Adaptation of the description - G1/25 leaves nobody happy

The Enlarged Board of Appeal has now issued its decision in G 1/25, the referral on adaptation of the description that has kept European patent attorneys on tenterhooks for some time.

In my previous post on the referral, I suggested that the proposed answer to the questions was frankly unenlightening. There are really only two kinds of inconsistencies between the claims and the description: those that create a problem under the EPC, and those that do not. 

The Enlarged Board has now reached much the same conclusion.

Its answer is that adaptation of the description is required where an inconsistency introduced by claim amendment results in non-compliance with a substantive provision of the EPC. If the inconsistency does not create such a problem, there is no general requirement to amend the description merely for the sake of achieving perfect alignment.

That means the Board has rejected both of the allegedly clear positions emerging from previous case law.

On the one hand, the Board has not completely removed the need for description amendments that some had hoped for. These will remain necessary in at least some circumstances. On the other hand, the Board has stopped short of endorsing the increasingly strict approach that appeared to require every potential inconsistency to be removed, regardless of whether it actually mattered.

The Board has effectively said that description adaptation is not an end in itself. The relevant question is whether the inconsistency gives rise to a substantive breach of the EPC. If it does, remove the inconsistency. If it does not, the EPC does not require amendment simply for the sake of formal concordance.

It seems likely that attorneys will now spend time (and spend applicants' money) discussing with examiners whether a specific inconsistency gives rise to an actual breach of the EPC, or whether the skilled person would read the claims and description in context to understand the claim wording. This at least seems more useful than mechanically replacing references to “the invention” with “the disclosure”, or inserting statements that subject matter is “disclosed, but not claimed”. 

It will be interesting to see how quickly a consistent new EPO practice develops, and whether this does indeed open new avenues for oppositions. Either way, as is often the case with Enlarged Board referrals, everyone gets to claim a partial victory, and everyone still has work to do.