It’s the one that patentees and patent practitioners alike have been waiting for! On 29 July 2025, a Board of Appeal at the European Patent Office (EPO) in their interlocutory decision T0697/22 has referred several questions to the Enlarged Board of Appeal at the EPO to seek clarity on when it is necessary to amend the description of a European patent or patent application in line with the claimed subject matter. The referral is G1/25. 

Background

For some time, the EPO has deemed there to be a requirement that the description and the claims should be aligned prior to grant of a European patent application. In more recent years however, this requirement has been much more strictly mandated by the EPO, particularly as this is now unequivocally set out in no uncertain terms in the Guidelines for Examination at the EPO which state:

Any inconsistency between the description and the claims must be avoided if it casts doubt on the subject-matter for which protection is sought, thereby rendering the claim either unclear or unsupported… 

… the claims must be supported by the description. This means that there must not be inconsistency between the claims and the description. Parts of the description that give the skilled person the impression that they disclose ways to carry out the invention but are not encompassed by the wording of the claims are inconsistent (or contradictory) with the claims.

These overarching Guidelines followed during patent examination at the EPO has meant that in the last few years patentees have been strongly pressed to amend their patent applications so that any such inconsistencies are removed, otherwise they face refusal of their applications. This has often involved either explicitly stating that certain subject matter disclosed in the description is not encompassed by the claims, deleting some subject matter from the description which may fall outside the scope of the claims, and amending the description so that any essential claimed features are indicated as such in the description. 

At the same time, however, there has been a growing body of decisions from the Boards of Appeal at the EPO that have found there to be actually no legal basis in the European Patent Convention (EPC) for the requirement to bring the description in line with the claims. This is together with decisions of other Boards that have agreed with the Guidelines for Examination and have found such legal basis to be present in the EPC. A referral to the Enlarged Board was thus considered by many in the industry to simply be a matter of time. That referral has now happened.  

T0697/22 – A decision on referral

The Board of Appeal in T0697/22 was considering an appeal against an interlocutory decision of an Opposition Division relating to European Patent No. 2124521, in which the Opposition Division maintained the patent in amended form. The invention described in the patent relates to a method for hydroponically growing a plant using a growing medium with particular characteristics. The Board of Appeal determined that the subject matter claimed in an Auxiliary Request was novel and inventive step relative to the prior art (the same conclusion reached by the Opposition Division). However, the opponent-appellant raised an objection under Article 84 EPC on the basis that the amended description provided with the Auxiliary Request is not consistent with the claims of the Auxiliary Request.

In the Board’s interlocutory decision, in assessing this Article 84 EPC objection, both lines of case law at the EPO regarding the requirement of amending the description in line with the claims was reviewed in detail, together with case law from other courts and the Trevaux Préparatoires of the EPC. 

After consideration, the Board considered that a referral to the Enlarged Board of Appeal was needed to decide on the outcome of the case and also to ensure uniform application of the law at the EPO and thus referred three questions to the Enlarged Board. Answers to the referred questions was deemed of even greater significance that ever in view of the Enlarged Board’s recent decision in G1/24, which states that:

“[t]he description and drawings shall always be consulted to interpret the claims when assessing the patentability of an invention under Articles 52 to 57 EPC, and not only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation”

The Referred Questions

The questions referred to the Enlarged Board of Appeal are as follows:

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?

Implications

Answers from the Enlarged Board of Appeal on these questions have long been desired in the industry and should provide patentees with greater certainty on what they can expect when prosecuting patent applications at the EPO and what associated costs might be expected. Whatever the Enlarged Board decide will also have an impact on third parties who are considering what scope of protection may be provided by any European patent or patent application. This referral is thus one which many will be waiting on with bated breath.