EPO likely to continue to require adaptation of description: preliminary opinion in G 1/25

The preliminary opinion of the Enlarged Board in G 1/25 can be found here. At present, the Enlarged Board seem set to uphold the EPO practice of requiring adaptation of the description, both in prosecution and opposition proceedings. Not much reasoning is provided at this stage, beyond a general reference to G 1/24.

In brief, the Enlarged Board focus on the most detailed decision not requiring adaptation - T 56/21 – and identify the main issue as whether the interpretation of Article 84 EPC in that decision is correct. Article 84 EPC reads “The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description”, and this earlier decision holds that “support” in Article 84 should be given its ordinary meaning, such that unclaimed subject matter in the description does not lead to a lack of clarity (see reason 53 of T 56/21). As previously discussed, in architectural terms this Board held that it isn’t reasonable for the EPO to request the removal of the columns which are no longer needed to support the entablature in the structure above.

The Enlarged Board don’t seem to deal head on with this main argument. Instead they state that the criticisms of standard EPO practice at reasons 75 – 83 of T 56/21 are inconsistent with G 1/24. These criticisms were summarized at reason 83 as:

1)      Article 69 EPC and its Protocol address the extent of protection in the context of national proceedings after the grant of a European patent. The proceedings before the EPO are separate and independent of Article 69 EPC.

2)      The claims, rather than the description, are the primary determinant of the extent of protection. Legal certainty for third parties regarding the extent of protection of a patent is best served by claims which are clear and concise such that they allow the "forbidden area" to be demarcated without needing to resort to the description.

3)      Adapting the description to match the more limited subject-matter claimed does not improve legal certainty regarding the extent of protection, may have unwarranted consequences in post-grant proceedings and may encroach on the competence of national courts and legislators.

4)      If the description defines a term more broadly than its technical meaning in the claim, such a discrepancy in terminology should be addressed under Rule 49(2) EPC by amending the description to match the clear but narrower meaning of the term in the claim.

Unfortunately, there is no explanation of why the Enlarged Board considers these points to be more important than T 56/21’s “ordinary meaning” point. After all, this is the part of T 56/21 which is actually anchored in the clear wording of the EPC, so surely should carry most weight. As noted in some of the Amicus Briefs, further support for this position comes from the travaux préparatoires which suggest that the legislator did not intend to require amendment of the description when claim amendments are made. Deletion of “fully” from an earlier version of Article 84 EPC requiring “that the claims must be clear and concise and that they must be fully supported by the description” suggests that full correspondence between the claims and the description was not intended.

There is also no explanation of why they consider G 1/24 to be inconsistent with the findings above, and this isn’t entirely clear to me. For a start, as is evident from the planned referral on this topic from T 873/24, there is currently a dispute at the Boards as to whether G 1/24 applies outside of assessing the patentability of an invention under Articles 52 to 57 EPC. Meanwhile, for 1), G 1/24 actually accepts at reason 7 that Article 69 is “arguably only concerned with infringement actions before national courts and the UPC”. 2) seems largely in line with the G 1/24 headnote “The claims are the starting point and the basis for assessing the patentability of an invention”. Perhaps 3) provides the clearest potential inconsistency: G 1/24 requires that the “description and any drawings are always referred to when interpreting the claims”, so failure to adapt the description might be seen as reducing legal certainty. 4) meanwhile seems rather to speak for adaptation and was a point T 56/21 didn’t clearly conclude on, so it seems unlikely to have been critical to the Enlarged Board’s reasoning.

Another issue discussed was the exact wording of question 1, which the Enlarged Board rephrased as follows:

If the claims of a European patent are amended during opposition proceedings or opposition-appeal proceedings, and the amendment introduces an inconsistency that causes a non-compliance with the EPC 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 that causes a non-compliance with the EPC?

In doing so, they acknowledged that some inconsistencies do not introduce non-compliance with the EPC, without identifying what these are. It is not impossible that they have in mind the unclaimed subject matter in the description discussed in T 56/21 which gives rise to the lion’s share of description adaptation, but then  it would be quite strange that they don’t specify this. In any case, it is hoped that the decision clearly identifies which inconsistencies do not introduce non-compliance with the EPC, to at least reduce the burden of adaptation.

The Oral Proceedings scheduled in May 2026 will give patentee an opportunity to try to reverse this preliminary opinion. But in most cases these are upheld, so it is likely that the EPO will maintain its practice of requiring adaptation of the description.