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

Description Amendments - Finally a Referral?

We have been waiting a long time for a Board of Appeal to finally refer questions to the Enlarged Board on the long-running controversy of whether, or to what extent, amendments to the description are required for European patents and patent applications. Given recent developments, we may now be getting near the point where this actually happens.

In brief, the issue of description amendments is, as far as the EPO is concerned, a settled matter. In their view it is necessary for the description to be in line with the claims to avoid any inconsistencies. According to the current version of the Guidelines for Examination, F-IV, 4.3, "The applicant must remove any inconsistencies by amending the description either by deleting the inconsistent embodiments or marking appropriately so that it is clear that they do not fall within the subject-matter for which protection is sought". In many cases, this leads to extra time and trouble being expended when attempting to get an application allowed. Many have also objected that the supposed justification for this requirement simply is not there in the EPC. Article 84, which is used by the EPO in support, simply requires the claims to be "clear and concise and be supported by the description". If the description provides support for the claimed invention, does it even matter if it also includes support for things that are not part of the claimed invention? There are also cases where it may not be clear where the line should be drawn between what is described in the application as a whole as embodiments and what is actually within the scope of the claimed invention. Forcing applicants, and their attorneys, to make a decision during prosecution that can affect how the invention may be interpreted post-grant (since courts invariably insist that the description is always used to interpret the claims) may be considered unfair, if not actually unjust. 

Those of us who have been keeping a close eye on this thought that we were going to get a referral last from the appeal case of T 56/21. In the end, however, the Board decided that a referral was not needed because in their view Article 84 did not provide any justification for amendments to the description at all. I wrote last year about this lengthy decision here. The EPO, however, has been taking no notice at all of the decision (which is, of course, only binding on the case in question) and maintains that their practice is justified. The Guidelines therefore remain unchanged. 

However, in another appeal case, T 697/22, there has been some movement on the matter. Following oral proceedings held in December 2024, the Board indicated that they were minded to refer questions to the Enlarged Board. A communication has recently issued with some proposed questions, which the Board has asked the parties involved to comment on before they make a decision on a referral. Unlike in T 56/21, the Board found that there was divergent case law on the subject of description amendments and a referral may be needed to resolve the question of whether these were in fact required. The proposed questions are the following:

1. If the claims of a European patent are amended during opposition proceedings or opposition-appeal proceedings, and the amendments introduce 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 such that the inconsistency is removed? 

2. If the first question is unconditionally answered in the affirmative, which requirement of the EPC necessitates such an adaptation? 

3. If the first question cannot be unconditionally answered in the affirmative, what are the conditions under which adaptation of the description is necessary to comply with the requirements of the EPC? 

4. Would the answer to these questions change if an inconsistency existed between the claims and the description of a European patent application?

The parties have been given until 26 May 2025 to provide comments, following which the Board will decide whether a referral is to be made, and if so what the final form of the questions should be. 

For now, all we can do is wait and see what happens. It is, however, interesting to note that the draft questions avoid mentioning Article 84 EPC at all. This is clearly deliberate, since question 2 asks whether there is any provision in the EPC that requires the description to be adapted to the claims. If T 56/21 is to be followed, there is in fact no such provision. The Enlarged Board, however, may find differently. 

Description amendments at the EPO - the beginning of the end?

[This is a lightly edited version of a recent article I wrote for the Barker Brettell website.]

Practice at the EPO currently requires that, before an application is granted, the description must be brought into line with the allowed claims. Doing this can be time-consuming and may involve making difficult choices about what amendments are required and how they should be made. EPO examiners, who are required to follow the Guidelines for Examination, can be strict in applying this requirement, typically allowing no room for ambiguity between what is defined in the claims and what is described in the rest of the application. If, for example, something in the application is described as an "embodiment", current practice will tend to require this to be within the scope of the claims. Otherwise, the description of the embodiment may need to be deleted or mentioned as being not according to the invention. The nature of drafting patent applications, however, means that often there may be some doubt about what is described as an embodiment being within the claims, especially if the claims have been amended to obtain allowance.

There have been strong disagreements about the legal basis for the requirement of conforming the description to the claims. The current Guidelines for Examination states: "Any inconsistency between the description and claims must be avoided if it  could throw doubt on the subject-matter for which protection is sought" (F-IV 4.3). Justification for this is claimed to be from Article 84 EPC, which states that the claims of an application "shall be clear and concise and be supported by the description". Many, however, have questioned whether this requirement for support justifies a requirement for conformity. I have been firmly in the camp of Article 84 providing no justification for amending the description but, having raised this with senior people at the EPO, the prevailing view has been for a long time that "supported by the description" is taken to mean "in conformity with the description". The justification for this always seems to be that the public needs to be kept safe from dangerous Angora cats that manage to squeeze through examination with narrowly interpreted claims, which then suddenly become broader after grant. This is, however, a matter for national courts to decide and should not be for the EPO to determine pre-grant. 

A common feature in patent drafting is to include a section in the description in which a number of claim-like clauses are set out, the intention of which is to provide basis for amendments that might be made later, including after grant. Such clauses are specifically identified for deletion in the Guidelines, based on the reasoning that leaving them in the application would "lead to unclarity [sic] on the subject-matter for which protection is sought" (F-IV 4.4). This specific practice has now been put to the test by an applicant (F. Hoffman-La Roche) who, during examination, objected to deleting a set of claim-like clauses in an otherwise allowable application. The application was then refused for the sole reason that Article 84 EPC was not complied with. The applicant appealed this decision, which has now resulted in a recently published decision T 56/21 on the question of whether such amendments are actually required. 

In their appeal, the applicant argued that the Guidelines were not correct in stating that amendments to the description to conform to the claims were required, indicating that there was no legal basis for this. The Board of Appeal, however, took the view that it was not their job to criticise the Guidelines but instead to consider whether there was any justification for the practice from the law itself. The Board stated:

"The question to be addressed is that of whether Article 84 EPC provides a legal basis for objecting to an inconsistency between what is disclosed as the invention in the description (and/or drawings, if any) and the subject-matter of the claims, the inconsistency being that the description (or any drawing) contains subject-matter which is not claimed, and for requiring removal of this inconsistency by way of amendment of the description (hereinafter: "adaptation of the description"). If so, an application could be refused if the applicant did not amend the description accordingly, or did not agree to an amendment of the description proposed by an examining division" (point 2 of the Reasons for the Decision, emphasis in the original).

The question to be addressed was therefore a broader one than whether claim-like clauses would need to be deleted, and instead related to whether the description should need to be amended at all if there were any inconsistencies with the claims. The Board also referred to Article 69 EPC, which had been used as a further justification for removing any inconsistencies. This provision, which defines the extent of protection of a European patent or application, was considered by the Board to be separate from the assessment of patentability and intended to be used by national courts in infringement proceedings rather than for assessing patentability. The question was therefore limited only to whether Article 84 EPC provided any justification for removing inconsistencies between the description and claims. The purpose of Article 84 EPC, in the Board's view, was to ensure that there was a clear definition of the subject-matter in the claims in terms of technical features of the invention to allow examination for patentability. Claims should be clear from their wording alone, so clarity of the claims of an application should, in the Board's view, be key in examination. If the description were to be used to interpret the meaning of the claims this could, the Board suggested, lead to broad claims being granted based on a narrower interpretation from the description, which would lead to diverging decisions after grant.

On the key question of description amendments, the Board considered that the ordinary meaning of the words of Article 84 EPC ("The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description") did not support a requirement to bring the description into agreement with the claims by deleting or disclaiming subject-matter in the description which is not claimed. Some previous decisions from the Boards of Appeal had decided questions of whether a claimed invention was supported by the description, but these related to whether broad claims should be brought into line with the disclosure by limiting the claims. Other decisions related to bringing the description into conformity with the claims but, in the Board's view, these misconstrued the relationship between Articles 84 and 69 EPC as well as the relationship between the claims and the description. Given that the two provisions should be applied independently in separate situations, with Article 84 before grant and Article 69 after, the Board concluded that there was no rationale for adapting the description to match the subject-matter claims. Matching the description to unclear claims would fail to provide legal certainty, while adapting the description to clear claims would likewise fail to improve legal certainty. The attempts by the EPO and some previous Boards of Appeal may have been aimed at reducing variability in the extent of protection of granted patents, but in the Board's view this encroached on the competence of the national courts and legislators.

In conclusion, the Board decided that Article 84 EPC did not provide a legal basis for a mandatory adaptation of the description to claims of a more limited subject-matter. While the Board had initially envisaged referring a question to the Enlarged Board, in the end they considered that there was no need for this because the requirements of Article 84 EPC for the purpose of examination were unequivocal. The wording left no room for requiring, in examination, that the description be adapted to allowable claims to match their subject-matter. The Board was also not persuaded by the EPO's reasons for requiring the description to be adapted to allowable claims, which were to provide a more uniform determination and better predictability of the extent of protection of granted patents. The Board considered that this could only be achieved if the granted claims were clear in themselves. Adapting the content of the description to match the subject-matter of allowable claims would reduce the reservoir of technical information that could be used in national courts to determine the protection conferred by the granted patent. The Board therefore allowed the appeal and ordered the Examining Division to grant a patent on the basis of the specification with the claim-like clauses intact. The case was remitted to the Examining Division, which has now issued a Rule 71(3) communication with the claim-like clauses intact. 

While the reasoning behind this decision is complex and lengthy, the conclusion is clear: there is no legal basis for requiring applicants to amend the description during examination to match allowed claims. The decision flatly contradicts current practice at the EPO, as defined by the current Guidelines for Examination. What happens next is up to the EPO, unless a further Technical Board decides the issue the other way and finally refers questions to the Enlarged Board. I expect arguments between interested parties and the EPO to continue over at least the next few months, in particular when it comes to the EPO deciding on how the Guidelines are to be amended next year. 

For those wishing to keep a close eye on what happens, I would recommend attending the UNION-IP Winter Roundtable on 28 February 2025, where the issue will be discussed in more detail.