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

I believe that the third point summarised in Reasons 83 of T 56/21 is, in fact, fully consistent with G 1/24. The inconsistency arises in connection with the fourth point: if the description is always used to interpret the claims, then an "unusual" definition in the description must take precedence over any purported "standard" definition of the term in question. In essence, the claims of a patent should be interpreted based upon the patent as a whole. This may offend the sensibilities of those who believe that the claims should first be interpreted on their own before any thought is given to the context (including potentially "unusual" definitions) provided by the description. However, interpreting documents as a whole is PRECISELY the approach that downstream courts have applied for over a century, including in the context of patent law - hence why Article 69 EPC and its Protocol mandate that approach. In view of Reasons 16 of G 1/24, this also appears to be the approach that the EBA has indicated should be adopted for the interpretation of claims in proceedings before the EPO. However, just because the 4th point made in Reasons 83 of T 56/21 is inconsistent with G 1/24, this does not invalidate any of the other reasons for interpreting Article 84 EPC as NOT requiring adaptation of the description. Nor does the inconsistency provide any reason for reaching a different interpretation of Article 84 EPC. It simply means that, in the situation described in that 4th point, the CLARITY of the claims can be improved by incorporating the description definition into the claims. In that situation, amendment of the description is not an option. As confirmed by T 439/22, and following the claim interpretation approach mandated by G 1/24, amendment of the description (to change the relevant definition) would add subject matter. It would also beg the question of precisely how the description should be adapted: to the subject matter of the claims as PREVIOUSLY interpreted (ie in the light of the UNamended description) or instead to the subject matter to which the EPO believes the claims SHOULD (but do not yet) relate? Also, whilst the EBA may be correct that T 56/21 is not fully aligned with G 1/24, the same criticism could be levelled at many examples of “pro-adaptation” case law. These include cases within the EBA’s “First Line of Case Law”, such as: - T 0447/22 (Reasons 13.1 of which states “it is important to differentiate between a claim consisting of terms with a clear technical meaning and an unclear claim wording” and “The description cannot be used to give a different meaning to a claim feature which in itself imparts a clear, credible technical teaching to the skilled reader”); and - T 0169/20 (Catchword 1 of which states that “The provisions in Article 84 EPC and Rules 42 and 43 EPC provide an adequate legal basis for claim interpretation when assessing patentability”). The EBA’s criticism of T 56/21 is therefore not only arguably irrelevant but also so highly selective as to suggest that the author of the Preliminary Opinion has not approached the referred questions with an open mind. That suggestion is further supported by the rephrasing of Q1: - based upon the ASSUMPTION that the answer to original Q1 is “yes” (ie that there is actually such a thing as “an inconsistency that causes non-compliance with the EPC”); and - to create a leading question to which there is only one possible answer (ie the preconceived answer underlying the above-mentioned assumption). That suggestion is yet further supported by the unjustifiable assumption in the Preliminary Opinion that a problem with the “Second Line of Case Law” necessarily means that the “First Line of Case Law” should be followed (this assumption is implicit from the statement which immediately follows the criticism of T 56/21 and which begins with “The Enlarged Board is THUS currently of the view that ...”). It is perfectly possible – and, in my view, highly likely - that conclusions reached in BOTH lines of case law are not correct. The only way of determining which interpretation of the law is correct would be to interpret the EPC according to methods permitted under the Vienna Convention. The EBA should therefore apply itself solely to that task, instead of effectively picking a side in a divergence of views between different TBAs.

The comparison with a temple roof supported by many columns is actually very apt. The French wording of Article 84 ("Les revendications [...] doivent [...] se fonder sur la description.") supports this "architectural" perspective: A building foundation can be much larger than the building that is to be constructed on it. Perhaps another building will be constructed on the foundation later (the later building could be a divisional). Anyway, current EPO practice fails to recognize the purpose of the description and, by extension, the very reason why patent systems were established in the first place: Disclosure of inventions. An invention in the broadest sense of Article 52. Against this background, amending the description—at least where the deletion of subject-matter is required and that SM constitutes an invention but is not claimed—is questionable. A deletion might be required under Article 53, even though Article 53 refers to non-patentable inventions and not to non-inventions. Article 83 is not limited to patentable inventions. Amendments to the description should not violate Article 83, which means that current EPO practice should be reconsidered, at least in part. It remains to be seen whether the EBA will confirm the current practice or set certain limits after all.

Thanks for the update ! The link to the preliminary opinion is incorrect.