The Enlarged Board of Appeal has now issued its decision in G 1/25, the referral regarding amendment of the description when inconsistencies arise after amendment of the claims.
Three questions were referred in G 1/25 and the Enlarged Board of Appeal’s answers can be summarised as:
The EPC provisions likely to see non-compliance are patentability (Articles 52 to 57, patentable subject matter/exclusions, novelty, inventive step, industrial application), added subject matter (Article 123 and also Article 76(1) relating to divisional applications), sufficiency (Article 83) and clarity/support (Article 84).
Most issues are expected to arise around compliance with Article 84’s requirements for clarity and support, as is currently the case. This decision indicates that apparent inconsistencies may be resolved following the principles of claim interpretation set out in G 1/24. This should provide a useful argument when responding to EPO examiner’s requests for description amendments.
No difference between opposition and examination proceedings
The decision very quickly disposed of the third question: there is no difference between examination and opposition proceedings. Thus, the remainder of the decision applied equally to both situations.
Aligning with G 1/24
This new decision is very closely aligned to the decision in G 1/24.
The new decision repeats the guidance always to consult the description when interpreting the claims. It also references T 439/22 and its echoing of G 1/24 to adopt a holistic approach to claim interpretation based on the claims, description and drawings.
The present decision said that this exercise was to be performed from the perspective of the skilled person. A warning was given, namely that while the description and drawings may affect the meaning which the skilled person attributes to the claim wording, they cannot be used to impose on the claim a limitation or expansion for which the claim wording provides no basis. In these cases, the primacy of the claims remains.
The principles of G 1/24 were then considered for the new referral, and the Enlarged Board of Appeal concluded they may well remove many inconsistencies, as explained below.
What are the circumstances requiring amendments?
The Enlarged Board of Appeal thought that the question of what constituted an “inconsistency” within the meaning of the referral was key. They provided a meaning, namely 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.
As the Enlarged Board of Appeal said, in many cases the skilled person applying the principles of G 1/24 would be able to resolve any such apparent inconsistencies and would be left in “no real doubt” as to the meaning of the claim. In these circumstances, no amendment would be required.
It was noted that,
“The EPC does not require an adaptation of the description, including any drawings, merely for the sake of formal concordance.”
The Enlarged Board of Appeal also explained that an inconsistency does not arise merely because the description contains an embodiment or other technical teaching that does not fall within the scope of the claims. But, on the other hand, an inconsistency exists when it is unclear whether an embodiment or other technical teaching does or does not fall within the scope of the claims.
However, there was a further requirement to show that amendment was needed. Namely, that the inconsistency gave rise to non-compliance with a provision of the EPC.
For example, it might be unclear whether or not an embodiment or other technical teaching falls within the scope of the claims. The Enlarged Board of Appeal indicated this would affect compliance with Article 84 EPC as the claims would not be supported by the description.
The Enlarged Board of Appeal said that an inconsistency could give rise to a lack of compliance with the requirements for patentability (Articles 52 to 57 EPC – patentable subject matter, novelty, inventive step, industrial application). An example was given where an amended claim is found to be inventive but a passage in the description framed relative to the unamended claim may give rise to an inconsistency (like a discussion of a technical problem solved by the unamended claim).
It was envisaged that issues may arise with added subject matter and sufficiency too but, in practice, this would be far less frequent.
When can amendments be made?
The Enlarged Board of Appeal helpfully indicated that they saw no reason to change the established practice of amending the description at oral proceedings only after an acceptable set of claims has been agreed. However, they did note that amending the description at appeal oral proceedings was preferable to remitting the case back to first instance and risk a further appeal.
What about unamended claims?
While the referral concerned inconsistencies arising between the description and amended claims, the Enlarged Board of Appeal commented that the issue may still arise for unamended claims. Moreover, the same requirements should apply and any inconsistencies leading to non-compliance with a provision of the EPC should require amendment.
The nature of the amendment
It appears that deletion of inconsistencies in the description is not necessarily required. The decision mentions that an inconsistency could be removed or “neutralised”, the latter presumably alluding to the practice of adding clarifying text (e.g., “According to an unclaimed example, …”).
Also, the decision made it clear that it is allowable to amend the claims instead of the description to remove the inconsistency.
So what changes?
Currently, most objections requesting amendment of the description are based on meeting clarity requirements. This practice is likely to continue. If the examiner fails to explain which provision of the EPC is lacking compliance as a result of an inconsistency, then a response may be filed requesting such an explanation.
Any objection should also explain why an inconsistency arises and, in line with this new decision, why the inconsistency cannot be resolved following the principles of G 1/94. To what extent this will be done remains to be seen. If implemented properly, a drop in the number of objections inviting amendment of the description can be expected.
Responses are now likely to argue that following the principles of G 1/94 can resolve the inconsistency such that the skilled person would be left in no real doubt as to the meaning of the claim, as required by this decision.
Some further leverage may be the Enlarged Board of Appeal’s conclusion that there is no inconsistency when the description contains an embodiment or other technical teaching that does not fall within the scope of the claims. This opens the door to arguments explaining why an embodiment is obviously outside the scope of the claims, in which case no amendment is needed. There may be some resistance from examiners. They may disagree and instead argue that it is unclear whether or not an embodiment or other technical teaching falls within the scope of the claims, hence requiring amendment.
Takeaways
For further details, please contact Nigel Tucker or your usual Boult advisor.
