The Enlarged Board of Appeal of the European Patent Office (EPO) has issued its decision in G 1/25 (“Hydroponics”), concerning when the description of a European patent or patent application must be adapted following an amendment to the claims.
The Enlarged Board concluded that an inconsistency between the claims and the description requires adaptation of the description where, because of that inconsistency, a requirement of the European Patent Convention (EPC) is not complied with.
Background to G 1/25
The referral arose from appeal proceedings in T 697/22, following an amendment to claim 1 which the referring Technical Board considered had introduced an inconsistency between the definition of a binder in the claim and statements in paragraphs [0013] and [0016] of the description (here).
The referring Board identified two lines of case law. One considered that the EPC provided a legal basis requiring the description to be consistent with amended claims. The other considered that an inconsistency between amended claims and the description did not, in itself, provide a basis for refusing a patent, including under Article 84 EPC.
When is adaptation required?
The Enlarged Board held that the need to adapt the description or drawings does not arise simply because an inconsistency exists.
Instead, adaptation is required where, and to the extent that, the inconsistency results in non-compliance with Articles 52 to 57, 76(1), 83, 84, 123(2) or 123(3) EPC.
An inconsistency which has no such legal effect does not need to be removed or neutralised. The EPC does not require purely formal concordance between the claims and the description.
The Enlarged Board also confirmed that the description and drawings must always be consulted when interpreting the claims. Claim interpretation involves reading the claims, description and drawings together to determine the meaning that the skilled person would give to the claim wording in the context of the application or patent as a whole.
The description and drawings may affect the meaning attributed to the claim wording, but cannot be used to impose a limitation or expansion for which the claim wording provides no basis.
What constitutes an inconsistency?
For the purposes of the referral, the Enlarged Board considered that an inconsistency exists where one or more statements in the description, including any drawings, suggest an understanding of a claim that is incompatible with its apparent meaning, and that incompatibility cannot readily be resolved through the principles of claim interpretation.
Such an inconsistency may affect compliance with Article 84 EPC where, for example, it leaves it unclear whether information, examples, subject-matter or embodiments fall within the scope of the claim.
The Enlarged Board further stated that the approach is not limited to situations where the claims have been amended. It reflects general principles governing the determination of the meaning of claims under the EPC and applies in examination, opposition and the corresponding appeal proceedings.
The Enlarged Board's conclusion
The order of the Enlarged Board provides that where an amendment to the claims introduces an inconsistency with the description or drawings, and that inconsistency results in non-compliance with one of the specified EPC requirements, the description and drawings must be adapted to the amended claims so as to remove the inconsistency.
The decision therefore clarifies that adaptation of the description is required where an inconsistency has a legal effect under the EPC, rather than simply because the claims and description are not formally identical in scope.
Further information
