The decision of the Enlarged Board of Appeal in G1/25 issued on 3 September 2026. Our reporting of the background to the case can be found here.
In brief, the questions referred to the Enlarged Board relate to if it is necessary to adapt the description if a claim amendment introduces an inconsistency between the amended claims and the description.
Divergent lines of case law at the EPO developed over time and there has long been much discussion surrounding when an amendment to the description is required and under what legal provision in the EPC such amendments are made necessary.
Often, in order to bring the description into conformity with the amended claims, a judgement call must be made on which embodiments need to be amended to state that they do not fall within the scope of the invention or even deleted altogether.
The order of the Enlarged Board of Appeal is 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 arriving at this decision, the Enlarged Board considered may interesting points of patent law relating to claim interpretation.
The relevance of decision G 1/24
In G 1/24, the Enlarged Board considered the role of the description and any drawings when interpreting claims and held that the description and drawings shall always be consulted to interpret the claims, and not only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation.
The Enlarged Board noted as a point of interpreting the implementation of the decisions of G1/24 that a holistic approach should be taken and that there was not “a sequential method under which the claim wording is first construed in isolation and the description and drawings are consulted only at a later stage if uncertainty remains.”
The proper approach was deemed to be “determining the meaning of the claim wording from the perspective of the skilled person based on the claims, the description and any drawings taken together.”
The Enlarged Board goes on to explain that the description and drawings cannot be used to impose on the claim a limitation or expansion for which the claim wording provides no basis and that a person skilled in the art will try to take a definition found in the description at face value as long as it is technically reasonable and complies with the overall teaching of the claims, description, and drawings. The Enlarged Board emphasised that in doing so the skilled person would take into account both the broadening and limiting aspects of any definitions in the description.
The Enlarged Board also unequivocally made it clear that this approach from G1/24 was applicable to not just the question of assessing patentability but is a general principle of claim interpretation by the Board of Appeal.
This is a welcome clarification and I would hope that examiners at the EPO will take this into account when assessing the clarity of claims under Article 84 EPC during examination. It can sometimes be the case that claim features are taken out of context to give a meaning which was never intended when a holistic interpretation is made in light of the whole specification. The reinforcement of the principles of G1/24 and the proper interpretation of the claims in light of the whole description and drawings is therefore of great assistance to Applicants.
Are inconsistencies between amended claims and the description to be treated differently in examination versus during oppositions proceedings?
The Enlarged Board determined that there was no difference in the approach across the EPO to determining if a description amendment is necessary after a claim amendment which introduces an inconsistency between the amended claims and the description.
It is not surprising that the Enlarged Board would seek to ensure consistency of the application of claim interpretation across proceedings before the examining and opposition divisions and this should provide predictability of when description amendments are required at all stages of EPO procedure.
The meaning of “inconsistency”
The question arises as to when is an amendment inconsistent? The Enlarged Board of Appeal attempted to assist in the determination of the meaning of this term.
The Enlarged Board stated at recitals 19 to 20 of the decision.
“18. An inconsistency between the claims and the description, and any drawings, exists where one or more statements in the description, including the drawings, suggest an understanding of a claim which is incompatible with the apparent meaning of the claim, and that incompatibility cannot readily be resolved by applying the principles set out in G 1/24.
- In many cases, what may appear at first to be such an incompatibility can be resolved without difficulty by applying the principles for claim interpretation set out in G 1/24. If the person skilled in the art reading the claim in the light of the description and any drawings would be left in real doubt as to the meaning of the claim, however, there is an inconsistency.
- An inconsistency is not established merely because the description, including any drawings, contains a technical teaching, examples, or embodiments that do not fall within the claimed subject-matter. If, on the other hand, due to such an incompatibility, it is unclear whether a technical teaching, examples, or embodiments do, or do not fall within the claimed subject matter, an inconsistency exists (emphasis added).
The Enlarged Board further stated:
“The EPC does not require an adaptation of the description, including any drawings, merely for the sake of formal concordance.”
It remains to be seen how this is put in practice by examiners. It would appear reasonable to interpret the above as providing more scope to push back on potential objections requiring certain embodiments to be deleted from the description. The key point is demonstrating that the embodiments in question do not create an inconsistency between the claims and the description. Therefore, embodiments which can be determined to be consistent using the interpretation of G1/24 and embodiments which are merely within the application and not relevant to the claims need not be removed or amended.
Inconsistencies and the articles of the EPC
The Enlarged Board considered the impact of inconsistencies between amended claims and the description in the context of several of the articles of the EPC, particularly in the context of Article 84 EPC. The general conclusion was that removal of an inconsistency is not linked to any one article per se but to the need to remove any inconsistency which leads to non-compliance with the EPC. An inconsistency that does not lead to non-compliance to an article of the EPC does not require adaptation of the description.
When to amend the description
One very interesting point in the decision is this obiter section. A key issue in the referring decision is that the Patentee did eventually file a further amended description to remove the inconsistency which was determined as existing by the referring Board of Appeal. However, this was rejected as being late filed and therefore inadmissible under Article 13(2) RPBA.
In this obiter section of the decision, the Enlarged Board did not specifically address this point but did clearly indicate that the description could be finalised in appeal proceedings once the amended claims are found allowable. The Enlarged board stated at recital 46 of the decision:
“…in appeal proceedings, the description, including any drawings, is almost always finalised in the oral proceedings before the Board. Nothing in this decision calls for a change to this practice.”
While subtle, it would appear that the Enlarged Board does not agree with the referring board’s decision not to allow the amended description into the proceedings.
Summary
The Enlarged Board has provided some useful guidance with this decision. Implementation may not be consistent, but it provides Applicants with more ability to argue against the need for deleting certain embodiments if they do not create an inconsistency between the claims and the description, including the drawings.
The guidance relating to G1/24 and claim interpretation is an added bonus and potentially reveals how G1/26 may be decided (see our summary of the referral here).
The Enlarged Board’s view that the claims, description, and drawings must be taken as a whole and that a holistic approach should be used is potentially very useful for overcoming clarity objections under Article 84 EPC where a claim feature is being taken out of context to apply an unreasonably broad or unintended interpretation.
While the need to amend the description remains with us, the Enlarged Board has provided some useful points to consider. The repercussions of this decision will be interesting to watch in future T decisions from the Board of Appeal and we are sure to report them here.
