The Enlarged Board of Appeal (EBA) of the European Patent Office issued its decision in referral G1/25 earlier this month, as we reported earlier here, finally addressing the long-debated question: to what extent, if at all, should the description of a patent or patent application be amended to align with the claims?
At first glance, the decision appears to reduce the burden of description amendments. Applicants now only need to adapt the description where an inconsistency between the claims and description has legal significance because it leads to non-compliance with a requirement of the EPC.
However, ambiguity remains as to how this decision will be applied in practice, and what "inconsistency" actually means. This uncertainty leaves the future of description amendments, and the approach Examiners will take, frustratingly unclear.
Defining Inconsistency
The decision goes into detail on the meaning of "inconsistency": "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 G1/24" (G 0001/25, R.18).
The EBA further states that apparent incompatibilities between claims and description can often be resolved by applying the claim interpretation principles in G1/24. An inconsistency only arises if the skilled person is left in real doubt as to the meaning of the claim (G 0001/25, R.19).
The decision offers no further explanation of "real doubt". In practice, this threshold is likely to be a subjective one, applied by Examiners on a case-by-case basis.
Inconsistency and Article 84 EPC
Consider a scenario where the description describes feature X, and optional additional features Y and Z, with specific examples given of X+Y and X+Z. A claim that originally only claimed X was amended during prosecution to recite X+Y.
Under previous case law (see T 1024/18), embodiments outside the claim scope had to be removed or labelled as "not according to the invention", i.e. X+Z would need to be deleted from the description or clearly marked as falling outside the claimed invention.
Under G1/25 it is explicitly stated that an inconsistency is not established solely for the reason that the description includes examples or embodiments falling outside the claimed subject matter (G 0001/25, R.20).
But G1/25 also states: "If it is unclear whether information, examples, subject-matter or embodiments are or are not within the scope of the claim, then it cannot be said that the claim is supported by the description, including any drawings." (G 0001/25, R.35). This could be classified as an inconsistency leading to non-compliance with Article 84 EPC.
How do we reconcile these apparently contradictory passages? The answer appears to be resolved by whether the skilled person is left in real doubt as to the meaning of the claim. Logic suggests that the skilled person would have no difficulty recognising that X+Z falls outside the scope of a claim reciting X+Y.
However, matters become less straightforward if, for example, features Y and Z are closely related. The situation is further complicated by the G1/24 approach, where an Examiner may read the claim "holistically" alongside the description. If the description refers to X+Z as "an embodiment of the invention", an Examiner could argue that the skilled person, reading the claim in light of the description as per G1/24, would be left in real doubt as to whether X+Z falls within the claim scope. On that basis, an objection might be raised that the claim would contravene Article 84 EPC, necessitating amendment of the description.
Inconsistency and Article 56 EPC
G1/25 also notes that an inconsistency may affect compliance with Articles 52 to 57 EPC. The decision gives this example:
"If, for example, a claim has successfully been amended to meet the requirement of non-obviousness in Article 56 EPC, but a statement in the description, including any drawings, expresses a technical teaching reflecting the claim before this amendment, and this statement thus conflicts with the fulfilment of the requirement of non-obviousness, this inconsistency in the description, including in the drawings, has to be removed." (G 0001/25, R.38).
The decision does not clarify which statements might conflict with non-obviousness requirements, which leaves room for Examiners to use this reasoning to justify description amendments. In particular, it is not clear how this would differ from contravening Article 84 EPC.
Returning to our example, consider if X and X+Z were considered to lack inventive step, and the applicant limited the claims to X+Y and relied on a technical advantage of X+Y to establish inventive step. If this technical advantage is broadly defined in the description relating to feature X or also described in relation to feature X+Z, an Examiner could argue that the description provides a broader definition of what the "invention" is, and if under G1/24 the description is always to be consulted, the claim could be interpreted to potentially cover this broader obvious subject matter X+Z and contravene Article 56 EPC. As such, an Examiner may require that the description is amended.
Right back where we started from
In both scenarios above, an Examiner may still have grounds under G1/25 to require deletion of embodiments not covered by the claims. If so, cue Maxine Nightingale's "Right Back Where We Started From".
The exact application of G1/25 in prosecution, opposition and appeal remains to be seen. There is hope that Examiners will interpret real doubt reasonably, delivering the reduced burden of description amendments that the decision appears to promise.
