In case T 0697/22, the Technical Board of Appeal 3.3.02 has referred the following legal questions to the Enlarged Board of Appeal:
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?
2. If the first question is answered in the affirmative, which requirement(s) of the EPC necessitate(s) such an adaptation?
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?
As noted in the referring interlocutory decision T 0697/22, these questions are fundamental questions of law that affect the practice of the boards and all other departments of the EPO.
The fundamental character of these questions is reinforced by the order in G 1/24, which states that “[t]he 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” (see G 1/24, order, emphasis in bold added).
Following G 1/24, the question whether an application can be granted or a patent can be upheld if there is an inconsistency between an amended claim and the description has become of even greater significance.
With its third question, the Technical Board of Appeal extends the question of adapting the description to amended claims also to examination proceedings so that this long-lasting discussion may possibly be brought to an end by the Enlarged Board of Appeal in the near future, thereby providing legal certainty in this regard.
This article is for information purposes only and does not constitute a legal advice.