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.