G 1/25: Enlarged Board issues decision on description adaptation

The Enlarged Board of Appeal has issued its decision in G 1/25 (“Hydroponics”), concerning when the description of a European patent or patent application must be adapted following amendment of the claims.

As discussed in our previous updates, the referral arose from divergent EPO case law on whether an inconsistency between amended claims and the description must be removed, and which provision of the European Patent Convention (EPC) provides the legal basis for doing so.

In answer to the referred questions, the Board concluded that the existence of an inconsistency does not, by itself, require adaptation of the description. Adaptation is necessary where, because of the inconsistency, the patent or application fails to comply with the EPC requirements concerning patentable subject matter and exclusions from patentability, novelty, inventive step, industrial applicability, added subject matter in divisional applications, sufficiency of disclosure, clarity and support, added subject matter in amendments, or extension of the scope of protection after grant. The legal basis is therefore the particular EPC requirement with which compliance is lacking, rather than a single provision imposing a general requirement in every case.

For these purposes, an inconsistency exists where the description or drawings suggest an understanding of a claim that is incompatible with its apparent meaning, and that incompatibility cannot readily be resolved through claim interpretation. The mere presence of technical teaching, examples or embodiments that do not fall within the claimed subject matter does not necessarily amount to an inconsistency.

The Board applied the approach to claim interpretation set out in G 1/24 (which we reported on previously). The claims, description and drawings are to be read together as part of a holistic interpretative process. However, the description and drawings cannot impose a limitation or expansion for which the wording of the claim provides no basis.

The decision therefore does not require the description to be amended merely to achieve formal correspondence with the claims. Equally, it rejects the approach that compliance with Article 84 EPC must be assessed without regard to the description and drawings. The same principles apply in examination and opposition proceedings, as well as in the corresponding appeal proceedings.

In practice, the decision requires attention to the legal effect of any apparent inconsistency, rather than amendment simply because material in the description is not reflected in the claims. Whether adaptation is necessary will depend on whether the inconsistency causes non-compliance with the EPC in the circumstances of the case.

We will be watching with interest to see how this approach is applied in subsequent decisions at the EPO. In the meantime, if you would like to discuss the potential implications of G 1/25 for your European patent strategy, please contact us at gje@gje.com.