In a potentially significant development for European patent practice, the European Patent Office (EPO) Technical Board of Appeal has referred a question to the Enlarged Board of Appeal (EBOA) regarding whether it is necessary to adapt the description of a patent application to match amended claims. This referral, identified as G1/25, could have wide-reaching implications and will hopefully provide some clarity on the extent of required description amendments during patent prosecution.

What is the issue with description amendments at the EPO?

Unlike many other patent offices, the EPO has developed a practice whereby examiners may require applicants to amend the description of the patent to remove any ambiguity between the description and claims.  The aim of this is to ensure the granted patent is self-consistent and the protected claim scope is clearly understood.

For example, if a claim is amended to include a new feature during prosecution, the examiner may require the applicant to:

• identify the new feature as required rather than optional,
• identify any embodiments that do not include the new feature as not covered by the claimed invention, and/or
• delete sections that conflict with the new feature.

However, these amendments can have unintended consequences, especially during enforcement. Under UK law, infringement can occur even if the infringing product or method is an immaterial variant of the claimed invention.  If the applicant was forced to label such a variant as “not covered” by the examiner, it may become much harder, or even impossible, to prove infringement.

Trying to resist these amendments can also lead to extensive commentary in the file history, which may later be used against the patent owner in litigation.

Additional issues caused by description amendments include:

• reduced ability to amend the patent post-grant due to deleted sections; and
• increased costs and delays to grant due to handling of objections relating to description amendments.

How could the situation change?

The G1/25 referral gives the EBOA an opportunity to reconsider the necessity and scope of description amendments.  A more relaxed approach could reduce the burden on applicants and examiners, and bring EPO practice closer to international norms.

In most jurisdictions, it’s accepted that the claims may not be aligned with the description.  As such, Courts and practitioners are therefore well-equipped to interpret patents in this context.

Final thoughts

We welcome this referral and hope it leads to a more balanced and practical approach to description amendments at the EPO.  Given the EBOA’s recent decision in the G1/24 referral that closer aligned the EPO practice with that of the Courts, we would hope the G1/25 goes in the same direction and that G1/25 leads to a relaxing of the rules.

If you have any questions about this referral, or any aspect of intellectual property law, please do not hesitate to contact us.