G 1/25: two decisions for the price of one?

G 1/25, the long-awaited decision on adaptation of the description, was issued today. Adaptation will continue to be required at the EPO, but only if a claim amendment introduces an inconsistency between the amended claims and the description such that the key requirements of the EPC are not fulfilled. It is hoped that this will lead the EPO to relax the current strict and monolithic approach to description adaptation. The Enlarged Board (EBA) also provides significant extra guidance on claim interpretation, already dealing with several of the questions in G 1/26. Here is the headnote:

If the claims of a European patent, or patent application, are amended during proceedings before the departments of the EPO, or in appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description, including any drawings, of the patent, or application, and because of that inconsistency Articles 52 to 57, 76(1), 83, 84, 123(2) or 123(3) EPC are not complied with, it is necessary to adapt the description, including any drawings, to the amended claims so as to remove that inconsistency.

Background

To recap, in the underlying case T 697/22, the OD maintained the patent based on AR1E and an adapted description 1E, but the description wasn’t properly adapted so some essential features of AR1E were still presented as optional in the adapted description 1E (reasons 10.2 – 10.5). The Board held that a correctly adapted description 1E* filed during OPs before the Board was inadmissible under Article 13(2) RPBA, see reason 9.4, meaning that the case turned on the question of whether an otherwise allowable patent should be revoked for the simple reason that some essential features were presented as optional in the description. The Board identified two main lines of EPO case law at reasons 14.3 and 15:

1. Cases requiring adaptation in this scenario (e.g. T 1024/18), based inter alia on Article 84 “claims… shall be… supported by the description”… has been interpreted as requiring the entirety of the description to be consistent with any claims”;
2. Cases not requiring adaptation such as T 56/21 – see our analysis here. The crux of the Board’s position in these cases is “if the claims are clear in themselves and supported by the description, their clarity is not affected if the description contains subject-matter which is not claimed”.

They then referred the following questions to the EBA, shown here together with the answers now provided:

1. If the claims of a European patent are amended during opposition proceedings or opposition-appeal proceedings, and the amendment introduces an inconsistency 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?

Answer: If the inconsistency is such as to cause a non-compliance with the EPC, Question 1 is to be answered “Yes”.

2. If the first question is answered in the affirmative, which requirement(s) of the EPC necessitate(s) such an adaptation?

The answer to Question 2 does not lie in a single provision of the EPC which, in all circumstances, mandates an adaptation of the description, including any drawings, whenever the claims are amended. Whether such an adaptation is required depends on whether, in the circumstances of the case, the inconsistency is such as to result in non-compliance with a requirement of the EPC. Question 2 is therefore to be answered to the effect that the legal basis for any necessary adaptation is the provision of the EPC with which compliance is lacking by reason of the inconsistency in question.

3. Would the answer to questions 1 and 2 be different if the claims of a European patent application are amended during examination proceedings or examination-appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description of the patent application?

Answer: No.

How did the EBA arrive at these answers?

G1/24 and preempting G 1/26

The decision starts with a long discussion on claim interpretation in G 1/24, which held that the description and drawings “shall always be consulted to interpret the claims”. It already answers many of the questions recently referred in G 1/26 on this topic. This later referral sought clarification on which of the following three different lines of case law are in line with G 1/24:

First approach: the description is “consulted” as required by G 1/24, only to define the technical field, common general knowledge and skilled person. “All claim interpretations, in particular broader ones, are then taken into account, except for interpretations that are illogical or make no technical sense”. See e.g. T 837/24.

Second approach: no broadening or limitation of claims based on the patent specification. While these decisions still “consult” the description as required by G 1/24, they then proceeded to ignore it when actually interpreting the claims, e.g. on the basis of the primacy of the claims. See e.g. T 2001/23.

Third approach: holistic approach permitting broadening and/or narrowing of the interpretation in view of the patent specification. See e.g. T 2048/22 discussed here.

At reasons 7 - 9, the EBA in G 1/25 endorses the third approach: “G 1/24 is not to be understood as establishing a sequential method under which the claim wording is first construed in isolation and the description and drawings are consulted only at a later stage if uncertainty remains”. Claim interpretation means “determining the meaning of the claim wording from the perspective of the skilled person based on the claims, the description and any drawings taken together”. This gives a much more prominent role to the description and drawings than many boards had been willing to permit, and moves the EPO closer to national courts and the UPC on this point.

The EBA is keen to emphasise though the limits on reliance on the description and drawings. As explained at reason 10, these parts “cannot be used to impose on the claim a limitation or expansion for which the claim wording provides no basis. In line with this approach, a person skilled in the art reading the claim in the context of the description and drawings will try to take a definition found in the description at face value. As long as the definition is technically reasonable and complies with the overall teaching of the claims, description and drawings, the skilled person will read terms in the claim in the sense of the definition, taking into account both the broadening and limiting aspects”. Reason 11 makes clear that this approach to claim interpretation applies not only for patentability, but is a general principle to be used when assessing all aspects of compliance with the EPC, including e.g. added matter (see even the explicit reference at reasons 40 – 42).

Thus, it seems that definitions which both narrow and broaden the terms in the claims are to be taken into account, as long as this is consistent with the specification as a whole and is technically reasonable. Furthermore, this interpretation is to be applied generally at the EPO, including for the assessment of added matter. This means that the main questions in G 1/26 are very likely to be answered as follows:

2.    (a) Does the fact that the claims are the starting point and the basis for assessing the patentability of an invention generally preclude a feature which is only disclosed in the description or the drawings of a patent from being read into the meaning of a granted claim, in particular if this leads to a restrictive reading of terms used in the claim?

“No”: definitions can be taken at face value if technically reasonable and in line with the overall teaching of the specification.

2.    (b) If the answer to question 2.(a) is no: is claim interpretation the result of both reading the claims and consulting the description and drawings as a unitary process and does the claim being the starting point and the basis for assessing the patentability rule out only those interpretations which can be derived from the patent as a whole but would clearly contradict the general technical understanding of the terms used in the claim?

“Yes” to the part of the question on whether a unitary process is required. And, “yes” interpretations are ruled out if they do not comply with the overall teaching from this unitary process, although it is left open whether this is the only situation in which reliance on the description and drawings is ruled out.

3.    (a) When assessing compliance with Article 123(2) EPC, must a term used in a claim be assessed against all interpretations that make technical sense to the skilled reader on the basis of the claim alone?

The answer is likely “no” in view of the unitary process above, and the fact that this is the general principle of claim interpretation applied by the boards of appeal, i.e. also for assessing added matter (Reason 11).

3.    (b) If the answer to question 3.(a) is no: is it sufficient that only the interpretations of the subject-matter of the claim established against the background of the patent specification as a whole are directly and unambiguously derivable from the application as filed?

Again, the answer is likely yes for the reasons above.

These seem to us to be reasonable answers to the questions in G 1/25, not least because they bring the EPO more clearly into line with the approaches of other European jurisdictions. We are also happy to see the EBA providing more clarification for EPO users on these points, without having to wait another year for the outcome of G 1/26.

Answers to the G 1/25 questions

Having provided these initial comments on claim interpretation, the EBA turns to the main issue at hand, i.e. the answer to the first referral question.

If the claims of a European patent are amended during opposition proceedings or opposition-appeal proceedings, and the amendment introduces an inconsistency 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?

The EBA seems to put forward a two-step test for determining whether adaptation is necessary. In the first step, it is determined whether there is an inconsistency, and in the second step it is determined whether the inconsistency leads to non-compliance with the EPC.

Step 1: is there an inconsistency?

Concerning the first step and the meaning of inconsistency, the EBA held that attempts should first be made to “determine the meaning of the claim wording from the perspective of the skilled person based on the claims, the description and any drawings taken together”. According to the EBA, in many cases this process will lead to the conclusion that there is in fact no inconsistency in view of the holistic assessment of claim interpretation so no adaptation is needed. An inconsistency only arises if “the person skilled in the art reading the claim in the light of the description and any drawings would be left in real doubt as to the meaning of the claim” (reason 19).

They are at pains at reason 22 to explain that an inconsistency does not arise merely because the description “contains a technical teaching, examples, or embodiments that do not fall within the claimed subject-matter”. An inconsistency would only arise if such disclosures make it unclear whether they fall within the claimed subject matter. The EBA even go out of their way at reason 22 to make clear that “The EPC does not require an adaptation of the description, including any drawings, merely for the sake of formal concordance”. This points towards a much more liberal approach to claim interpretation at the EPO than the current regime, and will be music to the ears of many EPO patent attorneys who have long complained that the present requirements are too strict.

Step 2: if there is an inconsistency, does it lead to non-compliance with the EPC?

The EBA then discusses some of the EPC requirements, and explains when inconsistencies may lead to non-compliance.

Non-compliance with Article 84 EPC

They start with Article 84 EPC, and criticize the cases not requiring adaptation such as T 56/21 in which the Board concluded that “if the claims are clear in themselves and supported by the description, their clarity is not affected if the description contains subject-matter which is not claimed”.  At reason 34 the EBA seem to partly agree with this approach, accepting that Article 84 does not require “a purely formal concordance between the description” or “impose a general obligation to remove from the description, including any drawings, all matter not reflected in the claims”.

But the problem the EBA has with this approach is that “these cases consider that the requirements of Article 84 EPC are assessed without reference to the description, including any drawings”, contrary to G 1/24. Critically, the board is of the view that “If it is unclear whether information, examples, subject-matter or embodiments are or are not within the scope of the claim, then it cannot be said that the claim is supported by the description, including any drawings” (reason 35).

Returning to our favoured architectural metaphor, T 56/21 was essentially saying that Article 84 EPC does not provide a justification for the EPO to request the removal of the columns which are no longer needed to support the entablature in a Greek temple. The EBA is essentially saying that indeed there is generally no need to remove the columns, apart from in the situation where the presence of the columns themselves makes it unclear where the entablature ends. It is true that we would not want to walk below the entablature where it is unclear how far it extends, and therefore how much support it has or requires.

That said, many EPO users may be somewhat surprised when reading this part of the decision. After all, normally when assessing clarity of the claims at the EPO, it is not permitted to rely on elements that are only defined in the description and not the claims. If, as the EBA suggests, when assessing clarity the description should be taken into account, this practice could change significantly, and help applicants stuck in the added matter – clarity trap.

Non-compliance with Articles 52 – 57 EPC

Moving on to these substantive requirements, the EBA at reason 38 gives the following example:

If, for example, a claim has successfully been amended to meet the requirement of non-obviousness in Article 56 EPC, but a statement in the description, including any drawings, expresses a technical teaching reflecting the claim before this amendment, and this statement thus conflicts with the fulfilment of the requirement of non-obviousness, this inconsistency in the description, including in the drawings, has to be removed.

At first sight, this may appear to not be entirely consistent with reason 22, which explains that an inconsistency does not necessarily arise if the description “contains a technical teaching, examples, or embodiments that do not fall within the claimed subject-matter”. It seems for the EBA there are different types of technical teachings not falling within the claimed subject matter, which may or may not need to be adapted. It might be, for example that the EBA views statements that were clearly part of the invention prior to amendment as requiring adaptation, while other statements relating embodiments or disclosures which were never claimed can be left unadapted.

Timing of adaptation

One particularly shocking aspect of the referral decision was that the Board held that a correctly adapted description 1E* filed during OPs before the Board was inadmissible under Article 13(2) RPBA. It seems that the EBA is keen to avoid revocations on this point in future, highlighting at reasons 46 and 47 that for reasons of efficiency “in appeal proceedings, the description, including any drawings, is almost always finalised in the oral proceedings before the Board. Nothing in this decision calls for a change to this practice”. It will be interesting to see whether the referring board will try to reverse this aspect of their decision should they require the adaptation in adapted description 1E*. 

This passage is also striking in that it isn't really true that descriptions are normally finalized in oral proceedings before the Board. In our experience, the Boards normally remit to the OD for this purpose. It will be interesting to see if the Boards change their practice on this point going forward.

Conclusion

This is certainly a decision with far-reaching consequences, which will likely require the EPO to change its practice on claim interpretation, adaptation of the description, and assessment of clarity.

In rejecting a requirement for amendment in each and every case, the EBA have probably found the golden middle way between being overly formalistic and being no longer respectful of the requirements of the EPC. We also welcome the clarification on claim interpretation: claims may be either broader or narrower than the “naked” terms when read in the light of the description. This is how it should be. Finally, the more liberal approach to admissibility of adapted descriptions in appeal proceedings is to be applauded: otherwise, patentees might need to file adapted descriptions for each request on file, leading to much unnecessary work and expense.

Image: Shoe Zone - buy one get one free by Graham Horn, CC BY-SA 2.0 <https://creativecommons.org/licenses/by-sa/2.0>, via Wikimedia Commons