17/09/2026
The recent decision G1/25 of the Enlarged Board is the second in a series of cases investigating the relationship between the claims of the granted European Patent and the description. The first case G1/24 discussed here, discusses how the EPO should interpret the claims for the purpose of assessing validity during post grant Opposition and Appeal proceedings at the EPO. The more recent referral to the Enlarged Board in G1/26 asks the EPO to decide on the proper relationship between the claims and the description when considering matters of added subject matter in post grant Opposition and Appeal proceedings.
G1/25 is not about claim interpretation, but asks instead what duty the applicant has to amend the description of the application or granted patent to make the description agree with amended claims submitted during examination, or during Opposition and Appeal proceedings.
Examiners have as a general principle required the description of a patent application to be brought into agreement with the amended claims. The motivation for this is often cited as Article 84 of the European Patent Convention (EPC) which requires the claims to be “clear and concise and supported by the description”.
The practice of the Examining Division is to interpret Article 84 to mean that the description must agree with the claims. In other words, embodiments of the invention discussed in the application but not claimed must be clearly marked as falling ‘outside’ of the protection granted by the patent. Also, features of the invention that are claimed must not be discussed in the application in such a way that makes them sound optional. The motivation of the Examining Division is to provide legal clarity to third parties reading the application or patent as to the scope of protection, and avoid confusion caused by potential inconsistencies between the description and the claims.
The requirement has created some tension for applicants and patentees. Patent practitioners argue that the wording of Article 84 simply mentions that claims must be “supported” by the description, and that the word “support” does not need to be interpreted strictly as “brought into agreement with”. If the claims define the scope of protection, then a description that discusses claimed embodiments and non-claimed embodiments could still be said to “support” the claims.
Practitioners are also concerned about creating additional unnecessary work, and worse, concerned about making amendments that are later found to be detrimental for the patentee. For example, since embodiments of the invention may be complementary to each other, amending the description to label particular embodiments as “not claimed” or “not part of the invention” may result in inventive features being accidentally disclaimed or given up.
An even worse case scenario is that amendment or deletion of the description leads to an irreparable added subject matter issue – often very difficult to see at the time, and only arising later, when the claims are reanalysed in view of the amended description and found to have a meaning that (due to deletion or amendment of the description) now arguably lies outside the original disclosure of the application.
The Enlarged Board’s View
In the recent decision G1/25 The Enlarged Board appears to have taken a balanced view of the meaning of Article 84 and the requirement to amend the description.
Amendments to the description are not required “merely for the sake of formal concordance”. They are however required if there is an inconsistency between the unamended description and claims, and because the inconsistency leads to the application or patent not meeting the requirement of the EPC, specifically, Articles 52 to 57, 84, 84 or Article 123.
For Articles 52 to 57, the Appeal Board consider an example in which a statement in the description expresses a technical teaching that conflicts with the arguments for inventive step (non-obviousness) of an amended claim. In this example, the description would need to be amended to delete the statement. This is consistent with the teaching of the Enlarged Board decision in G1/24 which notes that the claims are to be interpreted for validity and patentability reasons based on the description and drawings and not in isolation.
“The 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.” – G1/24
For Article 84 and support or clarity type objections, the Enlarged Board specifically observes that:
“34. Article 84 EPC does not require a purely formal concordance between the description, including any drawings, and the wording of the claims, nor does it impose a general obligation to remove from the description, including any drawings, all matter not reflected in the claims”.
However, an inconsistency may affect compliance with Article 84 EPC, “If it is unclear whether information, examples, subject-matter or embodiments are or are not within the scope of the claim”. In that case “it cannot be said that the claim is supported by the description, including any drawings”.
An earlier paragraph of the decision foreshadows this and notes that;
20. 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.
Summary
As a result of the Enlarged Board of Appeal Decision in G1/25, it seems that the applicant or patentee will be required to make fewer amendments to the description.
There is no requirement make description amendments to delete subject matter or embodiments that are not claimed. However, there is a requirement to amend the description if an inconsistency between the description and claims leads to non-compliance with the EPC. It is possible that in official communications from the EPO, Examiners will be encouraged to describe the nature of this non-compliance in more detail as basis for the objection.
Lastly, where Article 84 “clarity and support” is the basis of the requirement to amend the description, an amendment will only be required if it is “unclear” whether the described features fall within the intended scope of the amended claims.
This means that the applicant or patentee will have to ensure that the description does not contain statements that contradict the claims but also provides some leeway about what is understood as being within the scope, and what is understood as being clear and unclear. There is still room for argument, but for now the strict interpretation of the need to amend the description favoured by some Examiners has been ruled against.
This content 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.
Links:
G1/24 https://www.reddie.co.uk/2025/06/19/g1-24-decision-issued/
G1/25: https://www.epo.org/en/boards-of-appeal/decisions/g250001eu1
