New questions referred to the Enlarged Board of Appeal at the European Patent Office on adaptation of the description – G 1/25

New questions have been referred to the Enlarged Board of Appeal by the Technical Board in T 697/22. The Referring Board has identified divergent lines of case law as to whether it is necessary to adapt the description to amended claims filed during opposition or opposition-appeal proceedings, if the amended claims introduce an inconsistency with the description.

The questions are referred under G 1/25 (“Hydroponics”), and 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?

For more information about the referral, please see the EPO’s announcement. For further background, see our article reporting on the planned referral.

We will be following the progress of this referral, so stay tuned for further updates. To find out more, feel free to email us at gje@gje.com.