Spring Patent Roundup Report 2026

EPO Enlarged Board of Appeal case law update

G 1/24 –update

By way of background, the EBA referral in G 1/24 stemmed from opposition-appeal proceedings concerning European Patent 3076804 (Philip Morris Products S.A.), relating to a vaping device. In the opposition, the validity of the patent essentially turned on the meaning of the term “gathered” in claim 1. Claim 1 required that the claimed device comprise an “aerosol-forming substrate” which “comprises a gathered sheetof aerosol-forming material”. The Opposition Division interpreted this term narrowly as meaninga sheet which is “folded and convoluted to occupy a tridimensional space”, disregarding a broader definition given in paragraph [0035] of the patent, which —if applied to claim 1 —would have covered a prior art device and invalidated the patent. The Opposition Division held that recourse to the description for claim interpretation was justified only in exceptional circumstances, namely where the claimed subject-matter and/or its technical context required clarification. Where the wording of a claim was clear to the skilled person, as was the case for "gathered sheet", reliance on the description was neither necessary nor permitted. The narrower definition was therefore adopted, the prior art device fell outside claim 1, and the patent was held to be novel.

The Opponent appealed the decision, arguing that the paragraph [0035] definition should be applied to claim 1, since it made technical sense, did not contradict any established meaning in the art, and clearly encompassed the wound tobacco sheet disclosed in theprior art. The Board of Appeal (case T 0439/22) identified diverging lines of case law as to whether and when the description should be taken into account when interpreting an allegedly clear term in the claims, and referred the following question tothe EBA:

Question

May the description and figures be consulted when interpreting the claims to assess patentability and, if so, may this be done generally or only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation?

EBA answer

Yes, always

Applying this EBA decision, the Board of Appeal in T 0439/22 has now reversed the finding of the Opposition Division andfound the patent invalid for a lack of novelty. The Board thus consulted the description of the patent as required, and applied the definition of paragraph [0035] to claim 1, which thus covered the prior art and lacked novelty.

The Board was not persuaded by the Proprietor's interpretation of G 1/24 as requiring a two-step approach to claim interpretation: a first step of assessing the meaning of the claim terms “per se”, i.e. in isolation, and a second step of "consulting" or “considering” the description having already formed an initial construction of the claim meaning. The Proprietor argued that if paragraph [0035] was in any way inconsistent with the understanding of a skilled person from reading the claims, then the skilled person would stick with their initial understanding derived from the claims alone.

The Opponent argued that this approach is a clear misinterpretation of the G 1/24 decision, and that paragraph [0035] could not simply be disregarded. The Board agreed. Thus, the Board disagreed with the Proprietor that claim interpretation involves two separate, consecutive steps, and instead found that a unitary, “holistic” approach should be taken. Critically, the Board found that a skilled person could not simply ignore the definition given in paragraph [0035] and interpret the claims differently.

Notably, the Proprietor submitted an Auxiliary Request, the sole amendment of which was the deletion of paragraph [0035] from the description. The Opponent argued that the amendment was unallowable, because deletion of the definition in paragraph [0035] would extend the scope of the patent compared to the scope as granted, contrary to Article 123(3) EPC: with paragraph [0035] deleted, the term "gathered sheet" would cover arrangements not covered by the patent as granted. The Board agreed and refused the Auxiliary Request. The patent was revoked.

The refusal of the Auxiliary Request in this high-profile case is likely to add fuel to the fire surrounding referral G1/25 (discussed below), and support the arguments of those practitioners who view amending the description in line with the claims to be not only unnecessary, but (as the Proprietor found in T 0439/22) perilous.

G 1/25

In pending referral G 1/25, the EBA has been asked to decide whether there is any legal basis in the European Patent Convention for the EPO to require the description of a patent or patent application to be amended to be in line with amendments made to the claims.

EPO practice requires applicants (pre-grant) and patentees (post-grant) to adapt the description of the specification to be in line with any amendments made to the claims. For example, features which were previously optional, preferred, etc., but are now essential must be identified as such, and embodiments or examples which previously fell within the scope of the claims but no longer do so by virtue of the amendment must be identified as such or deleted from the specification.

This is an issue around which there has been a great deal of debate, in particular amongst European Patent Attorneys, who tend to regard amendment of the description for consistency with the claims as either essential for third-party certainty as to the scope of a patent, or an unnecessary waste of time which can do more harm than good.

The G 1/25 referral, stemming from appeal number T 0697/22, notably references G 1/24, discussed above, 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".

The EBA issued its preliminary opinion in G 1/25 a few weeks ago, in which it provisionally answered the referral questions as follows:

Question 1

asks whether, when patent claims are amended during opposition or opposition-appeal proceedings, it is necessary to adapt the description to remove any inconsistency introduced between the claims and description. EBA answer This depends on the type of inconsistency: if the inconsistency causes non-compliance with the EPC, then adaptation is required; if it does not, then no adaptation is necessary.

Question 2

concerns which EPC requirements necessitate such adaptation.

EBA answer

The only inconsistencies that are relevant are those that cause non-compliance with the EPC, so the Articles or Rules of the EPC that necessitate such an adaptation are those which are not being complied with.

However, the referring decision (T 0697/22) focuses primarily on Article 84 EPC and identifies two conflicting lines of case law ("First" and “Second”) regarding whether Article 84 EPC provides a basis for requiring description adaptation ("First" - yes,it does; “Second” -no it doesn't).

The EBA indicates in its preliminary opinion that what it refers to as the "First Line of Case Law" -which supports requiring description adaptation under Article 84 EPC -should be followed, rather than the approach taken in decision T 56/21 (the “Second Line of Case Law”). The Board considers many conclusions in T 56/21 to be inconsistent with decision G 1/24.

Question 3

asks whether the answer differs for examination proceedings versus opposition proceedings.

EBA answer

The Board sees no reason to distinguish between them and answers “No”.

Oral proceedings in G 1/25 were held at the EPO on 8 May 2026. Reports confirm that, unusually, the proprietor and the opponent were both in favour of discontinuing the requirement for description amendments (as were most amicus briefs), for largely similar reasons:

• There is no provision in the EPC requiring adaptation of the description: Article 84 EPC requires “fair basis” for the claims, i.e. that they are technically grounded in the description disclosure. Article 84 EPC is thus a limitation on the content of the claims, not the content of the description.
• The EPO’s practice produces unintended consequences by creating new grounds of revocation, risks “added-matter” violations and imposes an undue burden on proprietors.
• No other major patent system has the same requirement, and skilled persons reading the claims with a “mind willing to understand” can interpret the claims correctly with an unamended description.

The EPO President’s Representative responded that the practice of amending the description for consistency with the claims should be continued:

• Inconsistencies which prejudice compliance with the EPC should be removed, because they cast doubt on the subject matter for which protection is sought.
• However, the EBA should provide guidance as to what constitutes inconsistencies of the “First Type” and “Second Type”.

In view of its provisional opinion, it seems unlikely that the EBA will abolish the requirement for description amendments altogether. However, in view of the (vast) majority of EPO users seemingly being in favour of reform, perhaps some relaxing of the requirement may be in order. The EBA decision in G 1/25 is likely to issue later this year.

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