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.