G1/25 - EPO Guidance on adaptation of the description

Earlier this year, the EPO's Enlarged Board of Appeal issued its decision G1/25, relating to the requirement for the description of a patent or application to be adapted to the final claim scope. Attentive readers will recall that the Enlarged Board concluded that the description must be amended when an inconsistency between the description and the claims results in non-compliance with the EPC. However, the decision did not give any concrete indicators of how such non-compliance might arise. My post reporting that decision concluded that the decision “leaves nobody happy”, and that “everyone gets to claim a partial victory, and everyone still has work to do”.

The EPO have now issued guidance as to how the decision will be implemented in practice, and I suspect people will still be unhappy. The core of the guidance combines G1/25 with the principle established by the earlier decision G1/24 that the description must always be consulted to interpret the claims. But how do the EPO see this playing out?

The headline message is encouraging: formal concordance between the claims and description is not required, and the mere presence of embodiments outside the claim scope does not automatically create a problem. Further, if additional features are implied by the description which are not recited in the claims, the EPO acknowledge that the skilled person would not necessarily read those features into the claims. That is, if the description includes statements that the invention includes features X, Y, and Z, while the claims recite only X and Y, there is no violation of the EPC, and the description need not be amended. This represents a welcome retreat from the strictest forms of description adaptation seen in recent years. So far, so good.

However, the guidance also suggests that the skilled person is (to be frank) easily confused. Where the claims require X, Y, and Z, but the description includes a statement that Z is optional, this apparently results in a violation of Article 84 EPC (clarity), and the description must be amended to remove the inconsistency: “Reading the claim in the light of the description in accordance with the holistic approach, the skilled person would be left in doubt as to whether feature [Z] is required by the claim. The inconsistency cannot therefore be readily resolved by applying the principles of claim interpretation. Since it is unclear whether the statements in the description define embodiments falling within the scope of the claim, and the claim is consequently not supported by the description, the inconsistency is relevant under Article 84 EPC and must be removed.”

We are therefore left with the remains of the previous strict approach to amendment: "Features required by an independent claim may therefore not be described in the description as optional using wording such as "preferably", "may" or "optionally"." This is also potentially relevant to Article 56 EPC (inventive step), if a feature required for inventive step is described as optional.

It is difficult to see how both approaches can be reconciled - if the skilled person would accept that a mention of features X, Y, and Z does not imply that Z is required by the claims, why are they bamboozled by a suggestion that Z is optional despite clear claim wording stating the opposite? The requirement of G1/24 to always consult the description when interpreting the claims does not mandate that the claim wording should be completely ignored. The EPO's position appears to be that the inconsistency creates uncertainty as to whether the embodiments described fall within the claim. That is not the same question as whether the scope of the claim is actually unclear.

G 1/25 was widely understood as a move away from complete textual conformity between claims and description. The EPO's new notice certainly abandons the idea that every mismatch must be removed. Yet the worked examples suggest that examiners will continue to object where the description presents a claimed feature as optional, even where many practitioners would struggle to see any genuine uncertainty about the scope of the claim. The result may be that applicants spend less time deleting embodiments, but still spend considerable time debating whether a given inconsistency creates a "real" EPC problem.

Plus ça change, plus c'est la même chose.

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Features required by an independent claim may therefore not be described in the description as optional using wording such as "preferably", "may" or "optionally".

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G1/25 - EPO Guidance on adaptation of the description

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