New Referral G1/25 – EPO’s Enlarged Board of Appeal to consider whether the EPC requires the description be brought into conformity with the claims

“The description and any drawings are always referred to when interpreting the claims, and not just in the case of unclarity or ambiguity” – this is the headline conclusion of the Enlarged Board of Appeal (EBA) in its decision G1/24, issued earlier this year (see here and here for our insights on this decision). G1/24 cements the importance of the description when interpreting the claims, and could be seen as paving the way for the EPO doubling-down on their requirement to bring the description into alignment with the claims before grant. If the description is always to be referred to when interpreting the claims based on the principles of G1/24, it would seem to be of the utmost importance that the description is consistent with the claims and does not serve to cast doubt on the interpretation.

In practice, amending the description to resolve any inconsistencies with the claims requires deletion of any conflicting statements of invention and/or clearly marking any subject matter which falls outside the scope of the claims.  However, this practice is mired in controversy amongst European practitioners, because it is a point of contention whether there is even any legal basis in the EPC that mandates amendments to the description. European practitioners will be alert to the fact there is an inherent risk of inadvertently adding subject matter when adapting the description (thus violating Article 123(2) EPC and potentially invalidating a granted patent), and moreover that seemingly innocent amendments may substantively affect the interpretation of the claims. Any distortion of the originally intended meaning of the claim language can have significant consequences for any subsequent litigation proceedings.

Hot on the heels of G1/24, European practitioners will soon have a decision from the EBA on whether amendments to the description are required under the EPC. The Board of Appeal in decision T 697/22 ‘Hydroponics’ has referred the following questions to the Enlarged Board of Appeal:

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 (9), the Board refused to admit amendments to the description filed by the patent proprietor during the oral proceedings under Article 13 RPBA. The Proprietor was thus left in a tight spot - an auxiliary claim set on file was (otherwise) deemed to comply with the requirements of the EPC by the Board, but the proprietor was relying on a description which according to the opponent contained inconsistencies which cast doubt on the scope of protection, and thus violated Article 84 EPC. 

As whether the description was consistent with the notionally acceptable auxiliary claim set was critical to whether the patent would be maintained or revoked, the Board examined the relevant EPO case law concerning amendments to the description and found two diverging lines of jurisprudence – a first line where “there is a legal basis that requires the description to be consistent with the amended claims” (14.2) (albeit the EBA noted that the relevant case law has no consensus on where that legal basis actually is – see 14.3) and a second  line where “there is no legal basis for the refusal of a patent application if there is an inconsistency between any amended claims and the description caused by the claim amendment” (15.1). This clear divergence in the case law, in the view of the Board of Appeal, necessitated a referral to the Enlarged Board of Appeal.

Unsurprisingly, the influence of G1/24 and the requirement that the description is ‘always’ to be consulted when interpreting the claims, can be found in the Board of Appeal’s referring decision (see 21.4). The Board’s focus on the interplay between interpretation of the claims and the description is also evident from its discussion of a recent UPC decision (16), AGFA NV v Gucci Sweden AB et al., which (similarly to G1/24) noted that the description should always be considered when interpreting the claims.

Following G1/24, the question of whether inconsistencies between the description and claims should be excised from a patent specification is of increased importance. Removing any inconsistencies notionally makes interpretation of the claims, with reference to the description, more straightforward. However, there is a question over whether this approach distorts the originally intended meaning of the claims, and in certain circumstances such a distortion could be seen to add matter. It is the burden of the applicant to correctly define the invention in their claims, and it is reasonable to assume that a person skilled in the art using their common general knowledge and based on the original disclosure, would be able to themselves determine subject matter which falls outside the scope of the claims. However, the EPO’s strict requirements for adaption of the description, at least for now, remain in force. It will be interesting to see how the Enlarged Board reconcile the headline comments of G1/24 with the diverging views in the case law on this issue.