EPO Sets Description Adaptation Practice After G 1/25

The EPO published in advance on 10 November a notice explaining how examination and opposition practice implements decision G 1/25, issued by the Enlarged Board of Appeal on 3 September. Subject-matter or embodiments in the description outside the scope of the claims no longer amount, by themselves, to an inconsistency, and formal concordance is not required; adaptation is needed only where an inconsistency breaches a specific EPC requirement. The Guidelines will be revised. Only the version later published in the monthly Official Journal is authentic.

What G 1/25 held

According to the headnote, where claims are amended before the EPO departments or on appeal and the amendment introduces an inconsistency with the description, including any drawings, the description must be adapted if, and to the extent that, the inconsistency results in non-compliance with any of Articles 52 to 57, 76(1), 83, 84, 123(2) or 123(3) EPC. Until now, an inconsistency casting doubt on the subject-matter for which protection is sought was treated as an Article 84 problem and had to be removed.

How claims are interpreted

Claims must always be read in the light of the description and drawings as a unitary process, with the claims as the starting point and basis, and not only when a claim is unclear on its own; this is not limited to patentability. The description may shape the meaning of claim wording but cannot add a limitation or expansion with no basis in that wording, so an embodiment with extra features does not read those features into the claim. A definition in the description is taken at face value if technically reasonable, with both its broadening and limiting effect.

When adaptation is required

An inconsistency exists only where a statement in the description or drawings suggests an understanding of the claim incompatible with its apparent meaning and claim interpretation cannot readily resolve this. It breaches Article 84 if it becomes unclear whether information or embodiments fall within the claim, and it must also be removed if it gives the claim a meaning that fails novelty, inventive step, sufficiency or added-matter rules, for example where the description still reflects a claim before an amendment made for inventive step. This applies at all stages, to amended and unamended documents alike.

Two examples and claim-like clauses

• The independent claim has features A, B and C, but the description says the invention comprises A and B and that C may be present in an embodiment: this casts doubt on whether C is required, breaches Article 84 and must be fixed, and may also matter under Article 56 if C was added for inventive step. Features of an independent claim may not be described as preferred, optional or something the apparatus may have.
• The independent claim has A and B, and the description says the apparatus comprises A, B and C: claim interpretation does not read C into the claim, so no adaptation is needed.

Claim-like clauses in the description need not be deleted or amended systematically just because of their wording; they must be adapted only if they are inconsistent with the claims and, as a result, one of the provisions listed above is not met.

J&C recommends: where an examination report asking for the description to be brought into line with the claims is still pending, ask which EPC requirement each requested deletion addresses, and explain in the reply why passages with no such link are kept. When drafting or amending, do not describe features of the independent claim as preferred or optional, and adjust passages that still describe the invention as it stood before an amendment made for inventive step. In opposition, an attack based on claim-description inconsistency can likewise be held to a specific provision.

Source: www.epo.org