Originally posted on IPKat.
Legal basis for adaptation of the description, says the Enlarged Board of Appeal (EBA), can thus be found in the relevant EPC provision. The EBA defines our new word of the moment, “inconsistency”, by reference to G 1/24.
The old divergence over legal basis of adaptation of the description is thus replaced by a new one over whether an incompatibility can be “readily” resolved or leaves the skilled person in “real doubt” (further choice phrases from the EBA). Critically, the requirement to amend the description must now be justified with reference to a relevant provision of the EPC such as novelty, inventive step, added matter etc. A patentee wishing to avoid make large-scale deletions of passages in the description may therefore be said to be better placed today than yesterday as amendment for amendment’s sake is not considered justified. However, the price for this is that every deletion from the description now needs a reasoned justification on file. These reasons may bear on claim scope after grant. We may have to make fewer amendments, but these may be far more damaging post-grant.
In this our view, the EBA has therefore changed the description requirement for the worse. The EBA has effectively changed it from something that could be dismissed as an annoying EPO formalities quirk to a substantive requirement for patentability that may consequently have far more impact on post-grant proceedings.
Legal background: A requirement in search of a legal basis
Article 84 EPC states
“The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description.”
Until now, the EPO has read into the second sentence of Art. 84 an obligation for the description to be brought into conformity with amended claims, either by deleting subject matter that is no longer claimed or by stating explicitly that it does not fall within the invention. However, the Boards of Appeal have been split as to the legal basis for this obligation. In one line of case law, the requirement of support was held to oblige the description to be consistent with the claims throughout, so that embodiments falling outside the claims must be deleted or clearly flagged. The opposing line of case law, running through T 1989/18, T 2194/19, T 1444/20 and, most fully, T 56/21, held that Article 84 EPC is a one-way street, i.e. it imposes requirements on the claims, not on the description, and that Rule 42(1)(c) EPC does not supply the missing basis.
T 56/21 came to the brink of a referral on this issue but then back-pedalled on the basis that the lack of legal basis was “unequivocal” and no referral was needed (Evolve Insights). The referral eventually arrived anyway, from a case about hydroponics (Evolve Insights), and the amicus briefs made it plain how seriously the profession takes this issue (Evolve Insights).
Case background
The referral came from T 697/22, an opposition appeal on EP 2124521, a patent for a hydroponics growing medium held by Knauf Insulation as Patentee and opposed by ROCKWOOL A/S as Opponent. The invention is a growing medium of mineral fibres held together by an organic binder. The Opposition Division had maintained the patent on the basis of the claims of auxiliary request 1E together with an amended description, both filed at the oral proceedings. Both parties appealed.
The Referring Board of Appeal found that the claims of the auxiliary request satisfied the EPC. Claim 1 of that request defined the binder with considerable specificity, requiring it to be based on reaction products obtained by curing an aqueous solution comprising citric acid, ammonia and dextrose, a definition imported from a dependent claim of the patent as granted and one that narrowed claim 1 substantially. At the oral proceedings, and for the first time, the Patentee filed a further amended description from which paragraphs [0013] and [0016], containing broader contradictory definitions of the binder, had been deleted. That description was not admitted, on the basis that it was late filed. The Referring Board of Appeal was thus left holding an allowable set of claims alongside a description that still contained two paragraphs defining the binder in terms that the amended claim no longer matched. The Board of Appeal identified an inconsistency between the amended claim and the offending paragraphs [0013] and [0016], and asked the EBA whether the EPC required that inconsistency to be removed, on what legal basis, and whether the answer differed in examination.
An inconsistency is whatever “consulting” the description according to G 1/24 cannot fix
The Enlarged Board of Appeal began by observing that neither the Referral Decision nor the EPC defines “inconsistency” (r. 17). It then supplied a definition:
“An inconsistency between the claims and the description, and any drawings, exists where one or more statements in the description, including the drawings, suggest an understanding of a claim which is incompatible with the apparent meaning of the claim, and that incompatibility cannot readily be resolved by applying the principles set out in G 1/24.” (r. 18, emphasis added)
The EBA then went on to explain that most apparent incompatibilities can be resolved without difficulty by applying the principles set out in G 1/24. What remains is an inconsistency:
“If the person skilled in the art reading the claim in the light of the description and any drawings would be left in real doubt as to the meaning of the claim, however, there is an inconsistency.” (r. 19, emphasis added)
So the test for whether a passage is inconsistent with a claim is now whether the incompatibility can be resolved by applying G 1/24, and, if it cannot, whether the skilled person is left in “real doubt” as to the meaning of the claim. Crucially, “readily” is not defined anywhere in the decision. Nor is “real doubt”. As a friend has noted, why “real doubt” and not “serious doubt”, a term already well used in the case law? For us, the EBA has thus now built on the uncertainty of G 1/24 with yet more uncertainty. Boards of Appeal are now left with the question of how to determine whether inconsistencies are “readily resolved” and whether a skilled person would be in real, as opposed to presumably imaginary, doubt as to the meaning of the claim.
One point this raises, which has so far been ignored, is the question of the criteria by which real doubt is established for the skilled person, and particularly whether this takes account of what the skilled person may understand about the quirks of patent drafting. If a skilled person knows that patents include definitions that don’t read on to the claim, can they be said to be in real doubt with respect to the meaning of the claim in the face of such definitions? If the skilled person knows that the claims define the invention, can the description produce any real doubt at all?
Leaving this aside, the bar has certainly been raised for when description amendments are mandated. For anyone who has ever been asked to delete a perfectly good example:
“An inconsistency is not established merely because the description, including any drawings, contains a technical teaching, examples, or embodiments that do not fall within the claimed subject-matter.” (r. 20, emphasis added)
Then, for applicants that wish to argue against description amendments per se, the EBA provides the helpful sentence:
“The EPC does not require an adaptation of the description, including any drawings, merely for the sake of formal concordance.” (r. 22)
Neither line of case law survives intact
The Enlarged Board of Appeal declined to adopt either camp of case law wholesale. The second line of case law, it held, rests on premises that “can no longer be maintained after G 1/24” (r. 28), because those decisions treat Article 84 EPC as assessable without reference to the description at all. On the one-way street argument, the EBA was clear:
“The Enlarged Board is of the view that a natural reading of Article 84 EPC, in particular the sentence, “They [the claims] shall be clear and concise and be supported by the description” cannot be said to impose a unilateral directionality that renders the description, including any drawings, irrelevant when inconsistencies compromise the understanding of the claims.” (r. 32)
The first line of case law fared no better. Article 84 EPC, the Enlarged Board of Appeal held, “does not require a purely formal concordance between the description, including any drawings, and the wording of the claims, nor does it impose a general obligation to remove from the description, including any drawings, all matter not reflected in the claims” (r. 34). What it does require, it stated, is that if it is unclear whether information, examples, subject matter or embodiments are or are not within the scope of the claim, the claim cannot be said to be supported by the description.
As such, the EBA concluded:
“It follows that the necessity to adapt the description or any drawings is not a consequence of the existence of an inconsistency as such, but arises only where, and to the extent that, the inconsistency has legal significance because it leads to non-compliance with a requirement of the EPC.” (r. 43)
Question 2 was accordingly answered to the effect that the legal basis for any necessary adaptation is the provision of the EPC with which compliance is lacking by reason of the inconsistency in question. Question 3 was answered “No”: the interpretative role of the description does not depend on the procedural stage, so examination and opposition are treated alike (r. 13 to 15). The Order lists Articles 52 to 57, 76(1), 83, 84, 123(2) or 123(3) EPC as the provisions that might be engaged, whilst the reasons note that the possibility of Articles 83, 76(1) and 123 EPC being engaged is “more theoretical than practical” (r. 40) and that such issues will “rarely, if ever, arise in the future” (r. 41). It is interesting to see the inclusion of Article 123 EPC added matter as one of the provisions unlikely to be engaged.
What this means in practice
The question is thus no longer whether the EPC contains a general description adaptation requirement. The question is whether a particular passage in the description, left as it stands, causes non-compliance with a particular provision. An applicant resisting amendment can now ask the Examining or Opposition Division which provision is not complied with respect to the wording of the description, since r. 43 makes that provision the legal basis and there is no longer a free-standing tidiness requirement to fall back on. As such, it seems that generic requests to bring the description into conformity may now be pushed back on. It will also be possible to argue about the extent to which “real doubt” is introduced.
On the downside, however, all this may lead to more reasoned objections and arguments on file with respect to why passages of the description are deleted, potentially influencing claim interpretation in post-grant proceedings. There is also the concern that deleting passages from the description might be taken as an acceptance that the offending paragraphs altered claim scope for the purpose of assessment under novelty and inventive step.
Interestingly, the EBA gives a worked example (r. 38) in which a description passage expressing the technical teaching of the pre-amendment claim conflicts with the inventive step case built on the amended claim. Where a claim has been narrowed precisely in order to establish non-obviousness, the statements of advantage and technical effect in the description now need attention as a matter of Article 56 EPC, not merely as housekeeping. That is a more demanding review than the deletion exercise it replaces, and it cannot be delegated to a formalities check. The EBA has therefore made the work for applicants even harder, it seems, and the description adaptation requirement even more onerous.
Analysis
G 1/25 is built entirely on G 1/24. The definition of inconsistency in G 1/25 is expressed as a residue, being what is left after the principles of G 1/24 have been applied. On G 1/24, the EBA confirms the holistic approach to claim interpretation, endorsing T 439/22, and finding that the description and drawings may affect the meaning the skilled person attributes to the claim wording but cannot impose a limitation or expansion for which the claim wording per se provides no basis (r. 10), with relevance to the pending referral in G 1/26. Notably, however, the core issue in G 1/26, being the consequences for added matter of a lack of alignment between the description and the claims, is left unaddressed.
From G 1/25, therefore, the description adaptation requirement no longer floats free of the EPC and must now be pinned to an identified provision. An applicant or patentee resisting a request for wholesale deletion of passages now has EBA-level reasoning to argue against it. However, the consequence is that deletions made to the description may be given greater weight in post-grant interpretation of claim scope, in Europe and beyond. The number of amendments to the description may be fewer, but their potential adverse impact may be considerably more. Practically, this means more work for attorneys, greater costs for clients, and, in our view, no substantive gain in legal certainty.
Author: Rose Hughes
Rose is a biotech and pharmaceutical patent specialist with over a decade of experience in intellectual property. Rose is a patent attorney at Evolve, where she leverages our unique fractional in-house model to provide clients with deep patent law expertise combined with the strategic commercial oversight typically associated with senior in-house counsel.
With a PhD in Immunology from UCL, Rose applies her technical background to complex innovations in biologics, cell and gene therapies, and the rapidly emerging field of AI-assisted drug development. Previously, Rose held the role of Director. Patents at AstraZeneca, where she was responsible for global IP portfolios and IP strategy at every stage of the pharmaceutical pipeline, from platform development and on-market commercialization to SPCs and patent term extensions.
A recognized thought leader in the field, Rose has been a regular contributor to IPKat since 2018, offering practical insights into European patent law developments. She is also a frequent speaker on the epi podcast, a guest lecturer for the Brunel University IP law Postgrad Certificate, and a contributing author to published books A User’s Guide to Intellectual Property in Life Sciences (2021) and Developments and Directions in Intellectual Property Law (2023).
