- The legal basis for any necessary adaptation is the provision of the EPC with which compliance is lacking by reason of the inconsistency in question.
- No.
What does the decision mean in practice?
The EBA has confirmed that the EPC does not require an adaptation of the description merely for the sake of formal concordance. However, it is yet to be seen how the EPO Examining and Opposition Divisions will apply this decision. We have seen anecdotal evidence that, in practice, not much will change. Nevertheless, the decision provides the applicant or proprietor with ammunition to resist the removal of passages of the description merely for the sake of formal concordance. This maintains the possibility for lighter-touch amendments to the description, even when examples and technical teachings are outside the scope of the claims.
We remain at your disposal for further advice regarding how this decision may affect your European cases.