G1/25 – to amend or not to amend?

The Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) has handed down its decision in a case which has been eagerly anticipated by users of the EPO and their professional representatives.

Case G1/25 concerns the longstanding practice of the EPO to require patentees to adapt the description of a European Patent to conform with claims which have been amended during opposition proceedings. The EPO has been an outlier in this respect as a similar requirement to ensure that claims and the description conform is not commonly a feature of other major patent granting authorities.

Background

The referring case T0697/22 concerned the opposition division’s decision to maintain a patent on the basis of an auxiliary request where the claims had been amended compared to the granted patent during opposition proceedings. An amended description was filed during the opposition oral proceedings. On appeal, the patentee filed a new amended description, but this was rejected by the Board as it was considered to be late filed. The Board then went on to consider the first amended description but found this to be inconsistent with the amended claims, resulting in a lack of clarity under Article 84 EPC. The patentee was thus in a bind. The old, admissible description was not allowable and an attempt to remedy this was precluded by the Board of Appeal rules regarding late filing.

Details of the referral

The referring Board found two diverging lines of case law. The first line explores whether there is any legal basis in the EPC that requires the description to be consistent with amended claims. The second line argues that there is no legal basis for a patent application to be refused if the claims and description do not match. This second line explicitly rejects Article 84 EPC as suitable legal basis. Three questions were referred to the EBA:

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 adaption?

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 Decision

The EBA did not follow the second line of case law rather it applied the recent EBA decision G1/24. This decision ruled that when interpreting claims, the description and drawings must always be consulted, and not only when the claims appear to be ambiguous when read in isolation. A ‘holistic’ approach is to be taken with the claims being construed in the context of the application as a whole.

Following this reasoning, the EBA in G1/25 came to the conclusion that should an inconsistency be apparent between the description and the amended claims, adaptation of the description is only required if that inconsistency leads to non-compliance with Articles 52 to 57, 76(1), 83, 84, 123(2) or 123(3) EPC. If the inconsistency does not lead to non-compliance with provisions of the EPC, then no amendment is required. Importantly, the EBA found no absolute requirement in the EPC that the claims and the description must match.  

 The order of the EBA in G1/25 reads:

"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."

For referred question 1, the EBA answered “yes” but only in the event that the inconsistency causes non-compliance with the EPC.

For question 2, the EBA found no single legal provision which requires adaptation of the description.  The requirement for adaption of the description will be whichever of Articles 52 to 57, 76(1), 83, 84, 123(2) or 123(3) EPC are not met as a result of the inconsistency.

And for question 3, the EBA did not see any difference between the stages of proceedings before the EPO. So, although the referral was made in the context of opposition proceedings, the EBA ruled that their conclusions apply equally to amendments made during examination proceedings.

What does this mean in practice?

The EPO’s requirement to amend the description following claim amendment has not been consigned to the history books completely. Some users and practitioners will no doubt be disappointed that the EPO still remains an outlier among major patent offices. However, there is at least now some more clarity on this matter and the mandatory adaptation of the description in all cases should not be required.  Adaptation of the description into conformity with amended claims will only be required it the inconsistency leads to non-compliance with a specific provision of the EPC.

It will be interesting to see how the EPO apply G1/25 going forward, particularly in opposition proceedings where it may be anticipated that questions will arise regarding whether an inconsistency does or does not lead to non-compliance with the EPC.

As for T0697/22 – the Boards of Appeal must now consider the inconsistencies between the description and the claims and consider whether or not they lead to non-compliance with any provisions of the EPC.  If not, then there should be no need to amend the description.

Our attorneys here at Mathisen and Macara all have wide experience in proceedings before the EPO, including opposition and appeal proceedings, and would be delighted to discuss this topic with you.