In G1/25, there's a new referral to the European Patent Office's Enlarged Board of Appeal tackling the issue of whether a patent description needs to be conformed to the amended claims.
The referral, stemming from T697/22, notably references G1/24 and comments that, if the description is always consulted to interpret the claims, then "any inconsistency between an amended claim and the description has become of even greater significance".
EPO Applicants will be familiar with being required to amend the description to delete reference to any embodiment no longer encompassed by the amended claims. In truth, this is very often viewed as an annoying formality, incurring unnecessary cost after substantive issues have already been dealt with. At the same time, the process is fraught with danger; whilst it's straightforward to delete an embodiment that is clearly no longer relevant, it's much more complex where the description of a now excluded embodiment potentially contains teaching which is still relevant to embodiments that are encompassed by the claims. In the referring interlocutory decision, there is an implication that strict consistency between the description and claims is a good thing, but in my view, G1/24 doesn't need to diminish the primacy of the claims, and adopting a strict requirement to conform the description also raises issues. For instance, if a claim can be broadened by deleting parts of the description, then any description amendments potentially introduce the risk of adding matter. This makes dealing with the above scenario, where a now excluded embodiment still contains relevant teaching, incredibly complicated; you can't delete the embodiment entirely because this could change how a claim feature is interpreted, but you're also limited by the extent you can amend the description to clarify the context of such an excluded embodiment - both options risk adding matter. Careful amendments to try to navigate such issues therefore place a high burden on Applicants who have already successfully been through examination and have a claim set which an Examiner already believes is clear. Beyond this, I don't see why it shouldn't be left to the courts to make their own mind up.
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