The European Patent Office (EPO) has updated its examination and opposition practice following the Enlarged Board of Appeal’s decision in G 1/25, with the aim of clarifying how patent claims should be interpreted and when the description must be amended to align with them. The EPO’s Guidelines for Examination will be revised to reflect the updated practice.
A holistic approach to claim interpretation
G1/25 confirmed that claims must be interpreted using a “holistic approach”. While the claims remain the starting point and basis for determining the scope of protection, the description and drawings must always be consulted when interpreting them, rather than only where the claim wording appears unclear or ambiguous.
However, the description cannot be used to read limitations into a claim where there is no basis for those limitations in the claim wording itself. Equally, an embodiment containing additional features does not mean that those features should automatically be treated as requirements of the claim.
When must the description be amended?
Perhaps the most significant practical consequence of G1/25 concerns the requirement to adapt the description following amendment of the claims.
The key message is that formal conformity between the claims and description is not required. The fact that the description contains embodiments, examples or technical teachings falling outside the scope of the claims does not, by itself, mean that the description must be amended. This is a departure from previous EPO practice, where Examiners routinely requested that embodiments falling outside the scope of the allowed claims be deleted or marked as “not claimed”.
In future, adaptation will be required by the EPO where an inconsistency between the claims and the description results in non-compliance with a substantive requirement of the EPC, including the requirements relating to patentability, sufficiency, clarity and support, and added matter.
For example, if an independent claim requires features A, B and C, but the description states that feature C is merely optional, this may create uncertainty as to what is actually covered by the claim. That inconsistency would need to be addressed. Conversely, if a claim requires A and B while a particular embodiment describes A, B and an additional feature C, the description does not need to be amended simply because the embodiment is narrower than the claim.
The same reasoning applies to “claim-like clauses” appearing in the description. These no longer need to be routinely deleted or amended solely because they are presented in claim-like language. What matters is whether they are inconsistent with the claims and the inconsistency relates in one of the requirements of the EPC not being met.
What does this mean for applicants?
Although the EPO’s new practice should reduce the need for purely formal amendments to descriptions during prosecution before the EPO, it arguably places a greater burden on Applicants and their representatives who will now need to consider whether there is a genuine inconsistency which affects compliance with the EPC.
Applicants and representatives will need to review descriptions carefully when claims are amended. In particular, statements suggesting that a feature required by an independent claim is optional, preferred or merely something that may be present are likely to still require amendment.
Summary
Whilst the EPO’s new practice provides some relief for applicants by reducing unnecessary description amendments, there will be a greater onus on applicants and their representatives to identify those inconsistencies which could genuinely affect claim interpretation or patentability.