Introduction
In decision T 0697/22 of 29 July 2025, the Technical Board of Appeal referred to the Enlarged Board of Appeal the question whether, when the claims of a European patent are amended during opposition or opposition-appeal proceedings and such amendment creates an inconsistency between the amended claims and the description, the EPC requires adaptation of the description to remove that inconsistency. The referral is pending under G 1/25 - Hydroponics Growing Medium.
G 1/25: Why Description Adaptation Should Not Be a Legal Requirement under the EPC
Following the referral Richardt Patentanwälte submitted an amicus curiae brief to the EBA pursuant to Article 10 of the Rules of Procedure of the Enlarged Board of Appeal (RPEBA). The amicus curiae brief argues that the European Patent Convention does not require applicants to adapt the description to the claims as a condition for grant. It emphasises that potential inconsistencies between the claims and the description should be addressed through substantive examination under Articles 52 to 57 EPC—particularly Articles 54 and 56 EPC on novelty and inventive step—rather than through formal editing of the specification. The brief explains that neither Article 84 EPC nor Rules 42, 43, and 48 EPC provide a legal basis for a general obligation to align the description with the claims. Legal certainty, it contends, is ensured by a proper examination of the claims in their technical context, not by the deletion or marking of unclaimed subject matter. It further notes that national courts, including the German Federal Court of Justice and the Unified Patent Court, already have the tools to handle inconsistencies between the claims and the description. The brief concludes that description adaptation is not a legal requirement under the EPC and should not be enforced by the EPO.
Introduction and Context of the Referral – What Is at Stake in G 1/25?
The referral concerns the EPO’s practice of requiring adaptation of the description to reflect the scope of the allowable claims and asks whether the EPC mandates such adaptation as a condition for grant. The issue is significant for applicants, patent proprietors, and the public, as it implicates legal certainty, procedural economy, fairness in determining the scope of protection, and the role of national courts in claim interpretation.
Legal Certainty and Description Adaptation under the EPC
It is not mandatory to adapt the description to the claims to ensure legal certainty for third parties. While such adaptation may facilitate interpretation of the claims, it remains an excessive requirement not grounded in the provisions of the EPC. The Convention does not oblige applicants to draft their patent applications in a particularly readable or simplified style, nor does it require removal or marking of subject matter no longer claimed. Concerns about misinterpretation of claim scope can be addressed through substantive examination under Articles 52 to 57 EPC. This examination—conducted in light of the description, including its definitions and disclosed features—ensures that patent protection is granted only for subject matter that, when the claims are interpreted in context, is both novel and inventive over the prior art.
Decision G 1/24 confirms that the description and drawings “shall always be consulted to interpret the claims when assessing the patentability of an invention under Articles 52 to 57 EPC.” Accordingly, if subject-matter has been deleted from the claims yet remains in the description, this may occasionally create the appearance of a broadened scope of protection. However, any such apparent broadening is not a matter of description alignment but can be dealt with through substantive examination by raising objections under Article 54 EPC (novelty) or Article 56 EPC (inventive step).
Where the requirements of Articles 52 to 57 EPC are fulfilled, any discrepancies between the description and the claims must be tolerated, as they do not adversely affect understanding or interpretation of the claims and do not leave the public in doubt as to the scope of protection.Legal certainty is therefore safeguarded by rigorous examination of the claims in the context of the full disclosure, not by formal editing of the specification text.
Fairness to Applicants and the Role of Article 69 EPC Explained
For applicants and patent proprietors, Article 69 EPC and its Protocol ensure that the scope of protection is determined fairly, based on both the claims and the supporting description and drawings. Requiring deletion or negative marking of embodiments not literally covered by amended claims may disturb that balance by removing interpretive context relevant to scope, including potential equivalents. Passages of the description that appear to relate to originally broader claims may still be relevant for understanding the invention as defined in narrower amended claims. Expecting applicants to identify and remove all passages that could never contribute to interpretation of amended claims is impracticable and contrary to procedural economy.
Formal EPC Requirements: Is Description Alignment Legally Mandated?
From a formal point of view, there is no express provision in the EPC requiring adaptation of the description as a precondition for grant. Case law such as T 56/21 has considered Article 84 EPC and Rules 42(1), 43(1), and 48 EPC and found no basis for a general obligation to align the description with the claims. The legislator did not impose such a legal duty.
Article 84 EPC – Limits of Support and Claim Interpretation
Article 84 EPC provides: “The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description.” This provision sets out two distinct requirements: first, that the claims define the matter for which protection is sought; and second, that only subject-matter supported by the description can be claimed. However, Article 84 EPC cannot be interpreted as allowing incorporation of features from the description into the claims. The claims must stand on their own and be supported by the description—no more and no less.
The Enlarged Board of Appeal confirmed in G1/24, that Article 84 EPC is not a tool for importing description matter into the claims: “[u]sing Article 84 EPC as an alternative basis for interpretation of the claims can also be criticised. Article 84 EPC addresses the content of the patent application and is formal in nature, does not mention the invention and provides no guidance on how to interpret claims. It only sets out an instruction to the drafter of what needs to be in the claims [namely the matter for which protection is sought], and an instruction to the EPO to determine whether the claims meet that purpose” (Reasons 8).
Thus, Article 84 EPC operates in one direction only—from the claims toward the specification. It cannot be applied in reverse to exclude unclaimed subject matter from the description. Consequently, the claims take precedence in determining the extent of protection. While the description and drawings may provide context and assist in clarifying the claims, subject matter appearing solely in the description or drawings cannot be read into the claims under Article 84 EPC.
Rules 42, 43 and 48 EPC – No Basis for Mandatory Description Adaptation
Rules 42 and 43 EPC require that the claimed invention has technical character and involves a technical effect. These requirements are unaffected by unclaimed subject matter in the description.
Rule 48(1)(c) EPC has occasionally been cited as a legal basis for requiring adaptation of the description. It provides that a European patent application shall not contain statements or other matter “obviously irrelevant or unnecessary under the circumstances.” As explained in T 1989/18 (reasons 9–11), this provision was never intended to impose a duty to adapt the description to amended claims. Its historical purpose was to ensure at the start of examination that the published application did not contain material wholly unrelated to the claimed invention.
There is no indication that this principle was intended to extend to later stages of the procedure, particularly to claim amendments. Non-compliance with Rule 48 EPC is not a ground for refusal. Moreover, the rule applies to patent applications only and not to granted patents. It would be illogical to assume that the legislator required adaptation of the description during examination but not in opposition. Such an interpretation would create two categories of patents—those with a “cleaned” description after examination and those, amended in opposition, without such requirement. Patents should, however, be subject to uniform quality standards. The absence of a clear legal mandate cautions against continuing or institutionalising a practice with potentially substantive consequences for patent scope and legal certainty, without legislative foundation.
National Case Law on Description Adaptation: BGH and UPC Perspectives
Even if the purpose were to inform national courts or third parties more clearly about what is protected, description adaptation has limited relevance in national infringement proceedings governed by Article 69 EPC and its Protocol. For example, the doctrine of equivalence, as applied in many EPC member states, considers whether elements not explicitly claimed may nonetheless fall within the scope of protection.
For instance, in Germany, the Federal Court of Justice held in BGH X ZR 16/09 (“Okklusionsvorrichtung”) that if a variant is disclosed but the skilled person understands it to be excluded from protection (for example, due to deletion from the claims), equivalence cannot be used to reclaim it. This demonstrates that courts can address such interpretive issues independently of whether the description was formally aligned with the claims during prosecution.
This reasoning applies in particular where prosecution-history estoppel exists, as courts will consider claim amendments and the full prosecution history. As a result, adapting the description to the claims is generally irrelevant, and formal alignment is not required.
A further example illustrating that courts are already able to address potential inconsistencies between the description and the claims is the decision of the Unified Patent Court (UPC), Hamburg Local Division, in Agfa v. Gucci (UPC_CFI_278/2023, Final Order of 30 April 2025). The Local Division acknowledged that its interpretation created an apparent inconsistency between the description and the claims due to a broader definition in the specification. Nevertheless, the court held that “specifications in the description that are not consistent with the granted claims cannot serve as a basis for a broad interpretation of a claim” (Headnote 3). The court thus concluded that while definitions in the description may restrict the meaning of a claim term, they cannot be invoked to expand it.
Litigation practice therefore already provides mechanisms to protect legal certainty and to prevent misuse of the description. Requiring formal alignment between claims and description for this purpose is unnecessary and potentially disruptive.
Conclusion – Why the EPC Does Not Require Description Adaptation
The EPC does not impose a requirement to adapt the description to the claims as a condition for grant. Issues of claim breadth or overreach should be resolved through substantive examination under Articles 52 to 57 EPC, not by formalistic amendments to the description. Legal certainty is best served by clear and consistent claim -interpretation principles, not by compulsory deletion or marking of unclaimed subject-matter. Article 69 EPC and G 1/24 define the role of the description without restricting the applicant’s ability to retain interpretive context. National courts are well equipped to address potential inconsistencies, rendering mandatory description adaptation unnecessary.
Accordingly, the answer to the questions referred in G 1/25 should be that adaptation of the description to the claims is not a legal requirement under the EPC, and the EPO should not enforce such adaptation as a condition for grant where the claims are otherwise allowable.
Responses to Key Questions
- 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?
- Answer: This is not necessary. Issues of potential claim breadth or overreach should be addressed via substantive examination applying Articles 52 to 57 EPC.
- If the first question is answered in the affirmative, which requirement(s) of the EPC necessitate(s) such an adaptation?
- Answer: This question becomes irrelevant as the answer to question (1) is in the negative..
- 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?
- Answer: No, this is also not necessary. The requirements of Articles 52 to 57 EPC apply in all proceedings, whether examination or opposition.
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Author: Dr. Michael Schmid and Dr. Julius S. Cohen (Off-Councel)