Description Amendments In The Spotlight – A Referral To The Enlarged Board In G 1/25

The European Patent Office (EPO) is unique amongst global intellectual property offices in that, before a patent will be granted, the description should be amended for conformity with the allowed claims. This practice was brought into additional prominence in 2021, with the release of new Guidelines for Examination which expanded the scope of said amendments, and added the additional recommendation that applicants be summoned to oral proceedings should they not amend the description as requested.

The amendment of the description is, perhaps, one of the most controversial areas of practice before the EPO. On the one hand, it is argued that eliminating inconsistencies between the granted claims and description is necessary for legal certainty for third parties. On the other, many applicants and attorneys are averse to the additional costs incurred, as well as the potential for description amendments to introduce new issues, such as added subject-matter, which could be fatal post grant.

Adding to this controversy is a growing body of case law from the EPO's Boards of Appeal in which the legal basis for requiring description amendments has been questioned. The issue was also touched on in the recent decision of the Enlarged Board in G 1/24, which concluded that the description and drawings shall "always" be consulted to interpret the claims.

After the surprising decision last year by the Board of Appeal in T 56/21 not to refer the question of description amendments to the Enlarged Board (see our earlier blog post here), we now have a referral in G 1/25 which seeks to provide some answers on whether the description of a patent application must be amended for conformity with the allowed claims before grant.

Case Background

The referring case, T 697/2 is an appeal by both the Patentee, Knauf Insulation, and the Opponent, Rockwool International, against the Opposition Division's decision to maintain European Patent EP2124521 on the basis of an Auxiliary Request (i.e., in amended form).

The Patent itself relates to a method for growing a plant in a hydroponics growing medium comprising mineral fibres and an organic binder. The claims of the Auxiliary Request specified, amongst other features, that the binder was "based on reaction products obtained by curing an aqueous solution comprising citric acid, ammonia and dextrose".

The Auxiliary Request also included an amended description; however, the Opponent was of the view that this description was inconsistent with the amended claims. Specifically, the Opponent highlighted that the definition of the binder given in the amended description was broader than that defined by the claims, with the components of citric acid, ammonia, and dextrose being indicated as optional. The Opponent argued that this inconsistency introduced a lack of clarity. The Opposition Division disagreed, finding that any alleged inconsistency was present in the Patent as granted, and therefore could not be examined as part of the Opposition (at the EPO, a lack of clarity is not a Ground of Opposition unless introduced by amendments during the Opposition). The Opposition Division therefore found the Auxiliary Request to be allowable.

The Referring Decision

On Appeal, although the Board agreed that the subject-matter of the Auxiliary Request was novel, inventive, and sufficiently disclosed, they disagreed with the Opposition Division's conclusion that clarity was not an issue.

According to the Board of Appeal, the additional features relating to the binder had only been optional in the patent as granted, but were made mandatory in claim 1 of the Auxiliary Request (see part 10.2 of the Referring Decision). Thus, in line with the principles of G 3/14, the Board concluded that the claims of the Auxiliary Request could be assessed for clarity.

As previously noted, the Opponent highlighted that the amended description of the Auxiliary Request included a broader definition of the binder than defined in the claims. The Board agreed that there was an inconsistency in this definition, and therefore concluded that the allowability of the claims turned on whether this inconsistency between the claims and description was in contravention of the European Patent Convention (EPC).

For a decision to be referred to the Enlarged Board, it is necessary for a Board of Appeal to show that there is a divergence in European case law that must be resolved. To this end, the referring Board identified a first, more established, line of case law that there is legal basis in the EPC for the requirement that the description be amended for conformity with the claims. However, these cases do not agree on the precise legal basis, with five separate lines of argument identified by the referring Board. Article 84 EPC (clarity) is most frequently cited, either alone or in combination with other parts of the EPC, such as Rule 42 EPC (content of the description), and/or the general legal principles (see points 14.3.1 to 14.3.5 of the referring decision).

The second line of case law is more recent (starting with T 1989/18). These decisions are fewer in number and exclusively limited to appeals from examination proceedings. In general, the Boards of Appeal in these decisions were of the view that the clarity of the claims is not affected if the description contains subject-matter which is not claimed. One interesting point raised was that in the Travaux Préparatoires (the minutes of the meetings which led to the EPC), there was general acceptance that a patent application should not be refused even if it contained statements or subject-matter contrary to "ordre public" or morality. As such, it was argued that it could not have been the intent of the drafters of the EPC to refuse applications for "less severe" reasons such as a lack of clarity resulting from inconsistencies between the claims and description.

In view of the above, the Board of Appeal in T 697/22 referred three questions to the Enlarged Board:

1. If the claims of a European patent are amended during opposition proceedings or opposition-appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description of the patent, is it necessary, to comply with the requirements of the EPC, to adapt the description to the amended claims so as to remove the inconsistency?
2. If the first question is answered in the affirmative, which requirement(s) of the EPC necessitate(s) such an adaptation?
3. Would the answer to questions 1 and 2 be different if the claims of a European patent application are amended during examination proceedings or examination-appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description of the patent application?

Since referrals to the Enlarged Board should always relate to questions of fundamental importance to European patent law, such referrals are often used as a reason to stay other proceedings until a decision has been reached. However, the President of the EPO has since confirmed that "For legal certainty and in the interests of all stakeholders, the EPO will continue examination and opposition proceedings while referral G 1/25 is pending". The President's decision here is not particularly surprising since the question of whether the description should be amended for conformity with the claims affects almost every granted European patent, and the EPO likely does not wish to add to their current backlog of patent applications.

Conclusions

The next step in G 1/25 is simply to wait and see how the Enlarged Board responds. As with all referrals to the Enlarged Board, there is a chance that the referral may be rejected, or the questions reworded. However, assuming that the Enlarged Board proceeds with the case, we can expect Oral Proceedings for both parties to put forward their arguments, followed by a decision in approximately a year's time. We look forward to future developments from the Enlarged Board in this referral, and will be reporting on these in our blog in due course.