After years of debate and conflicting decisions from the Boards of Appeal, we finally have a referral to the Enlarged Board of Appeal (EBA) on the description amendments! To be honest, after the first false alarm, we were half-expecting them to bottle it again. However, it is now official. In the first referral of 2025, the question of whether applicants and patentees must amend the description to conform to the allowed claims has now been referred to the EBA (G1/25).
Adaptation of the description: What is all the fuss about?
The description amendment saga began with the introduction of substantially stricter guidance in the 2021 EPO Guidelines for Examination on how much the description should be adapted in line with the allowed claims. The Guidelines currently require that, when adapting the description, the applicant must either delete subject matter not covered by the claims or explicitly state in the description that such subject matter is not part of the invention. However, the Guidelines are at odds with a number of Board of Appeal decisions finding no legal basis for the mandatory adaptation of the description, most notably T 1989/18 (IPKat).
The issue of description amendments causes controversy for a number of reasons. First, amendments made to the description of the patent application may influence interpretation of the claims under the doctrine of equivalents in national court proceedings. Additionally, the claims of the granted patent may be interpreted at opposition in view of the description of the patent as granted and not the description of the application as filed (see T471/20). As such, amendments to the description may irretrievably add matter and invalidate the patent. These risks, and the less than clear legal basis for the requirement, have led to considerable dissatisfaction with the EPO’s uncompromising approach to description amendments. On top of all this, description amendments take up considerable patent office and attorney time, and thereby increase costs for applicants. Given that no other patent office in the world considers it necessary for patent quality or legal certainty that the description is amended in line with the claims, why does the EPO make such a big deal out of it?
Interestingly, the last time a referral on description amendments was considered, the Board of Appeal in the case back-pedalled, in view of what it considered the clear lack of legal basis for the requirement (T56/21). In this previous case, the Board of Appeal remarkably commented that “[i]f the legislator considers it justified to require that the description be aligned with the subject-matter of claims held allowable, the legislator should provide for the respective legal basis by way of amendment of the EPC.”
G1/25: Case background
The case at the centre of this new referral is an appeal concerning EP 2124521 (Hydroponics growth medium). The patent, owned by Knauf Insulation, was opposed by Rockwool International. Both parties appealed the interlocutory decision from the Opposition Division.
The patent in question relates to a method of growing a plant in a special hydroponics growing medium. Claim 1 of the key request on appeal defined the organic binder in the growing medium with a great deal of specificity, including requiring that the binder was “based on reaction products obtained by curing an aqueous solution comprising citric acid, ammonia and dextrose”. This feature was imported from the dependent claims of the patent as granted and significantly narrowed the scope of claim 1.
The Opponent argued that this amendment introduced a fatal flaw because it rendered the original description, and the amended description filed at first instance proceedings, inconsistent with the claims. Specifically, the description described the binder in much broader and more optional terms than the amended claim. For instance, the description stated that the binder “may be based on a combination of a polycarboxylic acid, for example citric acid, a sugar, for example dextrose, and a source of ammonia, for example ammonia solution”. The Opponent argued that what was described as optional in the description had become mandatory in the claim. The Opponent thus submitted that, because of this inconsistency, the claims were not “supported by the description” as required by Article 84 EPC.
The Board of Appeal in the case (T697/22) agreed with the Opponent that the amendment had indeed “introduced an inconsistency” between the claim and the description. It found that the allowability of the request was therefore entirely dependent on the question of whether such an inconsistency was a legal impediment to maintaining the patent (r. 2.2)
The Board of Appeal’s search retrieved 115 relevant decisions and concluded that there are two lines of clearly diverging case law (r. 12). The first line of case law affirms that the description must be adapted. However, the Board of Appeal noted that there is no consensus on the legal basis for this requirement. Some decisions have relied on Article 84 EPC alone (T1024/18), whilst others cite Article 84 EPC in combination with other provisions (T438/22). By contrast, the second (more recent) line of case law argues there is no legal basis whatsoever in the EPC for this requirement. This view holds that the support requirement of Article 84 EPC does not preclude the description from containing unclaimed subject-matter and that forcing adaptation is a policy choice for the legislator, not the EPO (T56/21).
Referral confirmed! (G1/25)
It has now been confirmed that the Board of Appeal in T697/22 has referred the following questions to the EBA
Question 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.
Question 2
If the first question is answered in the affirmative, which requirement(s) of the EPC necessitate(s) such an adaptation?
Question 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?
Analysis
Notably, in its decision, the Board of Appeal makes a number of references to the recent EBA decision in G1/24. The Board of Appeal specifically found that G1/24 reinforced the need for a referral. Specifically, the Board of Appeal noted that, because G 1/24 requires that the description and drawings must always be consulted to interpret the claims, the issue of whether there can be an inconsistency between a claim and the description has “become of even greater significance“.
The mandatory note of caution required with respect to any EBA referral should now also be sounded. As we have seen with other recent referrals, it is possible that G1/25 will not provide the clear answer that many practitioners are looking for. If the EBA holds true to its recent approach, it may also only superficially provide an answer, and leave it to the Boards of Appeal to interpret what this means in view of the existing case law (see all of G1/21, G2/21 and G1/24 ).
Importantly, EBA decisions should also always be interpreted and understood within the context of the existing case law. In the wake of G1/24, it was fascinating to see the divergence amongst the commentariat as to how the decision should be interpreted, with many choosing to ignore the key nuance of language chosen by the EBA. As we pointed out at the time, the use of the term “consult”, as opposed to “use” in the Headnote of G1/24 is critical to how the Boards of Appeal will interpret and apply G1/24, as has been recently proved. On such a controversial topic as description amendments, it can be easy to forget that what really matters for day-to-day practice is what the law says, not what you think it should say. At Evolve, we are proud to be thought leaders in this space, and provide clear advice based on how in-depth understanding of the practical and real-world consequences of case law developments. This is all the more important in a field of law as complex as pharmaceuticals. Need expert advice on pharma IP strategy? We would love to hear from you.
