T 1044/23: application of G 1/23 to un-enabled products

A recent decision from the EPO Boards of Appeal, T 1044/23, has followed the finding in G 1/23 that a product placed on the market is prior art, regardless of whether the product can be reproduced. The decision, however, makes G 1/23 potentially rather limited in terms of how far it can be applied. 

The patent in question, EP3161066, claimed a polyethylene composition in terms of various parameters. Claim 1 as granted read as follows: 

Polyethylene composition having the following features:

1. density of from 0.950 to 0.970 g/cm³, determined according to ISO 1183 at 23°C;

2. MIE from 1 to 30 g/10 min;

3. ratio MIF/MIE from 15 to 30, in particular from 20 to 29 or from 22 to 29, where MIF is the melt flow index at 190°C with a load of 21.60 kg, and MIE is the melt flow index at 190°C with a load of 2.16 kg, both determined according to ISO 1133;

4. ER values from 0.40 to 0.52

The patent was opposed on the grounds that the claimed invention covered two products that were available before the filing date, both being high density polyethylene (HDPE) resins available from the Dow Chemical Company (the opponent). Evidence for the products being available was provided by product datasheets and dated invoices. Certificates of analysis of the products were also provided to show the relevant parameters, which are summarised in the table below.

	Density	MIE	MIF/MIE	ER
Claim 1	0.950-0.970 g/cm3	1-30 g/10 min	15-30	0.40-0.52
D1 DMDA-8904 NT7	0.9516 g/cm3	4.11 g/10 min	22.8	0.50
D9 DMDA-8907 NT7	0.9516 g/cm3	7.08 g/10 min	22.3	0.49
Aux 1		1-25 g/10 min
Aux 2	0.955-0.970 g/cm3

The opposition division, following G 1/92 and the later decision T 1833/14, found that the two products were not considered prior art under Article 54(1) EPC “because their manufacture was not enabled” (point 19 of the decision). They also found the patent to be inventive over two other cited documents due to these documents not disclosing all the parameters in claim 1, in particular the ER value (relating to rheological polydispersity).

The opponent appealed the decision and argued that, according to G 1/23 (which issued after the opposition decision), the requirement for the product to be reproducible was no longer a valid criterion to exclude a commercial product from the prior art. Since both D1 and D9 resins were publicly available before the filing date of the patent, and the evidence showed that both fell within the scope of claim 1, the patent was not novel in view of either resin.

The Board referred to point 1 of the decision in G 1/23, which states:

“A product put on the market before the date of filing of a European patent application cannot be excluded from the state of the art within the meaning of Article 54(2) EPC for the sole reason that its composition or internal structure could not be analysed and reproduced by the skilled person before that date.”

The Board found that, according to the evidence provided, there was no reasonable doubt that the resins were supplied to customers before the filing date of the patent. The resins were therefore considered to be within the state of the art according to Article 54(2) EPC. There was no dispute that the resins did fall within the scope of claim 1 as granted, so the Board found that claim 1 lacked novelty. The first auxiliary request, which limited the MIE range to 1-25, made no difference and therefore also lacked novelty.

The second auxiliary request limited the density to the range 0.955-0.970 g/cm³, which was higher than either prior art resin and therefore novel. The question was then whether the commercially available resins could be considered to be the closest prior art, given that methods to prepare them were not publicly available. G 1/23 only provided guidance on that point to the extent that a commercial product could be selected as the closest prior art but depended on the specific circumstances because the relevant technical teaching that a skilled person would take from the product would always be case specific. The Board referred to comments in G 1/23 about it being obvious to add lemon juice to Coca-Cola for a less sweet taste, even though the recipe was secret. In the present case, even though the resins were not fully reproducible, there was no reason why they could not be a realistic starting point for further developments.

Starting from either resin, the problem to be solved was, in the Board's view, at best the provision of an alternative composition, given that the patent showed that increasing the density tended to result in poorer properties. In light of this, no particular pointer in the prior art would be required. Although the appellant/opponent argued that the skilled person would know how to adjust the density of the resins while maintaining other properties within the claimed ranges, the Board considered that no evidence was provided of what the skilled person would have done to adjust the parameter. It followed that it was not credible that the skilled person would know how to modify the resins to get within the scope of claim 1. The claim according to the second auxiliary request was therefore found to be inventive.

The Board also found that claim 1 of the second auxiliary request was inventive over another of the cited document (D6), which disclosed all parameters except for the ‘ER’ value within the claimed range. Again, the objective problem was considered to be the provision of an alternative composition, but the Board concluded that it was not obvious how the skilled person would obtain a composition within the claimed range starting from the resins disclosed in D6.

The end result of all this appears to be that the scope of G 1/23 for using un-enabled prior art products is going to be limited if the patent claim has the slightest point of novelty, given that it will need to be shown how the skilled person would be able to change the product without knowing how to make it. Even if it is clear that the change would result in a poorer product, this can still result in a finding of inventive step. 

 

Proposed changes to the epi disciplinary procedures

All European Patent Attorneys (EPAs) are automatically members of the Institute of Professional Representatives before the European Patent Office, known for short as epi (deliberately lowercase, for reasons unknown) and have to abide by its rules and regulations. These include a code of conduct, which sets out how EPAs should behave. Alleged breaches of this code, if they come before the epi via a complaint raised against a member, are judged according to the Regulation on discipline for professional representatives. If a member is found to have not complied with the code of conduct, they can face a warning, a reprimand, a fine or, in extreme cases, deletion from the list of professional representatives. Who gets to decide on this, and how, is the task of the disciplinary system of the epi. At the moment, this is made up of the Disciplinary Committee (DC) and the Disciplinary Board (DB). The diagram below illustrates how this system currently works. The DC is made up of 39 members, one from each of the EPC member states, all of whom are EPAs, and is effectively the first point of call for any complaint that makes it to the epi. Each member of the DC is proposed by the epi Council and is either elected or appointed by the Council. The DC decides on complaints and refers serious cases (which are those that may require a fine or deletion) to the DB, which is made up of epi members and lawyers from the EPO. The DC, which only meets a few times a year, can typically take between around 5 and 15 months to decide on a case, while the DB can take longer (in some cases a lot longer), which can stretch the disciplinary procedure to several years. There have been moves to speed up procedure at the DB level but without changing the basic structure of the system. 

An important point to note is that the number of cases the DC and DB have to deal with is small. A total of 72 cases have been considered by DC between 2012 and 2024, averaging around 5 or 6 per year. Of these, only 21 have been referred to the DB. The vast majority of EPAs will therefore not need to have anything to do with the disciplinary procedure and. If they do, will be first judged by their peers and, in most cases, complaints are either dismissed or only minor action is taken. This does not mean that the profession is simply looking after its own regardless of behaviour but more that the profession is in general well run with the great majority of its members being trustworthy and competent (although there are, of course, exceptions that tend to stand out). Appeals from the DC/DB can be made to the disciplinary board of appeal at the EPO and the overall rules are set and amended by the Administrative Council of the EPO. 

One might think that the current system, although slightly odd in having effectively two first instances, would not need changing. If any changes were being considered, there would presumably be wider consultation among those who would be affected, namely all EPAs. However, based on information I have recently received, it appears that changes to the disciplinary system are about to be pushed through that would alter the system in major ways and possibly without any consultation among EPAs. The proposed changes, which are illustrated in the diagram below, in simple terms involve the removal of the DB and consolidating the first instance into a single DC but with a different composition and with much less input from EPAs. 

The details of the changes are not yet clear (at least to me) but appear to involve the EPO having a much greater role in the composition of the replacement DC (which will probably have a different name) and with epi members having a consequently reduced role and therefore less control. The new DC will not have a member from each country and will become less independent from the EPO through including paid lawyers from the EPO on the new DC (all epi members of the current DC are unpaid for their time, while the EPO lawyers would be). While some changes might be worth doing to make the system more efficient, what is slightly disturbing to me is that the proposed changes are apparently being rushed through at what appears to be an unseemly pace. A meeting of the epi Council in just a few days' time could in theory make a decision on what changes are going to be made, followed a few days later by a meeting of the Administrative Council to implement the changes. While it seems unlikely that such an accelerated process could actually happen, this is what appears to be in the works Is there some kind of coup going on by the EPO and others to take over the process, or will normal epi members be fully informed and consulted before anything changes? We should find out soon enough. 

T 697/22 (G 1/25) - Enlarged Board Referral on Description Amendments

I wrote a few months ago about a case at the boards of appeal, T 697/22, where a possible referral to the Enlarged Board (EB) on the question of whether description amendments are required. At the time, the board were considering four questions to be raised to the EB to resolve the issue, and asked the parties to the appeal proceedings for comments. The parties then provided comments and the board has now issued their decision. Three of the questions initially proposed are now to be referred, which are:

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?

The case in question related to a patent that was opposed and then maintained in amended form. Both parties appealed and the Board ended up deciding that the claims on file according to an auxiliary request were allowable. Due to amendments made to the claims, however, there then existed an inconsistency between claim 1 and parts of the description that described certain claimed features as optional. Based on what was then on file, the Board had to decide whether this inconsistency was in contravention of the requirement of Article 84 EPC that the claims must be supported by the description. The decision that needed to be made was whether this inconsistency made the request allowable or not allowable, giving rise to the first question. 

The Board reviewed the existing case law and found some decisions that were in favour of aligning the description with the claims and others that were not. This resulted in two lines of case law that were clearly diverging. 

According to the first line of case law, adaptation of the description was required when amendments to claims introduced inconsistencies. The leading case on this was identified as T 1024/18, which stated: "According to long established case law of the Boards of Appeal, [Article 84] has been interpreted as requiring the entirety of the description to be consistent with any claims found to meet the requirements of the EPC." This reasoning was followed by T 447/22, T 2685/19, T 1516/20, T 121/20, T 2293/18, T 1968/18, T 2766/17, T 2378/13 and T 3097/19. Other decisions that also came to the same conclusions  included T 169/20, T 673/22 and T 1784/21. In all these decisions, the Board found that the common underlying principle was that there is a legal basis requiring the description to be consistent with the amended claims. Although the principle legal basis provided in most cases was Article 84 EPC, this was not consistently applied. Some decisions cited Rule 42 EPC, either alone or in combination with Article 84, while others referred to a more general legal requirement or cited other provisions including Rules 48 and 71(1) in support. 

According to the second line of case law, which had developed more recently, there was no legal basis for refusing a patent application if there was an inconsistency between any amended claims and the description. This line of case law was started by T 1989/18, which was followed by T 1444/20 and most recently and prominently T 56/21 (see my post here). Other decisions such as T 2194/19 also reached a similar conclusion. According to this line of case law, any inconsistencies between the claims and the description were the applicant's responsibility alone. T 1989/18 for example found that, if the claims were clear in themselves, their clarity was not affected by the description containing unclaimed subject matter, while the board in T 2194/19 rejected both Article 84 and Rule 42 EPC as a basis for adaptation of the description. The board in T 56/21 went further in finding that neither Article 84 EPC nor Rules 42, 43 or 48 provided a legal basis for requiring the description to be amended. 

The Board also referred to a recent UPC decision from Sweden (AGFA NV v Gucci Sweden AB), which found that, although the description should always be referred to when interpreting the claims (which of course is now also a requirement at the EPO following G 1/24), an apparent inconsistency between the claims and the description was not an impediment to upholding a patent with a broader description than a more limited claim. A patent proprietor could not, however, rely on such an inconsistency to interpret a limited claim. 

In summary, the Board decided that question 1 was needed because this determined whether the patent in question was allowable or not and was necessary to resolve the disagreement in the divergent case law. Question 2 was needed to determine, if there was such a requirement, what the legal basis was. Finally, question 3 was needed because the same issue arose during examination proceedings, which the more recent case law had come from. The Board also made reference to G 1/24, following which the question of whether an application could be granted or a patent upheld if there was an inconsistency had become of even greater significance. 

We will now therefore finally, after a couple of previous false starts, get the chance to find out if the EPO's current practice in requiring applicants to amend the description is correct, which many find to be an unnecessary burden, or if the whole thing should be scrapped. I know which way I would decide. We will, however, need to wait a little while to find out. 

UPDATE 5/8/25: The EPO has issued a notice mentioning the G 1/25 referral and which states that "the President of the EPO has decided that proceedings before the examining and opposition divisions should continue". This will mean that the current Guidelines for Examination will continue to apply while the referral is pending and that cases where amendments to the description have been required will not be stayed pending outcome of the referral. Given that this will apply to practically all applications currently pending at the EPO, this is not very surprising. The EPO would clearly prefer it if proceedings did not grind to an almost complete halt while the Enlarged Board consider which way to go.

G 1/23: Reductio Ad Absurdum

The reductio ad absurdum logical argument is a well known way of disproving an initial statement by showing that it leads to an absurd conclusion. If the initial statement is either true or false, the argument when properly applied inevitably leads to the conclusion that the opposite must be true. A well known application of the argument is the proof that there are infinitely many prime numbers, which dates back to ancient Greek times and is attributed to Euclid. The proof starts by assuming there are infinitely many prime numbers and figuring out the consequences. Following a series of logical steps, it can be clearly shown that the statement cannot be true because there is a number that is the product of all primes plus 1 that is either itself prime or cannot be divided by any prime, meaning there must be a prime number greater than all the primes initially assumed. Therefore, the initial assumption must be wrong and there must instead be infinitely many prime numbers. 

I have never before seen this type of argument being used in legal decisions, probably because legal analysis is typically quite different and is rarely as clear cut as to be amenable to logical proof. The recent decision of the Enlarged Board of Appeal in G 1/23 is the first example I am aware of that actually uses this argument, which it does in coming to an apparently definitive answer to the question of whether a product that is put on the market must be reproducible by the skilled person to be considered part of the state of the art. 

The argument is used by the EB to reject an interpretation of the prior decision G 1/92 that a non-reproducible product would be entirely excluded from the state of the art. The EB first assumes that this interpretation of G 1/92 is true, i.e. that a product put on the market, if not reproducible (i.e., the skilled person cannot manufacture it from scratch using different starting materials), is entirely excluded from the state of the art. This means the product, including all its properties, is treated as if it does not exist for the purposes of assessing novelty and inventive step under Articles 54(2) and 56 EPC (see point 44).

The EB then explores the logical implications of this assumption, focusing on the concept of reproducibility and the skilled person’s reliance on common general knowledge, which is derived from the state of the art (points 50–54). The skilled person’s common general knowledge is limited to what is part of the state of the art. If non-reproducible products are excluded from the state of the art, they cannot be part of the skilled person’s common general knowledge (point 57). The EB interprets “reproduce” as manufacturing the product by a different route, not simply obtaining it from the market (point 38). Thus, the skilled person must rely on starting materials that are themselves reproducible and part of the state of the art to recreate the product (point 58). To reproduce a product, the skilled person must use starting materials that are reproducible. However, these starting materials themselves require precursor materials, which must also be reproducible, and so on (point 59). This creates a regress where every material must be reproducible without relying on merely available (but non-reproducible) materials, such as naturally occurring substances or chemical elements (point 60). The EB then argues that this assumption leads to an absurd result: if only reproducible materials can be considered part of the state of the art, then no material in the physical world would qualify as state of the art. This is because all materials ultimately rely on non-reproducible starting materials, such as chemical elements or naturally occurring substances like crude oil, which cannot be synthesized from scratch by the skilled person (points 60–63). For example, chemical elements (e.g., carbon, oxygen) cannot be reproduced; they are taken from nature or the market. Even simple compounds or raw materials (e.g., crude oil) are not trivially reproducible, yet they are undeniably part of the technical reality the skilled person works with (point 61). If non-reproducible products are excluded, the state of the art becomes an “empty set” (point 65), meaning that no technical teachings, whether from products, documents, or oral disclosures, could be considered prior art, as they all depend on non-reproducible materials at some point. This outcome is described as “manifestly absurd” (point 72) because it contradicts the practical reality that skilled persons routinely use commercially available or naturally occurring materials in their work (point 67). Since the assumption that non-reproducible products are excluded from the state of the art leads to the absurd conclusion that the state of the art is empty, the assumption must be false. Therefore, the EB concludes that a product put on the market cannot be excluded from the state of the art solely because it is not reproducible (point 80). Instead, the product and its analysable properties are part of the state of the art, regardless of reproducibility, as long as they are publicly available (Headnote I and II). As a result, the EB reinterprets G 1/92 to align with this conclusion, concluding that “reproducibility” should include obtaining the product from the market in its readily available form, rendering the enablement requirement redundant (point 73). This ensures that commercially available products, even if not reproducible by manufacturing, are part of the state of the art, and their analysable properties can be considered for novelty and inventive step assessments (point 74).

The reductio ad absurdum argument used by the EB is effective here because it shows that the enablement requirement, as suggested by an interpretation of G 1/92, leads to an impossible and impractical outcome, which would exclude all materials from the state of the art. This contradiction with technical reality and the purpose of patent law (to assess inventions against what is publicly available) forces the rejection of the enablement requirement for products that have been put on the market. The argument underscores that the state of the art should include all publicly available technical information, regardless of whether the skilled person can replicate the product from scratch. 

G 1/24: The Return of the Angora Cat

I wrote some thoughts about the then pending case of G 1/24 back in October 2024. As it turned out the Enlarged Board came to roughly the same conclusion, at least on the first two questions. You will all have read the decision already, but just for reference here was the conclusion from the Enlarged Board:

The Angora cat is angry.

"The claims are the starting point and the basis for assessing the patentability of an invention under Articles 52 to 57 EPC. The description and drawings shall always be consulted to interpret the claims when assessing the patentability of an invention under Articles 52 to 57 EPC, and not only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation."

This seems to be fairly clear, at least in the context of the opposition case that led to the referral. This was all about whether a clear term in a claim should be interpreted more broadly than a normal reading would suggest if the description provided a broader definition. The EB's decision indicates that it should. Most would agree that this is a good thing, since patent proprietors should not be permitted to defend their patent with a narrow interpretation and then have the option open afterwards to interpret the claim more broadly to cover infringers. This would most likely not happen in the case such as in G 1/24, since courts across Europe, including the UPC, all agree that the description and drawings should be used to interpret the claims. The Angora cat in cases such as this therefore seems to have been put down. 

G 1/24 will already be having an effect on opposition cases now underway, where opposition divisions will be pointed towards the description and drawings where a particular term in a claim should be given a broader meaning. This should be good for opponents, who should now be able to argue more successfully for some claim features being broader and therefore more likely to be covered by the prior art. There are, however, always unintended consequences. 

An example of potential unintended consequences arose very recently during opposition oral proceedings in a case for which I was the representative for the opponent. Claim 1 of the patent in question, which was very poorly drafted (at least by UK standards), had various terms that were broad or unclear and required interpretation. For the opponent, I interpreted the claim broadly so as to cover the prior art, which it did. The preliminary opinion of the opposition division agreed, finding claim 1 of the patent to lack novelty, along with various auxiliary versions the proprietor had submitted. Nothing then happened until the oral proceedings, with the proprietor not even submitting any written submissions in advance. At the hearing, however, the proprietor submitted a further request to add more features to claim 1 from the description and proceeded to argue on the basis of G 1/24 that the claim features should be interpreted narrowly to be clear, novel and inventive over the prior art. What concerned me, (other than the frustratingly late submissions and the OD's decision to admit them) was that G 1/24 is now being used by attorneys to argue for claim features to be interpreted narrowly based on the description in order to get around the prior art. What was more concerning though was that the OD appeared receptive to these arguments and ended up maintaining the patent as amended, even though claim 1 was still fundamentally flawed in various ways. Is this perhaps an early sign that G 1/24 is being used to bring back the Angora cat in another form, allowing unclear and badly drafted claims to be made allowable on the basis of the description filling in the gaps? One case is of course not representative, and this is only my immediate impression, but if the argument can be made then others will surely also try. I can see this kind of thing ending up in T decisions before too long.

Another problem with dates

Working in patent practice requires, among other things, a keen eye for due dates. Getting a due date wrong by just one day can make a big difference. This can sometimes make all the difference for a patent application, as a recent example I wrote about here demonstrated. There are many other instances of critical due dates under the UK Patents Act and Rules where it is very important to know when a particular period ends. 

I wrote a long while ago about a decision from the UK IPO (Rigcool v Optima Solutions), in which the issue was about how to calculate the end of "a period of two years beginning with the date of grant" under Section 37(5) (as it was then worded), in relation to when proceedings for entitlement could be commenced for a granted patent. Did the period end on the day of the anniversary of grant or the day before? Following reasoning derived from how the term of a patent under Section 20 is calculated, this was determined to be the latter, i.e. the last day on which entitlement proceedings could be initiated was the day before the anniversary. This turned out to be very important in the case in question, since the claimant had filed on the anniversary of the date of grant, which was determined on this basis to be one day too late. 

Following that case, some amendments were made to the Patents Act and Rules by The Patents (Amendment) Rules 2011 (SI 2011 No. 2052) and the Intellectual Property Act 2014, which adjusted the wording used in various places in the Rules and Act respectively to clarify that any periods specified were supposed to end on the anniversary and not the day before. One example in the Rules was the period under Rule 32 for making a request for reinstatement of an application. This was one of the periods that was previously specified as being "beginning with", which was then changed to "beginning immediately after". The relevant period under Rule 32 was then defined as "twelve months beginning immediately after the date on which the application was terminated". The situation was then made clear that the period would end on the anniversary and not the day before. Or so we may have thought. 

In a recent judgment from the High Court in Ahmad v Comptroller-General of Patents, Designs and Trade Marks [2025] EWHC 936 (Pat), Mr Justice Mellor decided on an appeal by the claimant Mr Ahmad in relation to his patent application, which had been refused by the UK IPO in 2021. Mr Ahmad made various accusations and complaints about being badly treated by the UK IPO, accusing the Office of "malicious comments that are illegal and against all the guidelines with lots of fraud", among other things. It was fairly clear that Mr Ahmad, who was self-represented, was not particularly familiar with the usual way of prosecuting patent applications in the UK and was somewhat chaotic and unreasonable in his dealings with the UK IPO. Faced with Mr Ahmad's numerous failings and utterly hopeless arguments, Mellor J had no difficulty in striking out his claim by summary judgment, finding Mr Ahmad's claims to be totally without merit. One of the points raised was whether Mr Ahmad could have requested reinstatement of his application, which he failed to do. This was certainly not a deciding factor in the case, but Mellor J noted what the due date for making such a request would have been, calculating it in the following way: 

"The termination of the application was effective on 31 August 2021 (one day after the two month extension window elapsed following 30 June 2021). By operation of r. 32 (under s.20A) the applicant is then given a generous, but fixed, deadline within which to seek reinstatement. In Mr Ahmad's case, it was a deadline of 31 August 2022: twelve months after the application was terminated on 30 August 2021. That period is set by r. 32(1) and –(2) PR07, and is not extendable: see r. 108(1) PR07 and its Sch. 4 Part 1" (paragraph 50, emphasis in the original).

The letter from the UK IPO that started the period for requesting reinstatement referred to the application not being in order for grant on 30 August 2021, indicating that it was treated as having been refused on that date. The period under Rule 32(2) was therefore defined based on this date, being the date on which the application was terminated. Mellor J calculated, however, that the final date on which a request for reinstatement could be made would be 31 August 2022. Given all the history behind why the particular wording of Rule 32(2) as it now stands was arrived at, this seems to be wrong. The correct due date should actually have been 30 August 2022. It made no difference in that case but it is slightly concerning that a High Court judge can get this wrong. Perhaps the wording currently used is not as clear as we might think. 

Description Amendments - Finally a Referral?

We have been waiting a long time for a Board of Appeal to finally refer questions to the Enlarged Board on the long-running controversy of whether, or to what extent, amendments to the description are required for European patents and patent applications. Given recent developments, we may now be getting near the point where this actually happens.

In brief, the issue of description amendments is, as far as the EPO is concerned, a settled matter. In their view it is necessary for the description to be in line with the claims to avoid any inconsistencies. According to the current version of the Guidelines for Examination, F-IV, 4.3, "The applicant must remove any inconsistencies by amending the description either by deleting the inconsistent embodiments or marking appropriately so that it is clear that they do not fall within the subject-matter for which protection is sought". In many cases, this leads to extra time and trouble being expended when attempting to get an application allowed. Many have also objected that the supposed justification for this requirement simply is not there in the EPC. Article 84, which is used by the EPO in support, simply requires the claims to be "clear and concise and be supported by the description". If the description provides support for the claimed invention, does it even matter if it also includes support for things that are not part of the claimed invention? There are also cases where it may not be clear where the line should be drawn between what is described in the application as a whole as embodiments and what is actually within the scope of the claimed invention. Forcing applicants, and their attorneys, to make a decision during prosecution that can affect how the invention may be interpreted post-grant (since courts invariably insist that the description is always used to interpret the claims) may be considered unfair, if not actually unjust. 

Those of us who have been keeping a close eye on this thought that we were going to get a referral last from the appeal case of T 56/21. In the end, however, the Board decided that a referral was not needed because in their view Article 84 did not provide any justification for amendments to the description at all. I wrote last year about this lengthy decision here. The EPO, however, has been taking no notice at all of the decision (which is, of course, only binding on the case in question) and maintains that their practice is justified. The Guidelines therefore remain unchanged. 

However, in another appeal case, T 697/22, there has been some movement on the matter. Following oral proceedings held in December 2024, the Board indicated that they were minded to refer questions to the Enlarged Board. A communication has recently issued with some proposed questions, which the Board has asked the parties involved to comment on before they make a decision on a referral. Unlike in T 56/21, the Board found that there was divergent case law on the subject of description amendments and a referral may be needed to resolve the question of whether these were in fact required. The proposed questions are the following:

1. If the claims of a European patent are amended during opposition proceedings or opposition-appeal proceedings, and the amendments introduce 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 such that the inconsistency is removed? 

2. If the first question is unconditionally answered in the affirmative, which requirement of the EPC necessitates such an adaptation? 

3. If the first question cannot be unconditionally answered in the affirmative, what are the conditions under which adaptation of the description is necessary to comply with the requirements of the EPC? 

4. Would the answer to these questions change if an inconsistency existed between the claims and the description of a European patent application?

The parties have been given until 26 May 2025 to provide comments, following which the Board will decide whether a referral is to be made, and if so what the final form of the questions should be. 

For now, all we can do is wait and see what happens. It is, however, interesting to note that the draft questions avoid mentioning Article 84 EPC at all. This is clearly deliberate, since question 2 asks whether there is any provision in the EPC that requires the description to be adapted to the claims. If T 56/21 is to be followed, there is in fact no such provision. The Enlarged Board, however, may find differently.