G 1/25 Amicus Briefs - A Brief Summary

Following up from my earlier post about the referral to the Enlarged Board, now that the period for filing written submissions (or 'amicus briefs') has passed, I have reviewed the various submissions that have been filed. Some are very long, and I have reviewed many of them only briefly, although I hope that the EB will review each of them in detail because there are some important points raised. For now, it is interesting to note that, although there is no consensus on the issue (otherwise there would be no need for a referral), there appears to be a strong majority view that Question 1 should be answered with a 'no'. This is, however, not about a democratic vote and the EB will have to come to their decision based on what they think is correct, not what the majority view may be.

Based on a total of 39 submissions filed and visible on the EP register as of today (4 February 2026), including a couple that appear to have been filed late, 27 have suggested an answer of 'no', while only 8 say 'yes'. A few others either provide no answer or are somewhat vague about what the answer should be. The table below is a list of all submissions that I have found (excluding those from the parties to the case), with their proposed answers (where this is discernible), and the pie chart here shows the answers to Question 1.

Many of the submissions make interesting points, some of which are expressed in stronger terms than others, while others carefully sit on the fence or even fail to come to any clear conclusion. It should be remembered that Question 1 does demand a clear answer. It either is, or is not, necessary to comply with the requirements of the EPC to adapt the description to amended claims so as to remove an inconsistency. While there are certainly arguments to be had either way, including what is meant by an 'inconsistency', a clear 'yes' or 'no' is in the end required because it is of primary importance for the EB to be able to come to a clear conclusion on what the EPC actually requires applicants and proprietors to do, and what the EPO is permitted to require them to do. Sitting on the fence, or coming up with reasons based on vague principles that are not actually set out in the EPC, is simply not good enough. 

It would take me far too long to set out in detail all the arguments put forward in the various submissions, most if not all of which have already been made many times over the past few years. Some of the submissions are, however, in my view worth looking at in more detail because they raise interesting points, are well written, or are provocative one way or the other. The following is a very brief selection from the submissions, with links that should hopefully take you directly to the document on the EP register if you want to see more. 

In characteristic American style, AIPLA put forward a combative set of submissions, the main point being that adaptation of the description is an "administrative construct developed originally as a housekeeping measure". This seems to get to the core of what has happened over the past few years, as the EPO has become more strict on adapting the description to the claims. A requirement that was previously typically only one that involved adapting the summary of invention to say something like "the invention is defined in the claims" has gradually become more and more onerous on applicants where the current requirements (although inconsistently applied) force applicants to comb through the entire specification to adjust wording wherever the word "invention" or "embodiment" is used, or even delete entire sections, to appease the examiner. This view is concurred with by Bardele Pagenberg, who state that "Using the concept of consistency as a yardstick for support is in our view wrong and not in accordance with the EPC", and also refer to adaptation of the description being a housekeeping issue. Others further support the point by referring to adaptation of the description being a burden on applicants, with BIA (the UK Bioindustry Association) expressing concern with compulsion, where examiners enforce a mandatory requirement to adapt the description, causing additional cost and uncertainty. Canon Inc go further, saying that "the practice of aligning the description with the claims accepted for grant serves no useful purpose", a point that is matched by the submissions from JEITA and Richardt Patentanwalte, while Ericsson state that "it is not the purpose of opposition and opposition appeal proceedings to tidy up the description". 

Greenwoods make a couple of important points, one being that "if the claims are clear despite the description no amendment to the description appears to be necessary", another being that "it should be up to the applicant proprietor to decide whether to amend the description or the claims to remove inconsistencies that cause genuine difficulty in determining the scope of the claims" (a point which I also made in my thoughts, which were expressed in the submissions from UNION-IP). Another important point is raised in submissions from the IP Federation that support under Article 84 EPC is about "ensuring the invention is sufficiently described to justify the scope of the claims. It does not extend to the reverse" (which is similar to my point about the requirement being unidirectional). A similar point is made by the pseudonymous submissions from "Jackson Lamb", who states that "The support requirement should not be interpreted to require a one-to-one correspondence between the claims and the description". 

A common theme, of course, with all of the above, among others, is the view that there is no requirement of the EPC that mandates amendments to the description. This is, however, not shared by some of the other submissions. The strongest submissions from those who answer 'yes' to Question 1 appear to be from Bugnion, Patentanwaltskammer and (unsurprisingly) from the EPO President, all of which refer to Article 84 EPC as being the primary basis for setting a requirement for description amendments. Bugnion argue that "supported by the description" in Article 84 sets a "mandatory requirement on the description to disclose a solution that is consistent and not in disagreement with the claims", while the EPO President goes further with a public policy type argument about the purpose of Article 84 EPC, which is apparently "to ensure that the public is not left in any doubt as to which subject matter is covered, and which is not". Patentanwaltskammer further argues that "Once it is accepted, following G 1/24, that the description forms an integral part of the framework for claim interpretation under Article 69 EPC, the consistency of the patent text becomes mandatory. A patent text that contains contradictory statements cannot reliably fulfil its function as a basis for interpretation of the claims". This does, however, raise the question of whether it is the patent as granted that should be used for interpreting the claims or, as some would argue, the patent application as filed. 

The submission by Samson & Partner, on behalf of Apple Inc, raises the possibility again of Angora cats (see here for some of my comments relating to this fictional animal), arguing that they "should not be unnecessarily bred and nurtured" by not amending the description to match the claims. Another large patentee Roche, however, argues that this should not be the job of the EPO, and that "the Boards must apply legislation, not act as legislator", also referring to G 1/24. 

Finally, there are a few that stand out for their fence-sitting and vagueness, some of which fail to come to any clear answer to Question 1. Most disappointingly (for me at least) are those from CIPA, who fail to answer with a clear 'no' and instead state that "It is not generally necessary for the description to be adapted to the allowable set of amended claims" (my emphasis). Well, is it or isn't it? Another from Martin Wilming refuses to answer the question at all, and just refers to a previously published article that is clearly against the idea of mandatory description amendments, in which case it is odd that a clear answer is not provided. 

Question 1 is, of course, the most important one to answer. For those that answer 'no', Question 2 then obviously falls away. For those who answer 'yes', however, it is useful to note the justifications that are made for support in the EPC. The most common is Article 84, while other provisions such as Rule 42(1)(c), Rule 48(1)(c) and Article 69 are also mentioned. Question 3 is largely of little concern, with the vast majority simply stating that the same rules should apply in examination as for opposition (although with the proviso that Article 84 works differently, given that it is not a ground of opposition). 

In summary, I think the EB have plenty of arguments, some of them good, to review and work with. I hope they do take them all into account and come up with the correct decision. We may have a while to wait though, and I expect the decision when it does come is going to be a very long one.

Amicus	Question 1	Question 2	Question 3
AIPLA	No	None	No
Bardele Pagenberg	No	None	No
Bayer AG	No	No answer	No
BIA (UK BioIndustry Association)	No	Not applicable	No
Bugnion	Yes	A84, R42(1)(c), R48(1)(c)	No
Canon Inc.	No	No answer	No
CIPA	Vaguely no - “not generally necessary”. Does not answer the question.	No answer required	No
CPI	No	No answer needed	No
D.X. Thomas	Yes	Article 84 and Rule 42(1)(c) EPC	No
EFPIA	No	No answer needed	No
EP&C Patent Attorneys	Yes	A84, A69 EPC	-
epi	No	A84 does not provide legal basis	No
EPO President	Yes	A84, R42(1)(c), R48(1)(c)	No
Ericsson	No	None	No, except for additional focus on A84 during examination
ETH Zurich	No	None recognised	No
FEMIPI	No	No legal basis	No
FICPI	No, provided the subject-matter does not explicitly refer to the claims.	No answer	No, but applicant/proprietor should be given an opportunity to amend.
Francis Hagel	No	No answer	No
Greenwoods	NO (in capitals and bold)	No requirements of the EPC require such adaptation	No
GRUR	No answer	No answer	No answer
IP Federation	No	No provision in the EPC that mandates adaptation of the description	No
IPO (Intellectual Property Owners Association)	No	No requirement of the EPO necessitates such an adaptation	No
“Jackson Lamb”	No	No answer needed	No
Japan Intellectual Property Association	No	Does not apply	No
JEITA	No	No answer necessary	No
Martin Wilming	No answer	No answer	No answer
Michael Stadler et al	No	No answer	No
Michael Snodin	No	No need to answer	No
Ordine Dei Consulenti in Proprieta Industriale	No	No answer needed	No
Patentanwaltskammer	Yes	A84, A69	No
Patentwerk B.V.	Yes	A84, 82, 53, 52(2) EPC	-
Peter De Lange	Yes	R48(1)(c)	No
Richardt Patentanwälte	No	No answer	No
Roche	No	No basis	No
Roy Marsh	No	No answer	No
Samson & Partner (Apple Inc.)	Yes	A84 (?)
Siemens	No	No answer needed	No
UNION	No	No answer needed	No
VPP	No	No answer	No

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.