The Enlarged Board of Appeal of the European Patent Office (EPO) recently issued its decision in G 1/25 (“Hydroponics”) relating to the circumstances in which claim amendments necessitate adaptation of the description. In their decision, the Enlarged Board concluded that adaptation of the description is necessitated only when an inconsistency between the claims and the description results in non-compliance with the requirements of the European Patent Convention (EPC).
Our analysis of the Enlarged Board's decision in G 1/25 can be found here.
A recent decision in appeal case no. T 0657/24 provides an early sign of how G 1/25 will be interpreted and suggests the EPO may now be relaxing their previously onerous requirements pertaining to description amendments, particularly with respect to parts of the description that teach of embodiments falling outside the scope of the claims.
The current Guidelines for Examination, which were drafted prior to issuance of G 1/25, expressly state that “features required by the independent claims may not be described in the description as being optional using wording such as "preferably", "may" or "optionally". The description must be amended to remove such terms if they make a mandatory feature of an independent claim appear as being optional” (F‑IV, 4.3(iii)). Up to now, this requirement has been strictly enforced during proceedings at the EPO, often resulting in the need to extensively adapt the description to amended claims.
However, in view of G 1/25, the Board of Appeal in T 0657/24 has indicated that inclusion of “optional” language pertaining to features required by the independent claims does not necessarily result in an inconsistency requiring amendment of the description within the meaning of G 1/25.
The case in question relates to an opposition appeal case in which the patent - which relates to manufacturing of a wind turbine blade shell - was finally maintained in amended form on the basis of independent claims reciting the same limitation as the claims deemed allowable during opposition proceedings. In particular, the independent claims were amended to specify dimensions of a fibre-reinforced sheet material placed in a mould, namely “…wherein the length of the fibre-reinforced sheet material is 20 - 50 times its width or more, and the width of the fibre-reinforced sheet material is 20 to 100 times the thickness or more”
The description of the patent as granted and the application as filed presented this feature as being optional - teaching that the features were “typically” part of the invention. Under EPO practice preceding G1/25, this expression would have to be removed to supposedly prevent giving the skilled reader the impression embodiments lacking this feature are encompassed by the claims. Indeed, during opposition proceedings, the opposition division held that the description must be amended so that that the term “typically” and a passage relating to smaller aspects than those claimed was deleted.
During the subsequent appeal proceedings, which concluded after issuance of G 1/25, the Board of Appeal held that claims comprising the same limitation were deemed allowable. However, the Board of Appeal did not demand the same description amendments as the opposition division, deciding that the specification of the patent as initially granted was allowable in view of there being “no inconsistency resulting in non-compliance with the EPC within the meaning of G 1/25”. Accordingly, the relevant passages could be maintained in the allowed specification.
The Board of Appeal’s decision in T 0657/24 signifies that G 1/25 has initiated a notable change of direction with regard to the EPO’s description adaptation requirements, demonstrating that owners of European patent rights are no longer obligated to adapt the description merely for the purpose of removing subject matter falling outside the scope of the claims. The degree to which adaptation of the description is required is likely to remain dependent on the circumstances of the given case. However, at the very least, T 0657/24 shows the EPO is pivoting away from their previously onerous demands for complete formal concordance between the description and the claims, and instead moving towards a more pragmatic approach that ought to ease the administrative burden placed on applicants and patentees during procedure at the EPO.
