In an opposition procedure against a European patent where Meissner Bolte represents the opponent, the Board of Appeal recently issued an interlocutory decision T 697/22 with a referral of questions to the Enlarged Board of Appeal concerning the need to adapt the description to amended claims (G 1/25).
Initial situation and relevant facts: In the first instance of the opposition proceedings, the amended claims together with an adapted description were considered allowable, although inter alia an objection due to inconsistency between the amended claims and the adapted description was raised by the opponent and upheld in the appeal proceedings. According to the interlocutory decision, the Board concluded that the amended claims are allowable but confirmed that an inconsistency had been introduced between the amended claims and the adapted decision. In view of diverging case law on the necessity of adapting the description to the amended claims, the Board decided to refer the following questions to the Enlarged Board of Appeal (pending as G 1/25 – “hydroponics”):
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 referral is obviously highly relevant as it relates to fundamental questions of law that not only affect proceedings before the EPO but may also have an impact on proceedings before the Unified Patent Court (UPC) or national authorities where the interpretation of the claims in light of the description is an issue. See also recent decision G 1/24 of the Enlarged Board of Appeal which establishes that the description shall always be consulted to interpret the claims when assessing patentability of an invention.
