The Enlarged Board of Appeal recently issued its decision in case G 1/25. It concluded that an inconsistency between the claims and the description requires adaptation of the description where, because of that inconsistency, a requirement of the EPC is not complied with.
The order of the Enlarged Board of Appeal reads as follows:
“If the claims of a European patent, or patent application, are amended during proceedings before the departments of the EPO, or in appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description, including any drawings, of the patent, or application, and because of that inconsistency Articles 52 to 57, 76(1), 83, 84, 123(2) or 123(3) EPC are not complied with, it is necessary to adapt the description, including any drawings, to the amended claims so as to remove that inconsistency.”
In the Reasons of the Decision, the Enlarged Board held that the necessity to adapt the description or any drawings is not a consequence of the existence of an inconsistency as such between the claims and the description or any drawings, 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 (more specifically, Articles 52 to 57, 76(1), 83, 84, 123(2) or 123(3) EPC). An inconsistency having no such legal effect need not be removed or neutralised. The EPC does not require purely formal concordance between the claims and the description.
In an obiter dictum, the Enlarged Board expressed its opinion about when to amend the description in appeal proceedings in that it is preferable to adapt the description including any drawings in the course of the appeal proceedings rather than remitting the case to the first instance for the description to be adapted.
In summary
While the finding that the description does not necessarily have to be amended to ensure a literal correspondence with the claims is, in principle, welcome, it remains to be seen whether Decision G1/25 will significantly reduce the effort required to amend the description or whether it will raise new points of contention regarding the interpretation of the claims and the assessment of alleged inconsistencies.
This IP Alert is for information purposes only and does not constitute legal advice.