EPO clarifies approach to claim interpretation and description amendments following G 1/25

The European Patent Office has published a new notice setting out how it will implement the Enlarged Board of Appeal's decision in G 1/25 in examination and opposition proceedings. The revised approach should reduce the need for purely formal amendments to the description, while providing guidance on when an inconsistency between the claims and description will still need to be addressed. 

The notice is also of wider interest because of what the EPO says about claim interpretation, including that the claims, description and drawings should be considered as part of a “unitary process”. That guidance is particularly noteworthy in light of the questions concerning the role of the description and drawings now before the Enlarged Board in G 1/26.

In addition to the notice, the EPO has confirmed that the relevant sections of the Guidelines for Examination will be revised accordingly as part of the ongoing revision cycle for the 2027 edition.

The EPO's notice is available here.

From formal conformity to substantive inconsistency

In G 1/25, the Enlarged Board considered when a description must be brought into line with amended claims. It held that an inconsistency between the claims and description does not, in itself, require amendment. Rather, adaptation is necessary only where, and to the extent that, the inconsistency results in failure to comply with a substantive requirement of the EPC. The Enlarged Board therefore rejected a general requirement for purely formal concordance between the claims and description. 

The EPO's new practice notice explains how that principle should be applied. An inconsistency arises where a statement in the description or drawings suggests an understanding of the claim that is incompatible with its apparent meaning and that incompatibility cannot readily be resolved through interpretation of the claim in light of the description and drawings. 

Importantly, the mere presence in the description of subject matter falling outside the scope of the claims does not amount to an inconsistency. Technical teachings, examples or embodiments which are not covered by the claims therefore do not automatically need to be deleted or amended. The same applies to claim-like clauses: these do not require systematic deletion simply because they are drafted in claim-like language. 

Where a genuine inconsistency remains, amendment is required only if the inconsistency results in non-compliance with an EPC requirement, including Articles 52 to 57, 76(1), 83, 84, 123(2) or 123(3) EPC. 

The notice includes two worked examples illustrating the distinction. In essence, describing a feature as optional when the claim makes it mandatory may create an inconsistency requiring correction. By contrast, an embodiment containing additional features not required by the claim does not need to be amended merely for that reason.

A “unitary process” of claim interpretation

Perhaps the more significant aspect of the notice is the EPO's explanation of how claims should be interpreted.

The EPO says that claims must always be interpreted in light of the description and drawings as part of a “unitary process”, which it also describes as a “holistic approach”. The claims remain the starting point and basis for interpretation, but the description and drawings are always consulted, rather than only where the claim appears unclear or ambiguous when read in isolation. 

There are, however, limits to that exercise. Although the description and drawings may affect the meaning attributed by the skilled person to the claim language, they cannot be used to impose a limitation or expansion for which the wording of the claim provides no basis. An embodiment containing additional features does not, merely by being described in the specification, result in those features being read into the claim. 

Conversely, the EPO says that where the description contains an express definition of a claim term, the skilled person will generally take that definition at face value, provided it is technically reasonable and consistent with the overall teaching of the claims, description and drawings. This applies to both the limiting and broadening aspects of the definition. 

These principles apply generally, rather than solely when assessing patentability under Articles 52 to 57 EPC, meaning that this part of the guidance has potential significance beyond the immediate issue of description amendments. 

Relevance to G 1/26

The EPO's guidance is particularly interesting in light of the questions now before the Enlarged Board in G 1/26 concerning the role of the description and drawings in claim interpretation.

The approach articulated in the notice, under which the description and drawings are always consulted as part of a “unitary process”, while not permitting features without a basis in the claim wording to be imported into the claim, is relevant to the issues raised by the G 1/26 referral. 

The notice does not, of course, determine the questions referred in G 1/26, which remain for the Enlarged Board to answer. It does, however, provide a useful indication of how the EPO currently understands and applies the relationship between the claims and the description following G 1/25. It will therefore be interesting to see how that approach sits alongside the Enlarged Board's eventual answers in G 1/26.