One of the recurring challenges in the examination of European patent applications is the examiner’s request—often grounded in objections under Article 84 EPC—to delete parts of the patent description or to explicitly label them as "not part of the invention." These demands are typically justified by arguing that the subject-matter in question does not fall under the wording of the patent claims.
While such amendments may accelerate the grant of a European patent, they also pose significant long-term risks. These risks have gained renewed relevance following the Enlarged Board of Appeal’s decision G 1/24, which confirms that the description and drawings must always be consulted when interpreting claims for the purposes of assessing patentability under Articles 52 to 57 EPC.
How Does the Description Influence Claim Interpretation under UPC and EPO Practice?
The Unified Patent Court (UPC) Court of Appeal established a clear interpretative framework in NanoString Technologies Inc. v. 10x Genomics Inc. (UPC_CoA_335/2023), stating that the patent claim is not only the starting point but the decisive basis for determining the protective scope of a European patent under Article 69 EPC and the corresponding Protocol. The interpretation of a patent claim must go beyond strict literal wording and must rely on the description and drawings as explanatory tools—not only in cases of ambiguity.
This approach was echoed by the Local Division Düsseldorf in UPC_CFI_373/2023 (SodaStream Industries Ltd. v. Aarke AB), which reiterated that the claim should not be limited to preferred embodiments. Rather, the scope includes what the skilled person understands as being claimed when read in light of the description and drawings.
In its reasoning of G1/24 (18 June 2025), the Enlarged Board of Appeal (EBA) essentially followed the outcome advocated in our Amicus Curiae brief. Substantiating its view with the same key decisions we had relied upon—such as NanoString Technologies, Inc. v. 10x Genomics, Inc. before the UPC and the seminal EPO decisions G 2/88 and G 6/88—the EBA confirmed the central role of the description and drawings in claim interpretation. Most notably, it held:
“The claims are the starting point and the basis for assessing the patentability of an invention under Articles 52 to 57 EPC. 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, and not only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation.” (headnote)
This confirms that the description and drawings are not secondary aids but always relevant to claim interpretation in the context of patentability. As a consequence, any amendment to the description can directly affect how the claims are understood—both during examination and in subsequent enforcement or nullity proceedings.
What Are the Consequences of Removing Description Content?
Deleting embodiments or definitions from the description on the basis that they do not fall within the literal wording of the claims can jeopardize the internal consistency of the patent. The description often provides crucial context for understanding technical terms and narrowing broad claim language in a way that reflects the applicant’s intent.
Removing such context may thus inadvertently broaden the interpretation of a claim during enforcement or revocation proceedings. Courts may no longer have access to limiting definitions or technical details that could clarify the claim scope. This can increase the risk of validity challenges due to an artificially broadened interpretation and cause uncertainty over how specific features are to be understood.
The danger becomes particularly acute when deleted sections previously provided restrictive definitions or explained key terms through examples. In some cases, these omissions may lead to an interpretation that was never intended and cannot be corrected after grant.
How to Handle Description Amendments under Article 84 EPC?
In light of these developments, patent practitioners should resist the impulse to comply too readily with examiner requests for deletions under Article 84 EPC. The potential benefit of quicker grant must be weighed carefully against the risks of weakening the patent in post-grant enforcement or invalidity proceedings.
Attorneys should evaluate whether any requested deletions could compromise the interpretative value of the description and undermine the clarity and stability of the granted claims. Where appropriate, applicants should push back against overly narrow views of claim support and provide reasoned arguments for preserving the descriptive content that gives the claims their full technical meaning. It is essential to inform clients that due to discussions with Examiners a longer examination phase and additional costs may ultimately secure a stronger and more enforceable patent.
Conclusion: Description Clarity Requires Strategic Foresight
Following G 1/24 and the case law of the UPC, it is now clearer than ever that the patent description plays an indispensable role in interpreting claims—not just for infringement, but also for assessing patentability. Overly aggressive deletions risk weakening the patent and undermining enforceability. A cautious and well-reasoned approach to examiner objections under Article 84 EPC can help ensure that patents remain robust, enforceable and defensible throughout their lifetime.
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Author: Dr. Michael Schmid