Finally a referral to the Enlarged Board of Appeal on description amendments (G1/25)
05 August 2025
4 min read
The unique requirement by the EPO to amend the description to conform to the allowed claims has been a matter of debate for many years. These description amendments entail a risk to add subject-matter to the application and may influence claim interpretation in later national court proceedings. Particularly since the 2021 Guidelines for Examination imposed a stricter approach requiring to delete subject matter not covered by the claims or to explicitly state in the description that such subject matter is not part of the invention, conflicting decisions on the matter emerged from the Boards of Appeal.
In opposition-appeal case T697/22 underlying the referral, claim 1 of an auxiliary request which was otherwise found allowable, had been narrowed compared to the claims as granted, while the description had not been amended accordingly. The Opponent objected that the amended, narrower claim was not supported by the description as required by Art. 84 EPC.
The referring Board of Appeal agreed with the Opponent that the claim amendment had introduced an inconsistency between the claim and the description. As such, the allowability of the request entirely depended on whether the inconsistency had to be removed in order to comply with the requirements of the EPC.
The Board identified divergent case law. One line of case law affirms the EPO’s practice to require the description to be amended in line with the amended claims, albeit there was no consensus on the legal basis. Many cases relied on Article 84 EPC alone, while others cited Article 84 EPC in combination with other EPC provisions. More recent case law on the other hand argues that there is no legal basis in the EPC for requiring description amendments.
In its interlocutory decision of July 29, 2025, the Board of Appeal in case T697/22 has therefore referred the following questions to the Enlarged Board of Appeal:
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?
Notably, in the referring decision (see 21.4), the Board refers to the recent decision G1/24 on claim interpretation wherein it was stated that the “description and drawings shall always be consulted to interpret the claims when assessing patentability” to emphasize the fundamental character of the referred questions.
Interestingly, although the case in question relates to opposition-appeal proceedings (post-grant stage), the referring Board has also included the third question related to examination and examination-appeal proceedings (pre-grant stage) given that the same divergence of case law exists of examination and examination-appeal proceedings as for opposition and opposition-appeal proceedings. However, it remains to be seen whether the EBoA will answer that question, which does not appear directly relevant to the case before the referring Board.
We hope that the Enlarged Board of Appeal finds the G1/25 referral admissible and provides clear answers to the referred questions such that we finally get some guidance as to the extent of amendments to the description needed to comply with the EPC requirements. We will follow the developments in this case with great interest and will keep you updated.
Even though the answers to the referred questions might have a significant impact on examination and opposition proceedings at the EPO, the President of the EPO has decided in a Notice dated August 4, 2025 that proceedings before the examining and opposition divisions should continue to ensure the proper functioning of the EPO and for legal certainty.
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January 30 marked the deadline set by the Enlarged Board of Appeal (EBoA) to file written statements regarding referral G1/25. This deadline concerned the parties to the proceedings, third parties not taking part in the proceedings (also known as amicus curiae) and the President of the European Patent Office (EPO). You can read the background information relating to the G1/25 referral in our article of August 5, 2025 here.
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