20/03/2026
EPO procedure currently requires that the description be amended to be consistent with any amended claims. Some Examiner’s take this requirement very seriously. Other Examiners can be more forgiving. Consequently, the necessary description amendments can at times be relatively easy to accomplish, while at other times can seem quite laborious.
Against this backdrop, patent practitioners are watching the G1/25 referral to the Enlarged Board with interest. In the G1/25 referral, the referring Technical Board of Appeal (T696/22) asks a number of questions about the necessity of description amendments. Michael Roberts discusses these in his article of 30 July 2025 here.
The relevant Enlarged Board of Appeal has now published its initial views on the referred questions, and a copy of their report is available here. The Board’s initial viewpoint is strictly preliminary and is intended to assist the parties to the referral in further preparing for the hearing later this year, as well as to understand the direction the EBA is likely to go in. Having said that, the initial view gives a relatively clear indication of the likely decision.
In the preliminary opinion the Board note that inconsistencies between the claims and the description do seem to cause an actionable non-compliance with Article 84 of the European Patent Convention – Article 84 defines the requirement that the claims be supported by the description.
‘The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description.‘
The Enlarged Board of Appeal also remark that they are not convinced by the arguments expressed in cases like T56/21 which point out that Article 84 does not explicitly refer to the requirement to amend the description, and that the Article should only be read as placing conditions on the claims themselves. The Enlarged Board note that this line of reasoning does not agree with the Enlarged Board of Appeal’s recent decision in G1/24 (discussed here), and that the view in T56/21 seems to be a minority view among the Technical Boards.
In view of the above, it seems likely that the Enlarged Board will maintain the present requirements for description amendments to take place. We look forward to the full decision issuing later in the year and any further guidance it may give.
Further Comments
Supporters of the EPO’s practice of requiring amendments to the description argue that even if it is only the claims of the granted patent that define the scope of the patent’s legal protection, the claim language can be subject to interpretation based on the description. Such supporters are perhaps also sympathetic to non-patent expert third parties having to make sense of claims that say one thing, and a patent description that says something different.
Key differences between the description and the claims that could lead to inconsistency for example might include a) claimed and non-claimed features of embodiments, and b) whether such features are presented as “essential” or “optional”.
Those with views against the requirement note that there appears to be no explicit legal requirement in the European Patent Convention that calls for the description to be amended. Patent practitioners not in favour of the description amendment requirement also point out that if it is only the claims that define the legal protection, then it is not relevant if the description contains additional non-claimed material.
They also express concerns over the extra administrative burden created for the patentee or applicant, and the possibility of something going wrong with the description amendments (such as discounting or deleting subject matter unnecessarily). Examiner amendments at the Notice of Allowance stage sometimes delete more than is strictly necessary from the application in order to avoid this kind of inconsistency, potentially harming post grant litigation if the deleted subject matter turned out to be relevant at a later stage.
There is therefore some difference of opinion as the most desirable procedure and as with most things, and perhaps the ideal solution is somewhere between the two viewpoints discussed above.
We look forward to further updates from the EPO.
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.
