PatKat has received a copy of an internal EPO communication sent to EPO Examiners on how they should apply G1/24 (kindly sent by an anonymous Katfriend). In case there was any doubt as to how much G1/24 changed the status quo, the guidance notably fails to identify any need for a change in practice on claim interpretation. Instead the EPO essentially tells Examiners to continue to apply the current official Guidelines for Examination.
Claim interpretation: G1/24 case catch-up
In G 1/24, the EBA stated that:
"The claims are the starting point and the basis for assessing the patentability of an invention [...] The description and drawings shall always be consulted to interpret the claims when assessing the patentability of an invention [...] and not only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation."
So far, the Boards of Appeal have applied this order by consulting the description, but not using the description (and specifically definitions provided in the description) to override clear claim language (IPKat). However, this appears to have stoked rather than settled the debate on how G1/24 should be interpreted.
Earlier this week, another referral was announced, on the related issue of whether it is necessary for the description to be amended in line with the claims (IPKat).
The EPO's guidance to Examiners on G1/24
The guidance begins by noting that the Enlarged Board highlighted "the importance of the examining division carrying out a high-quality examination of whether a claim fulfils the clarity requirements of Article 84 EPC. The correct response to any unclarity in a claim is amendment (par. 20 of the reasons)". According to the internal guidance, the Examining Divisions should "therefore continue to apply the practices given in the Guidelines, in particular:
- During search, the search division considers the description and drawings (GL B-III, 3.2).
- In case of unclear claims, as far as possible, require the claims to be amended so that their meaning is clear from the wording of the claims alone (GL F-IV, 4.2).
- In case of inconsistencies between the claims and the description, continue to apply the current practice on adaptation of the description set out in GL F-IV, 4.3.
- If the claims are more limited than the description, the claims may be broadened or the description may be limited (and vice versa) (GL F-IV, 4.3(i)).
- In opposition, only inconsistencies between the description and the claims resulting from amendments during opposition proceedings are open for objections under Art. 84 (GL D-V, 5)."
The EPO then provides Examiners with two examples on how the guidance should be applied:
Scenario 1 (Claim narrower than the description)
Claim: layer 1 is positioned directly on layer 2.
Description: Definition of “layer 1 is positioned directly on layer 2” means that a maximum of two intermediate layers may be present between layer 1 and 2.
Action
1. The claim contravenes Article 84 EPC because of an inconsistency between the claim and the description (GL, F-IV, 4.3).
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| Hot off the press |
3. You should explain in your search opinion/communication to the applicant how you interpret the claims. You justify using also the broad definition in the description by mentioning G1/24, GL B-III, 3.2
and GL, F-IV, 4.2.
4. You raise an objection under Art. 84 EPC and ask the applicant to remove the inconsistency (by broadening the claims or by limiting the description as appropriate, GL F-IV, 4.3(i)). Where relevant prior art is found for one of the definitions you raise an objection under Art. 54/56 EPC.
Where you see a good way for overcoming all objections, you should indicate this to the applicant
Scenario 2 (Claim broader than the description)
Claim: layer 1 is positioned over layer 2.
Description: Definition of “layer 1 is positioned over layer 2 means that layer 1 is directly positioned on layer 2 without intermediate layers present between layer 1 and 2”.
Action
1. The claim contravenes Article 84 EPC because of an inconsistency between the claim and the description (GL, F-IV, 4.3).
2. During search, you look for prior art documents (Art. 54, 56) falling under the broad definition of the claim AND the most restrictive definition in the description as an obvious fall-back position (GL BIII, 3.2).
3. You raise an objection under Art. 84 EPC and ask the applicant to remove the inconsistency (by broadening the description or by limiting the claims as appropriate, GL F-IV, 4.3(i)). Where relevant prior art is found for one of the definitions you raise an objection under Art. 54/56 EPC. [PatKat: It will be a brave applicant that chooses to broaden the description!]
Where you see a good way for overcoming all objections, you should indicate this to the applicant. If prior art is found only for the broad scope you may ask the applicant to limit the scope of the claims based on the description."
Final thoughts
Following G1/24, therefore, Examiners are being told to search both the claims and definitions provided in the description, if these are different. Most of the guidance is otherwise directed at ensuring that there is alignment between the description and claims, and merely references the existing Guidelines for Examination.
Whilst this internal guidance indicates that this is not citable, it does note that the EPO Guidelines for Examination "will be amended accordingly in the current revision cycle." We can therefore expect updates to the official Guidelines shortly on the search strategy aspect.
Further reading
- EBA decides G1/24 on claim interpretation: The description should always be consulted (June 2025)
- First interpretation of G 1/24 (the description must always be consulted) (T 1561/23)
- G 1/24 in the spotlight: Description definitions do not override clear claim language (T 1999/23)
- [GuestPost] Has G1/24 made the referral of the question of amendment of the description from T697/22 inevitable? (29 July 2025)
- BREAKING: Referral on description amendments finally confirmed! (G1/25 - "Hydroponics") (29 July 2025)
Reviewed by Dr Rose Hughes
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Friday, August 01, 2025
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It is not reasonable to expect the EPO to read limitations into a claim that are only present in the description. Why not simply add the narrowing definition to the claim? (I understand that the answer is obvious.) If, very exceptionally, the definition cannot be captured in claim language, then an explicit reference in the claim to the description may be acceptable (R.43(6) -- see, the drafters have thought of everything).
ReplyDeleteWhat you should expect to see is the EPO using the description to interpret a claim term more broadly (which may sometimes help patentees in Art. 123(2)/(3) trap situations).
If you ever expected a change in the EPO’s dealings after G 1/24, you were far from what could be expected.
ReplyDeleteThe Guidelines B-III, 3.2 have not been amended since the opening of the EPO. Whether “The search covers what appear to be the invention's essential features and is adapted to take account of any changes in the (objective) technical problem solved by the invention that may later arise in view of the prior art found so far”, is anything but certain.
Whether all the claims have been searched, or whether a further search has been carried out when the original claims have been limited by features from the description is possible in theory. Whether it corresponds to practice is also anything but certain.
This explains that in opposition, opponents come in more than 90% of the cases with documents which were present in the EPO’s search files, but not found during the various search reports established by the EPO. It goes as far the opponent sometimes coming with prior art under Art 54(3) which is novelty destroying.
A quick survey in the 124 cases of board’s decisions after opposition since 01.07.2025, Art 123(2) has played a role in 31 cases, either in first instance or in appeal and has led to revocation, maintenance in amended form or non-admissibility of requests.
If, like Archimedes, one expects to see is the EPO using the description to interpret a claim term more broadly, this could lead to more objections of lack of novelty and inventive step. As far as the criterion of “directly and unambiguously derivable” is concerned, I doubt that by referring to the description, it “may sometimes help patentees in Art. 123(2)/(3) trap situations”.
@DXThomas:
DeleteMy reasoning is this. If the description states that X is an embodiment of the invention, and if this means in the specific case that the EPO interprets granted claim 1 broadly as encompassing X, then if granted claim 1 infringes Art. 123(2), it can at least be limited to the disclosed embodiment X without violating Art. 123(3).
You are right that if embodiment X is not new or not inventive, then also claim 1, if interpreted to encompass X, is not new or not inventive. But I wanted to point out that there are more sides to this. Proponents of the idea that the EPO should read a limiting definition found only in the description into the claim should be careful what they wish for in view of Art. 123(3).
In general, G 1/24 is also beneficial to patentees when it comes to Art. 123(2). Basically the message of G 1/24 is that the claims and description (and drawings) form one document. You can't read one in isolation from the other. (Yes, this is obvious.)
@ Archimedes,
DeleteI understand your point with respect of Art 123(3). On the other hand, decisions on Art 123(2) are typically case dependent and should not be generalised, cf. T 1363/12, last § of the catchword.
Whether the clear meaning for the skilled person of a claimed feature is either limited or broadened in the description, the situation is the same: there is an inconsistency between claims and description which ought to be resolved before grant or maintenance in amended form.
As far as G 1/24 and added matter is concerned, we do not yet have any decision on this topic. We have thus to wait and see.
On the other hand, by looking at recently published board’s decision, G 1/24 is regularly mentioned. The conclusions drawn do not appear to depart from previous corresponding case law.
From "UK Anon"
ReplyDeleteIt always seemed to me that this aspect of patent law was much more time-consuming than it really need be and could benefit from a fundamental re-think.
The basic "deal" with patents is that the applicant provides a disclosure of what his/her invention is and how to make it, and in return the state gives a monopoly. The main function (though not the only function) of the description is to provide this disclosure, while the main function of the claims is to define the monopoly given.
The applicant is not allowed to add new disclosure during the examination process - he has to "pay up front". So the main point of the examination process is simply to decide what (if any) monopoly will be given. If people were to accept this - that the description is what went in and the claims are what came out - there would often be no need to amend the description at all. You can still use the description to decide what the applicant means by the terms he uses in the claims, but you would need to accept that any flat statements of "this is the invention" or "this is an embodiment" might be out of date by grant stage, and it is (as it is now) the claims that define the monopoly.
I realise this would be a big change to the current situation, but is there any real reason why it wouldn't work?
Big change? At the EPO, yes. Everywhere else in the world no. ROW is already following your line. What reason does the EPO give, for taking its unique line? The reasons are historical. Alone in all the world until now, the EPO was the only Patent Office with no court supervising its jurisprudence on the validity of patents. So, it got the "make the rules". And it took that job very seriously.
DeleteIn general, Europe has benefitted since the bad old days prior to 1978, with a coherent and robust law of patent validity that is clearer than anywhere else in the world. No wonder that the EPO clings so tenaciously to its established case law under Art 84 EPC. It supposes that it is only a matter of time before the ROW gets into step. It has every right so to suppose. I mean, ROW has already fallen in step, more or less, on novelty, entitlement to Paris priority, obviousness, added matter and sufficiency of disclosure. Why not also on "conforming" the description as filed to the allowed claims?
I wonder, are we now going to see the UPC laying down the law on patent infringement more clearly than in the ROW, all thanks to the EPO's scrupulous attention, pre-grant, to Art 84 EPC? Me, I doubt that. Rather the opposite, I suspect.
Dear Max Drei,
DeleteYou are right when you state that the reasons for EPO’s way of thinking are historical and that the EPO is the only Patent Office with no court supervising its jurisprudence on the validity of patents.
This is the reason for the EPO to keep its strong stance on the application of Art 84 and its two prongs, clarity as such and support. The EPO is meant to deliver a standardised product in which claims and description are aligned with each other. This does not withhold courts acting post grant to have their own view on the validity of the patents and their interpretation of the claims according to Art 69 and the Protocol, which according G 1/24 is not of direct application at the EPO. .
If the prior art in post-grant courts and at the EPO is different, different decisions are inevitable. Where problems start is when post grant courts and the EPO come to diverging decisions on the basis of the same prior art. This was the case for EP 3 666 797 B1. In first instance at the UPC, the patent was revoked and before the OD the patent was maintained. I commented this divergence in my blog.
Daniel, you write:
Delete"The EPO is meant to deliver a standardised product in which claims and description are aligned with each other".
and I suppose that you see that as self-evident from the text of Art 84 EPC. My problem is that I do not see it as self-evident that Art 84 forces the EPO to insist (as a condition of allowance) on strictly "conforming" the description, by amendment, to the otherwise allowable claims. I don't read Art 84 quite like that.
And I suspect that what is a problem for me is one for an awful lot of patent people outside the EPO. What can you say, to convince me that my reading of Art 84 is wrong and yours is right?
As to EP3666797B, a lot of water has yet to flow under the bridge, no? But interesting to follow progress, sure.
Dear Max Drei,
DeleteTo me a standardised product is as I have defined it: claims and description are aligned with each other.
I do agree with you that your problem is the same as an awful lot of patent people outside the EPO.
I fear that the situation will not be as you and an awful lot of patent people outside the EPO would like to see it evolving.
I invite you to look at T 1826/23, published today, with comments on my blog.
In this decision, the proprietor argued that the description implied a more limited interpretation of claimed features. The board disagreed. If the proprietor would have introduced the limitations in the claims, he might have escaped the lack of novelty which eventually killed the patent.
The claims were manifestly not aligned with the description. I leave you to draw your conclusion.
My conclusion is clear: G 1/24 has paved the way to the adaptation of the description. That the patent is its own dictionary might get relegated to oblivion.
Will take a look, Daniel. Thanks, Max
DeleteHad a quick look at T1826/23 on your blog, Daniel. My instant knee-jerk reaction is that it might be clearing the way for a G Decision in 1/25 that says that the EPO need no longer bend every one of its sinews to achieve total conformity. Why? Because inconsistencies don't disturb the meaning of a claim that is in itself already "clear".
DeleteBelow is a Link to a blog item from the US patent law firm Finnegan. Note its comment that the EPO is "unique". I have the feeling that its authors are reading the European blogs on G1/25.
https://connect.finnegan.com/87/622/august-2025/description-amendments-in-the-spotlight---a-referral-to-the-enlarged-board-in-g-1-25.asp?sid=aa13eb8b-a256-41c1-88f1-19325eeec4c9
Dear Max Drei,
DeleteWhilst I can understand your gripes about the alignment of description and claims, I come to exactly the opposite conclusion. To me, G 1/24 is actually paving the way to G 1/25, but not in the direction you wish to see it.
As I replied to you on my blog dealing with T 1846/23, case law of the boards has confirmed the fact that the description cannot be used to give a claimed feature a more limited or broader interpretation through the description. This defeats the whole purpose of the claims, if third parties have to delve deep in the description to understand what the scope of the claims could be.
If the applicant wants to have a more limited or a broader interpretation of claimed features as stated in the description, what hinders the applicant to bring those definitions in the claims? Up to now, I have not seen a satisfactorily answer to this important question, which is at the basis of the whole problematic of alignment of claims with description.
In this respect G 1/24 is quite clear: consult the description, don’t ignore it, or only look at it if the claim as such is unclear.
If, before grant, the ED had done its job properly we would not have ended with G 1/24 and the Agfa/Gucci decision of the UPC. The job of the EPO is to abide by the EPC in general, and Art 84 in particular. It is not to ignore Art 84 for the sake of gaining time during examination, or because Art 84 is not a ground of opposition.
I have read the Finnegan’s article when it came out, but I would like to observe that the London branch of Finnegan is dealing primarily with applications of US origin. That for US clients, acquainted with the notion of “file-wrapper” estoppel, it is hard to understand the necessity of alignment between claims and description.
US clients do also not understand how added matter is dealt with at the EPO. Unless Art 84 and 123(2) are amended, they will have to accept what is decided by the case law of the TBA and EBA.
Daniel, I think you are a bit hard on "US clients" in general. By now, mine at least are well-aware of the EPO's Gold Standard, why it exists and consequences can flow from it. I recall a moment about 30 years ago (or whenever it was that the EPO decided what to do about the "fatal trap" set by Art 123(2) and (3) EPC). My instructing associate in a US patent law firm was 100% convinced that the EBA would never ratify the fatal trap. That was the moment when he realised that rules in the home jurisdiction don't always transfer to a foreign jurisdiction.
ReplyDeleteJust as with the fatal trap, up until now, The EPO has had a clear field to tell us all what Art 84 EPC means. With the advent of the UPC however, and any political pressure on the EPO that can be derived from the workings of the UPC, I think that might soon change.
Of course, that can have only an indirect effect on how the EPO continues to examine pending patent applications for clarity of claiming and support of those claims from the description. Nobody can stop it from retaining its present hard line, indefinitely.
It occurs to me that the famous disodium pemetrexed claim might continue to provide food for academic thought on the matter of "conforming the description". The scope of protection was wider than the disodium salt. The contribution to the art was wider. The invention announced in the application as filed was wider. Problematic for the Applicant was i) the complete absence of a claim presented at the correct level of generality, together with ii) the impossibility of introducing such a claim during prosecution at the EPO. The political issue was how high a price Applicant has to pay for failing to include a claim at the right level of specificity.
Historically, courts are less inclined than the EPO to demand the highest possible standards of drafting of patent claims and descriptions. I suspect that the courts will therefore be somewhat more reluctant than the EPO to insist that the desciption must be amended to excise any subject matter outside the strict literal wording of the claim or labelling it "not the invention". Thinking again of the pemetrexed case, they might even express a preference to leave the description alone, thereby to simplify at least the validity issues in court and even, possibly, the infringement issues too.
Time will tell, I suppose, whether the meaning of Art 84 EPC remains what the EPO says it is.
Dear Max Drei,
DeleteI am sure that you have well briefed your US correspondents. Hoever, this is not the feeling I got in recent consultations, with other US applicants.
I have seen descriptions in which every sentence begins or includes “may”, and the belief was that this allowed to claim post filing any combination of features which may be thinkable/available. Needless to say that it is not what the EPO will accept. In T 1203/13, it was even held that, if everything is optional, nothing is optional.
As far as the famous disodium pemetrexed case is concerned, the contribution to the art was NOT wider. The invention announced in the application as filed was claimed to be wider, but there was no support for this claim at filing.
The only example in the whole disclosure was pemetrexed disodium. I am still of the opinion, that it would have been easy for the applicant, if he had been in possession of the full invention, i.e. the applicability to other salts, to bring in the original filing further data allowing a generalisation.
This is why the examiner rightly refused to grant claims only for pemetrexed. The examiner even raised, rightly, an objection under Art 123(2). Lord Neumann and Sir Robin Jacob claimed that the examiner was blatantly wrong in raising said objection. In the absence of any support in the original disclosure the examiner had no other choice. Contrary to Lord Neumann and Sir Robin Jacob, the examiner was not blatantly wrong, but absolutely correct.
The problem was indeed that the applicant blatantly refused to align the description with the claim as granted. He insisted on keeping the general statement in the description and eventually the examiner gave up.
The generalisation was used later by the UKSC as it developed a new theory of equivalents going away from Improver.
You are thus right that the famous disodium pemetrexed case is a prime example of inconsistency between claim and description. This would not have hindered the UKSC to conclude of infringement by equivalence, but the situation at grant was clear: only pemetrexed disodium had been disclosed and nothing else.
Whether “Historically, courts are less inclined than the EPO to demand the highest possible standards of drafting of patent claims and descriptions” is actually irrelevant, as courts are free in their interpretation of the EPC. The EPO cannot impose on them its interpretation, but the courts can also not impose their interpretation to the EPO.
Whether “courts will therefore be somewhat more reluctant than the EPO to insist that the description must be amended to excise any subject matter outside the strict literal wording of the claim or labelling it "not the invention"”, is as well irrelevant, see above.
Whether courts “might even express a preference to leave the description alone, thereby to simplify at least the validity issues in court and even, possibly, the infringement issues too”, is again irrelevant for the same reason as above.
I have told you many times that, once the notion of file wrapper estoppel will be brought in the EPC, then, there will be no need to adapt the description. For this Art 84 will need to be amended, at least the part support. For French applications, the description cannot be amended, and the same is valid in the US. But this is not what the EPC says in its present version.
Time will not tell, whether the meaning of Art 84 EPC remains what the EPO says it is, as national courts are free in the interpretation of the EPC. For the same token the EPO is free to interpret the EPC as it thinks fit. The only way the EPO will change its practice, is if Art 84 is amended or if the EBA comes up with a “dynamic interpretation” of the EPC. I do however not wish to see again a situation as that created by G 3/19.