G 1/25 (EPO): How Far Must Claims and the Description Really Align?
The Enlarged Board of Appeal of the European Patent Office (EPO) has just issued its decision G 1/25 ("Hydroponics"), addressing inconsistencies between the description and the claims of a European patent application, or a European patent, and what should be done about them.
We first note the decision's own definition of an inconsistency: "An inconsistency between the claims and the description, and any drawings, exists where one or more statements in the description, including the drawings, suggest an understanding of a claim which is incompatible with the apparent meaning of the claim, and that incompatibility cannot readily be resolved by applying the principles set out in G 1/24." Under the G 1/24 principles referred to, the meaning of the claims must be determined from the perspective of the skilled person, based on the claims, the description and any drawings taken together.
A distinction should therefore first be drawn between an apparent incompatibility (that impression of contradiction which claims and description may give at first sight) and a genuine inconsistency, which requires that incompatibility to survive the interpretive exercise. Where an apparent incompatibility resolves without difficulty, once the application or patent is considered as a whole by the skilled person, there is simply no inconsistency to correct.
The Enlarged Board illustrates this with a common scenario: subject-matter (a technical teaching, an example or an embodiment) is disclosed in the description while no longer being covered by the claims as a result of amendments made to them. Such a situation does not, on its own, create an inconsistency: it is merely an apparent incompatibility, resolved as soon as the skilled person readily understands that this subject-matter is not covered. There is a genuine inconsistency only if the description leaves real doubt as to whether that subject-matter is, or is not, covered by the amended claims. Everything, then, seems to come down to drafting: how the subject-matter is presented in the description is decisive in distinguishing an apparent incompatibility from a genuine inconsistency.
More generally, according to the Enlarged Board, an inconsistency exists "if the person skilled in the art reading the claim in the light of the description and any drawings would be left in real doubt as to the meaning of the claim", whether or not that claim has been amended.
But the analysis does not stop there. The Enlarged Board goes on: "where an inconsistency between the claims and the description, including any drawings, is not such as to be relevant for the assessment under the EPC, such an inconsistency need not be removed (or neutralised). The EPC does not require an adaptation of the description, including any drawings, merely for the sake of formal concordance." In other words, an inconsistency (this time a genuine one, not a mere apparent incompatibility) may have no bearing on compliance with the European Patent Convention (EPC), in which case it may remain uncorrected.
This last possibility should, however, remain rare in practice: given that an inconsistency, by definition, presupposes real doubt as to the meaning of the claim, such an inconsistency should have a bearing on compliance with the EPC, barring a particular procedural configuration.
Take the scenario already mentioned: where it is difficult for the skilled person to tell whether subject-matter disclosed in the description is, or is not, covered by the amended claims. On this point, the Enlarged Board is unequivocal: such an inconsistency affects compliance with Article 84 EPC, since "if it is unclear whether information, examples, subject-matter or embodiments are or are not within the scope of the claim, then it cannot be said that the claim is supported by the description, including any drawings".
G 1/25 had long been awaited by European patent applicants, some hoping it would put a definitive end to a practice of the EPO regarded as overly demanding: that of requiring the description to be adapted whenever the claims are amended. They are likely to be disappointed by the Enlarged Board's conclusions, even though the Board appears keen to avoid overly formalistic approaches. Third parties facing a competitor's patent, on the other hand, may welcome this decision, which should help prevent passages of the description from obscuring the meaning of a claim.
