To amend or not to amend? That was the question.

Further to our previous article, the Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) has just issued an important decision, G 1/25. The decision relates to the need (or otherwise) to amend the description to align with the claims. Below are the key points of the decision as well as possible implications.

Current Practice

The EPO normally requires the applicant or patentee to amend the description for consistency the claims, for example, requiring the deemed inconsistent parts of the description to be deleted or disclaimed. However, making such amendments may have a significant impact on the scope of patent protection, and so if the patent is litigated, matters of patent infringement and patent validity may be impacted. This adaption requirement has been viewed by many in the patent profession as controversial. There is no explicit basis in the European Patent Convention (EPC) which obliges the applicant or patentee to make such amendments, and conflicting decisions have been made by the Board of Appeal on this topic.

As a typical example, a description includes multiple embodiments of the invention, and the claims are amended, for example to distinguish the invention from the prior art, so that one or more of the embodiments are now out of the claimed scope. Under current practice, the EPO would normally require the applicant/patentee to amend the description for consistency. The amendment could be a disclaimer which states that the inconsistent embodiments are not part of the invention, or may involve deletion of the embodiments in question.  Such amendments may influence as to how a court subsequently determines patent scope, with the risk that it could be detrimental to the interests of the patentee.

The Decision

The decision relies on an earlier decision of the EBA, G1/24, which relates to how patent claims are interpreted. G1/24 requires that to properly understand the scope of the claims, the description and drawings must always be consulted.

In the present decision, the EBA held that if a discrepancy between the claims and the description casts ‘real doubt’ as to the scope of a claim when the description (and any drawings) is taken into consideration with the result that a requirement of the EPC is not met, such as novelty or inventive step, then the description must be amended to resolve the doubt. The decision is applicable to all stages of EPO proceedings, namely examination, opposition and appeal.

Conclusions and Implications

This decision removes the ability of the EPO to require an applicant or patentee to amend the description simply on the basis of an apparent discrepancy between the claims and the description. Therefore, embodiments which are in the description, but are outside of the claimed scope, can be retained without amendment as long as there is not real doubt as to the patent scope and there is no non-compliance with the EPC.

It seems that in order for the EPO to require an applicant or patentee to make adaptive amendments, it will now need to detail that there is an inconsistency that causes real doubt in claimed scope, and to specify which part of the EPC is not met as a result.

It will be interesting to see whether there is a significant reduction in description adaptation requirements made by the EPO, and also the extent to which any such requirements issued by the EPO can be successfully challenged.