The Enlarged Board of Appeal issued its decision in G 1/25, concerning the need to amend the description of a patent or patent application to remove inconsistencies with amended claims.
Jakob Pade Frederiksen, Peter Koefoed and Anne Rath Skov-Kjær of @Inspicos represented the Opponent, ROCKWOOL A/S, in the proceedings before the Enlarged Board of Appeal. They argued that, as a consequence of G 1/24, inconsistencies affecting claim interpretation and thus patentability must be dealt with in a unitary process, considering the claims and the description together, whereas Article 84 EPC does not exclude the presence of, for example, non-claimed embodiments in the description.
In its decision, the Enlarged Board of Appeal indeed builds on G 1/24, concluding that claim interpretation results from reading the claims and the description together in a unitary process – a “holistic approach” – to determine the meaning that the skilled person gives to the claim wording in the context of the application or patent as a whole.
The Enlarged Board considers that an inconsistency between the claims and the description exists only where the description suggests an understanding of a claim that is incompatible with its apparent meaning. Such an inconsistency may affect compliance with Article 84 EPC where, for example, it leaves unclear whether information, examples, subject-matter or embodiments fall within the scope of the claim.
Importantly, however, the Enlarged Board also notes that the EPC, including Article 84 EPC, does not require purely formal concordance between the claims and the description.
The order of the Enlarged Board of Appeal reads as follows:
”If the claims of a European patent, or patent application, are amended during proceedings before the departments of the EPO, or in appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description, including any drawings, of the patent, or application, and because of that inconsistency Articles 52 to 57, 76(1), 83, 84, 123(2) or 123(3) EPC are not complied with, it is necessary to adapt the description, including any drawings, to the amended claims so as to remove that inconsistency”.
We expect this decision to significantly facilitate the handling of so-called description adaptations for applicants and proprietors going forward.
