Referral on description amendments confirmed (G1/25 – “Hydroponics”)

In the first referral of 2025, the question “whether applicants and patentees must amend the description to conform to the allowed claims” has now been referred to the EBA (G1/25).

 

Adaptation of the description

The Guidelines currently require that, when adapting the description, the applicant must either delete subject matter not covered by the claims or explicitly state in the description that such subject matter is not part of the invention.

 

However, the issue with description amendments causes controversy for a number of reasons. Firstly, amendments made to the description of the patent application may influence interpretation of the claims under the doctrine of equivalents in national court proceedings. Furthermore, the claims of the granted patent may be interpreted at opposition in view of the description of the patent as granted and not the description of the application as filed (see T471/20). As such, amendments to the description may add matter and invalidate the patent. These potential risks, and the less than clear legal basis for the requirement, have led to considerable dissatisfaction with the EPO's uncompromising approach to description amendments.

 

G1/25: Case background

The background to the G1/25 is referral concerns patent EP2124521 (Hydroponics growth medium). The patent, owned by Knauf Insulation, was opposed by Rockwool International, with both parties appealing the interlocutory decision from the Opposition Division.

 

EP2124521 relates to a method of growing a plant in a special hydroponics growing medium. Claim 1 of the key request on appeal defined the organic binder in the growing medium with a great deal of specificity, including requiring that the binder was “based on reaction products obtained by curing an aqueous solution comprising citric acid, ammonia and dextrose”. This feature was incorporated from the dependent claims of the patent as granted and significantly narrowed the scope of claim 1.

 

The opponent argued that this amendment introduced a fatal flaw because it rendered the original description, and the amended description filed at first instance proceedings, inconsistent with the claims. More specifically, the description described the binder in much broader and more optional terms than the amended claim. The Opponent argued that what was described as optional in the description had become mandatory in the claim. The Opponent thus submitted that, because of this inconsistency, the claims were not "supported by the description" as required by Article 84 EPC.

 

The Board of Appeal in the case (T697/22) agreed with the Opponent that the amendment had indeed "introduced an inconsistency" between the claim and the description. The Board found that the allowability of the request was therefore entirely dependent on the question of whether such an inconsistency was a legal impediment to maintaining the patent (r. 2.2).

 

The Board of Appeal's search retrieved 115 relevant decisions and concluded that there are two lines of clearly diverging case law (r. 12), with the first line of case law affirming that the description must be adapted.

 

However, the Board of Appeal noted that there is no consensus on the legal basis for this requirement. Some decisions have relied on Article 84 EPC alone (T1024/18), whilst others cite Article 84 EPC in combination with other provisions (T438/22). By contrast, the second (more recent) line of case law argues there is no legal basis whatsoever in the EPC for this requirement. This view holds that the support requirement of Article 84 EPC does not preclude the description from containing unclaimed subject-matter and that forcing adaptation is a policy choice for the legislator, not the EPO (T56/21).

 

Referral confirmed (G1/25)

In light of this, it has now been confirmed that the Board of Appeal in T697/22 has referred the following questions to the EBA: 

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?

 

Conclusion

In its decision, the Board of Appeal made a number of references to previous EBA decision G1/24. The Board of Appeal specifically found that G1/24 reinforced the need for a referral. Specifically, the Board of Appeal noted that, because G1/24 requires that the description and drawings must always be consulted to interpret the claims, the issue of whether there can be an inconsistency between a claim and the description has "become of even greater significance”.

 

As seen with other recent referrals, it is possible that G1/25 will not provide the clear answer that many practitioners are looking for. If the EBA holds true to its recent approach, it may also only superficially provide an answer and leave it to the Boards of Appeal to interpret what this means in view of the existing case law.

 

For further information, please contact Olivier Martinez.