The Decision in G 1/25: A More Relaxed Approach to Description Amendments in Europe?

We now have the Decision from the EPO’s Enlarged Board of Appeal in G 1/25, which concerns the controversial topic of description amendments in Europe. This practice, essentially unique to the EPO, has been the focus of much discussion following the earlier decision of the Enlarged Board in G 1/24, which concluded that the description and drawings shall “always” be consulted to interpret the claims. The background of the referral in G 1/25 is set out in more detail in our earlier article here.

In the decision, the Enlarged Board in G 1/25 has adopted a middle ground between almost always amending the description (the EPO’s preferred approach) and a recent line of case law (exemplified by T 56/21) that such amendments are unnecessary because they lack explicit legal basis in the EPC. 

On one hand, the Enlarged Board has found that “The EPC does not require an adaptation of the description, including any drawings, merely for the sake of formal concordance”, thereby indicating that amendments to the description are not always required. As to when adaptation of the description is required, the Enlarged Board found that although there was no specific legal provision in the EPC that necessarily required description amendments, it was nevertheless the case that:

“43.        It follows that the necessity to adapt the description or any drawings is not a consequence of the existence of an inconsistency as such, but arises only where, and to the extent that, the inconsistency has legal significance because it leads to noncompliance with a requirement of the EPC.”

Of course, the obvious question which follows is what constitutes an inconsistency? This point was directly addressed by the Enlarged Board which noted that:

“18.        An inconsistency between the claims and the description, and any drawings, exists 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.” 

This passage from the Enlarged Board is in line with the “holistic” approach adopted by the Boards of Appeal in view of G 1/24, which treats claim interpretation as a unitary process involving reading the claims, description, and drawings together. In other words, amending the description is only necessary if it contains statements which change the meaning or understanding of the claims such that they conflict with their usual interpretation by the person skilled in the art, and which cannot be resolved by applying the approach to claim interpretation established in G 1/24.  Amending the description is required only if, and to the extent that, the inconsistency results in non-compliance with an EPC requirement.

In what is likely a relief for European patent practitioners, the Enlarged Board further clarified that: 

“20.        An inconsistency is not established merely because the description, including any drawings, contains a technical teaching, examples, or embodiments that do not fall within the claimed subject-matter.”

Previously, EPO practice has generally required applicants to amend the description to either delete examples or embodiments falling outside the scope of the claims, or to mark them as “reference examples” or “not according to the invention”. The comments of the Enlarged Board above appear to suggest that this practice is no longer required merely because certain examples or embodiments clearly fall outside the scope of the claims.

Although the questions discussed in G 1/25 related to description amendments that have arisen as a result of amendments to the claims, the Enlarged Board also noted that their conclusions reflect underlying principles which could be applied more generally (e.g., if the claims of a patent were found to be allowable prior to any amendments, but the description still introduced an inconsistency).

Conclusions

The decision in G 1/25 therefore firmly confirms that description amendments will continue to be required in Europe, whilst also giving European practitioners tools to push back against over-zealous changes to patent specifications. Following G 1/24, it is not surprising that the Enlarged Board has taken this middle ground, which emphasizes the importance of reading the European patent or application as a whole, and interpreting the claims in a way that takes this into account. 

We look forward to seeing how G 1/25 is applied by the Boards of Appeal, although given that description amendments are not typically an area in which applicants are willing to go to Appeal on, it may take some time to see any general trends.