30/07/2025
The European Patent Office (EPO) has in recent years implemented a requirement that any inconsistencies between the description and claims of a patent document – notably claims amended during examination – be removed by amendment of the description. Some EPO Board of Appeal decisions indicated there is no legal basis in the European Patent Convention (EPC) for this requirement, although other Boards considered there is basis in Articles 69 and 84 EPC in particular. The recent Enlarged Board of Appeal decision G1/24 ruled that the description and drawings should always be consulted when assessing patentability of the claims, but did not address the question of whether the description should be amended to address inconsistencies with the claims. However, G1/24 interpreted Articles 69 and 84 EPC in a way which casts a different light on the prior Board of Appeal decisions concerning amendment of the description.
Therefore, as widely expected, Board of Appeal 3.3.02 has in their interlocutory decision T697/22 dated 29 July 2025 referred the following questions to the Enlarged Board of Appeal for decision:
- 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?
- If the first question is answered in the affirmative, which requirement(s) of the EPC necessitate(s) such an adaptation?
- 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?
It is hoped that the Enlarged Board of Appeal finds the G1/25 referral admissible and provides clear answers to these questions.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
