The European Patent Office (EPO) have announced a new referral, G 1/25, to the Enlarged Board of Appeal. The referral asks questions relating to the necessity (or otherwise) to amend the description to align with amended claims.
Amending the description to align with amended claims can have a significant impact on the scope of patent protection, certainty for third parties, and legal costs for applicants and patentees. As a result, it has been a significant topic of conversation, and often frustration, in the patent community for many years. Questions have been raised about the legal basis for requiring description amendments, and inconsistencies between Examining Divisions, Opposition Divisions and Boards of Appeal have led to a great deal of uncertainty for all involved.
The referring Board of Appeal noted in their interlocutory decision T 0697/22 that the recent Enlarged Board of Appeal decision G 1/24 has given greater importance to the role of description amendments by requiring that “[t]he description and drawings shall always be consulted to interpret the claims when assessing patentability of an invention…and not only if the person skilled in the art finds the claims to be unclear or ambiguous when read in isolation” (emphasis added). The Board of Appeal have referred the following questions:
- 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?
- If the first question is answered in the affirmative, which requirement(s) of the EPC necessitate(s) such an adaptation?
- 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?
The Board of Appeal notes that “[t]hese questions are not only decisive for the current case [T 0697/22], they are also fundamental questions of law that affect the practice of the board and all other departments of the EPO”.
This referral will be keenly watched by the patent profession and patent holders alike, as its outcome is likely to affect the expectations placed on applicants and patentees, and the associated legal costs that they will incur.
Phil Horler
Electronics, Computing & Physics group
This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.
© Withers & Rogers LLP July 2025
