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

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.