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 the compulsion of the practice, where examiners enforce a mandatory requirement to adapt the description, which causes 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 with 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, 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 of 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, and 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