Over to Greg: 

"The Enlarged Board of Appeal (EBA) decision, G1/24, is considered clear and succinct. Whilst G1/24 provided us with clear answers to the question of how the description should be used to interpret claims, the potential impact of G1/24 on the EPO’s practice of description amendments on allowance remains open to question. Notably, nowhere in G1/24 is there explicit mention of amendment of the description, let alone support or criticism of this practice. However, there is now a pending appeal and potential referral which will potentially address this question (T697/22), and for which a decision is expected by tomorrow (30 July). What are the proposed referral questions? Can issues be identified in view of G1/24 which might be relevant for the Board of T697/22 to consider? And how can G1/24 help in deciding T697/22?

What is G1/24: The decision

To recap, G1/24 had a referral of three questions which were answered as follows:

1. Neither Articles 69 nor 84 European Patent Convention (EPC) serve as basis for interpreting claims when assessing patentability at the European Patent Office (EPO).

2. The description and figures shall always be consulted for such interpretation of the claims.

3. Question 3 regarding use of a patent description as its own dictionary was found to be inadmissible in view of the answers to questions 1 and 2.

Specifically, the EBA’s answer to the first two questions was:

The claims are the starting point and the basis for assessing the patentability of an invention under Articles 52 to 57 EPC. The description and drawings shall always be consulted to interpret the claims when assessing the patentability of an invention under Articles 52 to 57 EPC, and not only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation.

Reference to the Description

Throughout the decision, the description is only expressly mentioned as a reference for claim interpretation (G1/24, Reasons 12, 14, 15 and 18). There is no explicit reference to amend the description. However, the EBA stresses the importance of a claim fulfilling clarity requirements, Art 84 EPC (G1/24, Reason 20), and asserts that: the correct response to any unclarity in a claim is amendment, citing paragraphs from the Comments of the President. Although the text in the decision explicitly relates to claim amendment, the referenced text of the President (President’s Comments to G1/24; paragraphs 87, 109 and last sentence of para 135) recommends striving for clarity by amending the description (President’s Comments to G1/24; only paragraphs 87 and 109) as well as the claims. The decision can thereby be considered to affirm EPO practice whatever that may be.

Divergent case law exists whether the description should be amended. T438/22, for example, supported the practice of adaptation of the description relying on Arts 84 & 94(3) EPC and Rules 42, 48 and 71(1) EPC, minding that any amendment of the description should not add matter to the application as filed, Art 123(2) EPC. The Board of T56/21, by contrast, found there is no basis from Art 84 EPC, or elsewhere in the EPC, for amending the description to comply with claims. A view can be taken that both decisions are now inconsistent with G1/24 because they both affirm application of Art 84 EPC for interpreting claims at the EPO and of Art 69 EPC and its protocol post grant (T56/21, Reason 86; T438/22, Headnote 2).

What Support is there for Amendment of Description in G1/24?

Reading the leading decisions on description amendments in view of G1/24, suggests that G1/24 could be considered incomplete. So why did the EBA not consider the consequences of its decision on claim interpretation to the practice of description amendments? One reason could be that providing such an answer was not relevant for the issue in the underlying case before the EBA. Nonetheless, the President of the EPO commented that amendment of the description was essential to G1/24, because amendment of the description was an established practice that could have been affected by the final decision. By contrast, late filed communications in G1/24, e.g. from epi, asked the EBA to keep to the explicit questions of the referral which did not refer to the practice of amendment of the description.

These petitioners argued that, if the EBA did expressly consider amendment of the description in its decision, third parties would be denied the opportunity to represent their views because the period to file amicus briefs had elapsed. At the hearing the two parties to the proceedings expressly represented that their position was consistent with amendment of the description, Art 84 EPC, which may have made this issue moot. Nonetheless, the final decision of G1/24 answered the referral so it can also be interpreted to be consistent with EPO practice, yet also complying with the late filed requests to limit the impact of the decision on EPO practice. The decision thus respected several public policy matters that were at stake. Some may view this as an accomplishment.

So how can G1/24 apply to the question of amendment of the description? G1/24 provided a new interpretation of Arts 84 and 69 EPC which is consistent with some of the pre-existing case law for claim interpretation. However, it is still unclear if and how the principles of G1/24 may be relevant to the question of adaptation of the description. In fact, it appears that G1/24 was intentionally written to avoid directly addressing the question, leaving a lacuna in the case law. Could a referral from T697/22 fill the gap?

What are the questions proposed in T697/22?

In T697/22, the undecided issue is whether adaption of the description to amended claims is needed to comply with Art 84 EPC. The Board in the case has observed that the parties have diverging views and has identified the divergent case law. The Board has thus proposed to refer the issue to the EBA and has suggested four draft questions (Communication from the Board 26 March 2025 page 2 paragraph 5 to page 3 paragraph 3).

Question 1) If the claims of a European patent are amended during opposition proceedings or opposition-appeal proceedings, and the amendments introduce 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 such that the inconsistency is removed?

Question 2) If the first question is unconditionally answered in the affirmative, which requirement of the EPC necessitates such an adaption?

Question 3) If the first question cannot be unconditionally answered in the affirmative, what are the conditions under which adaption of the description is necessary to comply with requirements of the EPC?

Question 4) Would the answer to these questions change if an inconsistency existed between the claims and the description of a European patent application?

The first draft question addresses the fundamental question of amendment of description and the second draft question seeks its legal basis:

So how is G1/24 relevant to these two questions? Intriguingly, the line of case law citing Art 84 EPC as the legal basis for amendment of the description (e.g. T438/22), appears to be inconsistent with G1/24. The EBA in G1/24 emphasized that Art 84 EPC "addresses the content of the patent application and is formal in nature, does not mention the invention and provides no guidance on how to interpret claims" (r. 8). One view is that if Art 84 EPC’s application is so limited that it cannot be used as basis for claim interpretation, then how can it serve as legal basis for amendment of the description?

The third draft question suggested by the Board in T697/22 asks whether there is any other legal support or material such as case law from which a legal principle can be derived.

This question has parallels to question 2 of G1/24, which the EBA answered by extracting applicable principles of claim interpretation from one of the two bodies of pre-existing diverging case law (G1/24, paragraph VII, Reasons 10 and 12). In a new referral, the EBA may therefore be expected to take a similar approach and look to the pre-existing case law on description amendments. However, it is unclear whether there is a similar level of generality in the case law on amendment of the description from which a principle could be abstracted

The final draft question suggested for the referral is perhaps of the most interest to practitioners, i.e. do we have to amend the description in line with the allowed claims?

Importantly, the case at the heart of the possible referral in T697/22 relates to an opposition where the application of Art 84 EPC differs from that used in examination (EPO Guidelines IV.C.5.1.2.b). Because of this difference, there is a risk that the EBA may decide that the fourth question is inadmissible, given that an answer to this question would not serve to resolve the underlying case (EPO Guidelines 2025 V.B.2.3.3). This principle appears to have been applied in the recent G1/23 decision. Consequently, a referral from this appeal might not in fact provide the long-sought-for-answer on whether the description should be amended in line with the allowed claims in examination.

Towards harmonization?

At its core, the EPC has a philosophy of harmonisation, which is sought by both the EBA, whereby “the EPO should not deliberately adopt a contrary practice to that of the tribunals that are downstream of its patents” including the national courts and the UPC. How the EBA may choose to seek that objective can be considered for example by identifying if the UPC has commented on the EPO practice of amending the description and how the courts have responded to amendments which may be occasioned by application of the EPO’s practice as noted in third party observations of 23 May 2025. Note: other lines of argument exist, for example application of G2/10 as applied in the third-party observations which will not be discussed in this article.

The UPC approving the EPO practice

The UPC has expressly ruled at first instance that the description should be amended in line with the allowed claims: "specifications that are not consistent with the granted claims cannot serve as a basis of a broad claim interpretation" (UPC_CFI_278/2023). The Hamburg Local Division, which decided this case, stated that a particular inconsistent term should have been deleted from the description (headnote 3, page 23). However, this is only a first instance decision and a wave does not represent a storm at sea. Indeed, there may be similar decisions which are as yet unreported. We await to see if this approach will be followed by other UPC divisions, how the Court of Appeal responds to its use, and what account the EBA may choose to take of this decision.

How the Courts have Responded to Amendments to the Description

Third party observations filed in T697/22 on 23 May 2025 presented arguments that amendments to include language that the EPO commonly considers innocuous e.g. "outside the scope of the claims" and requires on allowance for clarity, can be found to add matter and to influence claim interpretation (Ensygnia v Shell [2023] EWHC 1495 (Pat) (IPKat). Although this decision is from the English courts about a UK filed patent which was amended post grant, the amendments were made to bring the description into conformity with the amended claims.

The referral decision for G1/24, T439/22, observed that this jurisprudence on claim construction at the English courts is essentially the same as that applied in other national courts and in the UPC, i.e. Nanostring (T439/22, Reason 4.3). Notably, G1/24 later expressly approved Nanostring (G1/24 r. 19) in line with the principles of harmonisation.

Jurisprudence is not yet clear for the added matter limb. The Opponent/Appellant has already commented on the third-party proceedings, arguing that an amendment should satisfy the added matter requirements of the EPC, but that “cannot justify omission of an amendment of the description which would be required … due to an inconsistency between an amended claim and an unamended part of the description.” (Para 11 to 12 especially para 12.4 of letter dated 18 June 2025). Is the Opponent/Appellant advocating that the requirement to amend the description is independent of added matter? If these two EPC requirements are treated independently of each other, it is foreseeable that on occasion both requirements cannot be satisfied. So, following this line of reasoning, a proportion of patents will grant having added matter as a consequence of the amending the description to the allowed claims, as found in Ensygnia.

This outcome does suggest such a policy would be contrary to the principle of harmonisation identified in G1/24. Although there is no record of the UPC cases with an added matter objection occasioned by amendment of the description on allowance, added matter is the leading reason for invalidity at the UPC at first instance and the central divisions. As of 1 July, 31% of all validity decisions at the Court of First Instance were based on added matter, and 50% of all revocation cases at the Central Division. Consequently revising the description on allowance could be unwittingly adding matter to a patent on grant making it unsuitable for use in the courts.

In which direction will the EBA take harmonisation?

Given that an objective of the EPO is to grant high quality patents suited for use at the courts (Quality Action Plan 2025 | epo.org), it would seem unlikely that the EBA would choose to affirm the EPO process of amending the description at grant that appears intentionally to risk adding matter. It would be contrary to harmonisation that the EPC represents. Yet the EBA could decide that the importance of legal certainty in a granted patent of how the description supports allowed claims is an indication of the quality of a patent and is important for harmonisation between the EPO and the Courts. So, the EBA could affirm the established EPO practice. Of course, should a referral be made, it may decide differently. How it decides may depend on how the arguments in support of the different options are argued and substantiated (not just the two exemplary arguments presented here) by all parties to proceedings including the President and third parties. This is a point to be watched. 

How could G1/24 be relevant for deciding T697/22?

None of the parties to T697/22 have had the opportunity to account for G1/24 in proceedings. The last filing by the Opponent/Appellant was on the same day as G1/24 was decided. The next communication is expected from the Board on 30 July.

At present the Opponent/Appellant relies on Art 84 EPC for amendment of the description, and the Proprietor/Appellant has the contrary view applying T56/21. However, even if the EBA agrees with the Proprietor that Art 84 EPC is not the basis for amendment of the description, it could still decide the third draft referral question using an approach similar to the second referral question of G1/24, i.e. by extracting principles from relevant case law. In one view, the most reasonable approach now would be for the parties to have the opportunity to account for G1/24 and its implications in their arguments, whether in the present proceedings or in a referral.

Summary

G1/24 can be argued to be essential for deciding T697/22. The two leading divergent cases on description amendments apply Arts 84 and 69 EPC inconsistently with G1/24. The deciding board could decide T697/22 without a referral, but the long existence of divergent case law justifies a referral. A referral would also be an efficient way of simultaneously granting the parties to the proceedings and third parties an opportunity to present their arguments based on G1/24 as some requested late in the proceedings of G1/24.

Nevertheless, a referral in T697/22 might still not provide an answer to the long-sought-for-question of amendment of the description of a patent application in view of allowed claims, i.e. examination as opposed to opposition. Practitioners may thus want to delay raising their hopes for a solution just yet. Still, it is hoped that any referral and its eventual decision would represent a further step along the path of harmonisation between the EPO and the European courts.

Of course, before there can be a referral, the present Board needs to decide to make one. We all await its decision with anticipation."

Source: https://ipkitten.blogspot.com/2025/07/guestpost-has-g124-made-referral-of.html