Accelerate With Care

Section 73 of the UK Patents Act 1977 (as amended) grants the Comptroller power to revoke patents on his own initiative, as opposed to revocation proceedings being initiated under Section 72 by another party. The scope of the Comptroller's powers is strictly limited to: i) novelty only prior art under section 2(3) being uncovered after a patent is granted; ii) an opinion on a patent finding a lack of novelty or inventive step (but only in 'clear cut' cases); and iii) an EP(UK) patent being granted for the same invention as a GB patent. These provisions are only used sparingly, with the third being the most common given that it is not unusual for a GB patent to be granted ahead of a corresponding EP. The second is used more sparingly, and has only been used a few times over the past 11 years (see here for more). The first is, as far as I can work out, even more rare. It is not straightforward to find such cases, especially now as the patents journal has been hobbled since its recent 'update' to remove the ability to filter by applicable section number. One such case, however, has come to light recently by way of a decision from the UK IPO from earlier this month: BL O/0018/26 (Chordata), relating to GB2610710B. 

The application was filed on 19 October 2022. Shortly afterwards, the applicant's then representatives requested accelerated examination on the basis that they were trying to secure investment. The UK IPO accepted the request and issued a combined search and examination report on 20 December 2022, based on a search that was carried out on 15 December 2022, which cited documents of only background relevance. The applicant also requested early publication, resulting in the A publication issuing on 15 March 2023. After some further to-ing and fro-ing, the application was found to be allowable and was granted on 13 December 2023. Importantly, this was only around 14 months after the filing date, meaning that the examiner would not have been able to uncover all potential prior art under section 2(3) before the application was granted. As is standard practice, the applicant was notified in the communication under section 18(4) of this, and that the examiner would complete the search after 21 months from the priority date. 

The search was completed in September 2024 and two further documents were identified: EP4316358A1 and EP4319639A1 (these links will take you to the EP register for each case). Both of these were EP re-publications of earlier international applications, specifically WO 2022/255662 and WO 2022/216819. According to how section 2(3) works, if a published patent document has an earlier priority date but a later publication date, it can only count if it also covers the UK, which would include an international application that enters the UK national phase, a European application designating the UK or an international application that enters the European regional phase and designates the UK (and where the UK designation is not withdrawn). Both of the documents related to international applications that entered the European regional phase and designated the UK, although both had since been deemed withdrawn. WO 2022/255662 was published on 8 December 2022 but WO 2022/216819 was published on 13 October 2022, i.e. six days before the filing date of the application. It is also worth noting (although this did not feature in the decision) that a search carried out on 15 December 2022 could in fact have found both documents and could have identified one of them as being 'intermediate' prior art. 

The hearing officer first looked at the two citations and came to the conclusion that, since one of the them was in fact published before the filing date it could not count as s2(3) prior art but was full prior art under s2(2). Regardless of whether this disclosed the claimed invention (which the examiner asserted it did), it could not be considered further and was ruled out. The other citation did, however, count as s2(3) prior art, so the hearing officer assessed whether it disclosed the claimed invention. In short, after some discussion it was found that claim 1 was not novel over this document. The proprietor would therefore need to do something about it. A further problem was that the proprietor had dispensed with the services of their patent agent and was doing this by themselves. The hearing officer, apparently being more lenient with them than he would perhaps be with a represented proprietor, gave them a few suggestions of which claims were not anticipated by the citation and gave an opportunity to make amendments, but suggested strongly that they sought professional help in doing so. The proprietor was given 3 months to sort things out with the examiner, otherwise the patent would be revoked. 

There are a couple of lessons to be learnt from this case. The first is that, although applications can in some cases be accelerated and granted much sooner than would normally be the case, this comes with a risk that further prior art might not be found until after the application is granted. It is typically a risk that is worth taking, but only if the searches that are carried out in the time given are competently done. The second lesson is that searches are not always competently done, which seems to be the case here, given that the examiner did in fact have plenty of time to find the two additional documents before the application granted. It is an unfortunate fact that searches at the UK IPO often do not uncover relevant prior art that could be found by another examiner. A common occurrence in practice is that a UK search report will find no relevant prior art but a subsequent PCT application on the same claims, searched by an EPO examiner, will find some. If the UK application is granted early, this can invalidate the earlier UK patent, although it can be put right if the PCT application then overrules it in due course (resulting in a patent that has a longer duration too). If, however, the applicant does not have the willingness or money to have this fallback position, they can be left with a weak or invalid patent. Best practice therefore, if acceleration of a UK patent is required, is to keep going with a later filed PCT application and keep options open for as long as possible. 

Some Thoughts on G 1/25

I wrote here about the referral to the Enlarged Board in T 697/22, which has since been allocated the unsurprising case number G 1/25, it being the first (and only) referral to the EB made in 2025. The EPO announced the questions referred here, along with the members of the EB for the case, and inviting written statements by 30 January 2026. According to the EP register for the patent in question, only four submissions (or 'amicus briefs') have been filed to date, three of which are from patent attorneys in private practice and one from FICPI. More submissions are to be expected over the next few weeks, so it may be a bit premature to summarise what has been filed. However, from my brief review the general opinion seems to be against answering question 1 in the affirmative, although with caveats in some cases. We shall see if this impression changes once more submissions are filed this month. 

As a reminder, the questions that have been asked of the EB are the following:

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?

Question 1 is a bit long-winded but is carefully worded to be specific to the question that needs answering in T 697/22, in which the Board found it couldn't decide whether a request on file was allowable because no amendments had been made to the description to align it with the allowable claims. In general, however, the question raises the issue of whether there is any provision in the EPC that requires such amendments to be made. As has already been found in T 56/21 (commented here), based on a comprehensive review of the EPC and existing case law there is a strong argument to be made that there is in fact no such provision. The 'leading' case law on the subject, however, is that Article 84 EPC provides the basis for requiring description amendments, even though the wording of the Article itself does not say so. 

To answer Question 1, it is worth first considering what problem this is trying to solve. The supposed problem, at least from the perspective of the EPO, relates to cases where there is, in general terms, an “inconsistency” between the claims and the description, i.e. where the claims define the invention having a scope that is different to the description. Such an inconsistency is, however, perfectly normal and expected in any application or patent. This is because the claims are invariably a generalisation of what is set out in detail in the description and drawings, and are therefore intended to define the invention more broadly. The EB has, however, not been asked to decide on how broad a claim can be in light of a more detailed description, which is the specific purpose of Article 84 EPC. Instead, the EB has been asked more generally to decide on whether there are any requirements of the EPC that make it necessary to adapt the description to amended claims to remove an inconsistency. This can only mean that the supposed problem to be addressed is: i) whether a claim that defines a narrower scope than the description and drawings is an inconsistency; and ii) whether the EPC requires that such an inconsistency needs to be resolved by amendment of the description. 

Any supposed inconsistency of the above type between the claims and the description in a European patent will inevitably be a matter for interpretation. If, for example, a particular feature in a claim is defined as being required but the description specifies that the feature is optional, an interpretation of the claim in accordance with Article 69 EPC and G 1/24 is needed. Article 69 EPC requires that the extent of protection shall be determined by the claims but the description and drawings shall be used to interpret the claims. G 1/24 similarly sets out that the claims are the starting point and basis for assessing patentability, while the description and drawings shall always be used to interpret the claims when assessing patentability. 

While Article 69 EPC is primarily intended for the purpose of assessing patentability and infringement in post-grant court proceedings, the principles of G 1/24 are directed towards assessing the patentability of claims in proceedings before the EPO and the Boards of Appeal, in which infringement is never an issue. 

A correct interpretation in the above situation should result in the straightforward conclusion that the claim language is the primary source of interpretation. To take a more specific example, if claim 1 defines a product comprising features A, B and C, while the description specifies that C is an optional feature (e.g. as a result of this optional feature being used to amend the claims during prosecution), an interpretation of the scope of the claim according to Article 69 EPC and G 1/24 would not arrive at the conclusion that C is merely optional because this would place primacy of the description over the claim language. Instead, a conclusion would be reached that the description is clearly not consistent with the scope of the claim and should therefore be discounted, at least as far as the optionality of feature C is concerned. The claim does not need to be interpreted more broadly, and the apparent inconsistency therefore has no effect on the scope of the claim, when interpreted correctly. 

In another example, a specific feature in a claim may have a meaning that would be interpreted by the skilled person to have a particular scope when read in isolation but for which a different and broader interpretation is provided by the description. This would also result in an apparent inconsistency between the claim and the description. This is, however, the situation that has already been resolved by G 1/24, in which the EB decided that the description and drawings should always be referred to when interpreting the claims, and not just in the case of a lack of clarity or ambiguity. The problem to be solved in the present case is not therefore how to interpret a narrow feature in a claim when a broader interpretation is provided by the description, since this has already been solved by G 1/24. 

The supposed problem to be solved is therefore not a problem at all, not least because any inconsistency can be easily resolved through the existing rules of interpretation based on Article 69 EPC and G 1/24, depending on the applicable forum. Nevertheless, the question is whether there are, in the wording of Question 1, any “requirements of the EPC” that necessitate the description to be amended when such an inconsistency becomes apparent. 

There are several provisions of the EPC that result in applicants being required to amend the description of an application, which would also apply when allowing an opposed patent to be maintained in amended form. Examples of these provisions include Rule 42, which is commonly used to justify amending the technical field and background section of the description, and Rule 49, which defines formal requirements for the presentation of documents (as now set out in decisions of the President of the EPO). Other requirements such as Rule 48, requiring the removal of irrelevant or unnecessary statements, or the use of SI units (again under Rule 49), may require amendments to the description. These are all, however, formal requirements that have no bearing on whether there is an inconsistency between the claims and the description. 

Article 84 EPC has commonly been used in support of a requirement to resolve any inconsistencies of the above type between the description and claims (the leading case being T 1024/18). Article 84, however, is a requirement on the claims that establishes a unidirectional obligation on the description, which is required to provide a foundation, i.e. support, for the claimed invention. This requirement ensures that the scope of protection defined by the claims does not exceed what is justified by the disclosure of the description and drawings. This requirement differs from, although with some overlap, Article 83 EPC, which requires the disclosure to enable the invention so that the skilled person can reproduce it. A requirement for support does not mean that the boundaries of what the description includes needs to be limited to what is claimed, in the same way that a table does not need to have a supporting surface that has the same extent as an item placed on the table. A broader description still provides support for an invention, provided the scope of the claimed invention is not too broad to be supported. To extend the analogy, a table that is too small to support a larger object may result in the object falling off, i.e. not being supported. In line with the decision of T 56/21, Article 84 EPC does not provide a legal basis for a mandatory adaptation of the description to claims of a more limited scope. 

Given that there are no other provisions of the EPC that could plausibly be used in support of requiring description amendments, the answer to question 1 must be a clear ‘no’. A further point to note, however, is that there may be circumstances where the proprietor may choose to amend the description to address an inconsistency, for example in the situation where a broader definition of a feature is provided in the description compared to the claims. In such cases, it is the proprietor’s responsibility to make any such amendments, and it is the EPO’s responsibility to ensure that any such amendments comply with the requirements of the EPC (such as Article 123(2)). It is not the EPO’s responsibility to place an obligation on the proprietor to make any amendments to resolve any apparent inconsistency. 

Given the answer to Question 1, Question 2 does not require an answer.

To answer Question 3, we only need to consider the different principles that apply during examination leading up to grant compared to examination and appeal following opposition. In examination leading up to grant, there is more scope both for amendment by the applicant and for objections by the examiner, including under Article 84 EPC. Any alleged lack of clarity in a claim may for example be resolved by adjusting the claim wording or introducing a feature from the description. This does not, however, justify placing a requirement on the applicant for amending the description to match the claims, just as there should be no such requirement after grant. The answers to questions 1 and 2 should therefore be no different during examination proceedings before grant. As with the case of a patent post-grant, it should be the applicant’s responsibility to make any amendments to the description that may affect how the claims should be interpreted, and it is the EPO’s responsibility to ensure that any such amendments comply with the requirements of the EPC.

The above comments are only my own thoughts on the subject but I expect they will have broader support in the profession and I hope will get the support of UNION-IP, which should be submitting an amicus brief this month. It will be interesting to see what the overall impression is once all submissions are in.

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 not 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.