G 1/25: what it means for European patent agents and for patent litigators?

As readers will be aware, last Thursday, the European Patent Office ("EPO")'s Enlarged Board of Appeal ("EBA") published a new decision (G 1/25) in the saga of referrals seeking guidance on the respective role of the claims and the description in the interpretation of claims. Although, in the case at hand, the crux of the discussion was whether, when claims are limited, the adaptation of the description is required and, if so, in which circumstances, the EBA took advantage of the opportunity to elaborate on further concepts that already surfaced in G 1/24 and, in addition, to anticipate the answers to some of the questions raised in case G 1/26. As Adam Lacy and Thorsten Bausch put it, in the catchy title of the entry that they published in this blog the day when G 1/25 was published, it is fair to say that, in reality, the EBA offered two decisions for the price of one.

For the background of the case and the details of the main conclusions reached in G 1/25, I will refer readers to that very comprehensive blog entry. The aim of this brief contribution is to offer a few reflections on what G 1/25, which certainly has the potential to cause very far-reaching consequences, may mean for European patent agents and, more broadly, for patent litigators.

The first interesting aspect of G 1/25 is that it further elaborated on the answers provided in G 1/24, clarifying that claim interpretation is not to be made following a "sequential" method  (i.e., interpreting the claims first and moving to the description only if uncertainty remains) but, rather, following a "holistic" approach, whereby claim interpretation is the result of reading the claims, the description and the drawings together as a unitary process. So far, so good. This is a conclusion better aligned with the mandate of article 69 of the European Patent Convention ("EPC") and its Protocol of Interpretation. Clearly, if the patent is to be construed by a mind willing to understand, not a mind desirous of misunderstanding (for example, T 190/99), it is hard to see how that objective could be sensibly achieved without having recourse to the "holistic" interpretation now further endorsed by G 1/25. In addition, for patent lawyers, who are used to interpreting the words used in legal provisions always in context, "holistic" interpretation is just the natural battlefield of the interpretative endeavour. It is worth adding that G 1/25 also clarified that, although G 1/24 was concerned with claim interpretation when assessing patentability under articles 52 to 57 EPC, its reasoning identified general principles of claim interpretation applied by the Technical Boards of Appeals ("TBAs").

G 1/25 then moved on to question 3. For the readers' benefit, let us recall the text of the three questions referred:

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?

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

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?

The EBA decided to deal with question 3 first, which it answered with a clear "No" after briefly explaining that the role of the description and any drawings in assessing the requirements of the EPC cannot be dependent on the procedural stage of the proceedings.

Moving on to question 1, the EBA felt it necessary to start by clarifying what is meant by an "inconsistency" in the Referral Decision. To this author, it is not entirely clear whether the users of the European patent system really needed the EBA to clarify what "inconsistency" means. A dictionary would probably do. This seems to be confirmed by the intended clarification offered by the EBA, which understood "inconsistent" to mean "incompatible", that is, one of the typical meanings of "inconsistent" offered by dictionaries. It would be fair to say, though, that "incompatibility" is perhaps the most intense form of an "inconsistency". In any event, in par. 19 the EBA added a more useful clarification: "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 [i.e., a doubt that cannot be dispelled by the "holistic" interpretation endorsed by G 1/25], there is an inconsistency." In par. 20, it added that "[…] If, on the other hand, due to such an incompatibility, it is unclear whether a technical teaching, examples, or embodiments do, or do not fall within the claimed subject matter, an inconsistency exists." However, one may argue that if such doubt exists, there may be a lack of clarity issue, but not necessarily an "inconsistency" or "incompatibility" issue. Interpreting "inconsistent" to mean "unclear" to create a new stumbling block in the way of maintaining a patent in the context of opposition or appeal proceedings does not appear to be aligned with a system where lack of clarity is not a ground for opposition.

In any event, G 1/25 concluded that:

"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."

All in all, this answer will put additional strain on European patent agents who, when confronted with whether or not there is a "real doubt" that, according to G 1/25, may require the amendment of the description, will have to assess very cautiously with experts and patent litigators the potential implications of such amendments on claim construction in future enforcement proceedings. These amendments, far from being a formality, will clearly require making difficult strategic decisions that will demand very careful consideration.