As any observer would have noticed, the oral proceedings did not give anything away. There does appear to be a risk that the Enlarged Board of Appeal continues with its current practice of resolving the referral at a high level, while leaving many of the more practical questions largely unanswered. If they do, then I think the role of the EBA needs to be brought into question. Can they actually resolve these sorts of questions as efficiently as practitioners would like? A further example is the new referral (G 1/26) on claim interpretation, a subject that many practitioners expected to have been settled by the written decision in G 1/24.

In this referral (G 1/25) the Enlarged Board will, of course, need to address the legal basis for any adaptation requirement. But a decision consisting only of broad or vague statements about clarity, support, or the role of the description would risk perpetuating the very uncertainty that gave rise to the referral. General propositions are unlikely to bring consistency if different decision-makers remain free to draw different conclusions about what must be amended and why.

What is needed is practical guidance. If adaptation is required by the EPO, the profession deserves a clear framework identifying the types of inconsistency that are objectionable and those that are not. If adaptation is not required in every case, the limits should be stated explicitly. The EPO’s current practice has developed through a patchwork of guidelines, Board decisions and examination practice; G 1/25 offers a rare chance to establish a coherent and predictable standard.

However, I’m not sure the Enlarged Board’s framework allows them to provide this. Instead they can only answer the questions given to them, and usually do so only to the extent necessary.

The debate over adaptation of the description has never really been about abstract legal principle alone. Practitioners, examiners, opposition divisions and Boards have spent years grappling with what adaptation actually requires in practice. Which inconsistencies matter? Which do not? When does an embodiment outside the claims become objectionable? Is deletion required, or is labelling sufficient? These are the questions that drive cost, delay and procedural disputes.

There is also the question of whether applicants should be permitted to amend the description voluntarily, even if not strictly required by the EPO. The mechanism for doing so is unclear, since voluntary amendments are generally only permitted prior to examination, yet at that stage an applicant is unlikely to know the eventual scope of the claims.

The profession needs practical guidance on what adaptation of the description actually requires. G 1/25 is the Enlarged Board’s opportunity to provide it, but one wonders whether it will do so. Indeed, one may even wonder whether it is able to do so within the confines of the referral procedure itself.