No (real) Doubt at the EPO? No adaptation needed

The early indications are that G 1/25 is being interpreted by the Boards of Appeal as significantly reducing the situations in which adaptation of the description is required following claim amendments. This is good news for applicants and patentees, as it will likely reduce costs and streamline EPO proceedings.

T 384/25 provides a useful illustration of the new, more lenient approach to description adaptation after G1/25. Patentee deleted its medical-use claims and narrowed its independent product claim. Yet the entire description remained unchanged—including passages presenting the deleted medical uses and broader passages directed to the product of “the invention.”

The patent concerned whey protein micelles against muscle atrophy and sarcopenia. The granted independent product claim required a meal replacement containing at least 15% whey protein micelles by total dry weight whilst the maintained independent claim required at least 20% and further specified ranges for proteins, lipids, carbohydrates, and fibers. These were substantive restrictions absent from the granted independent product claim. 

One opponent requested amendments to specific description paragraphs because they still referred to medical uses that were no longer claimed. Those passages expressly identified the therapeutic use as part of “the present invention.” The Board nevertheless found no inconsistency requiring correction. Applying G1/25, it concluded that the technical teachings and embodiments concerning medical uses did not, by themselves, create an inconsistency and that:

“The claims of auxiliary request 5 leave no doubt, let alone a real doubt, as to what the claims mean and what falls within the claimed subject-matter.” (Reasons 3.9)

But the unchanged description also retained broader passages of the product itself.

Paragraph [0014] states that “the invention relates to a meal replacement” containing the specified protein combination and at least 15% micelles. It does not require liquid form or the nutrient ranges now mandatory in the independent claim. Paragraph [0039] still presents 20% micelles as merely preferred. Products outside the narrowed claim therefore remained described as part of the invention. 

While the Board didn’t expressly discuss this point, the order maintains all description paragraphs as granted. The broader product language survived alongside the narrowed independent claim, without being removed or relabeled as “not according to the invention.” 

We think the outcome makes practical sense. A passage describing a product more generally does not necessarily make the boundaries of a narrower claim uncertain. Here, the claim expressly supplied the additional restrictions. The description’s broader language may not suffice to establish that there was any real doubt about what was claimed.

Although the EPO Boards of Appeal seem to be taking G 1/25 to heart on adaptation, it seems that the EPO first instance departments are largely continuing their previous practice of insisting on adaptation for now. It is hoped that the EPO takes note of the more liberal approach adopted by the Boards of Appeal, and issues new (at least internal) Guidelines updating their practice.

Image: No Doubt headling at the EPO? Catherine Dugas, CC BY 2.0, via Wikimedia Commons