CASELAW-EPO - reviews of EPO Boards of Appeal decisions

I have made an analysis of the positions of the president and of the parties, as well as of all 40 Amicus Curiae which have been addressed to the EBA.

Not all Amicus Curiae have answered the three questions. Some have merely commented.

Position of the president of the EPO and of the parties

The position of the president of the EPO cannot come as a surprise as its point of view is enshrined in the Guidelines, an first instance divisions are bound to those.

That the proprietor of the patent at stake is against the adaptation does not come as a surprise.

The position of the opponent is rather special. In general and in previous referrals, the opposing party always took a contrary position to that of the other party. This is not the case here. It is manifest that the representative of the opponent does not want to necessarily agree with the proprietor and has therefore added some conditions to its replies. It is clear that it did not want to say yes, as this would undermine his position in later cases.

Admissibility of the referral

Admissibility has rarely be questioned for question 1, but more for question 3.

Summary of the replies

When looking at the vast majority of Amicus Curiae, the EPO should stop immediately to require adaptation of the description to the claims.

From the briefs having answered Q1  75,0% have answered NO

From the briefs having answered Q1  17,5% have answered YES

From the briefs having answered Q3  67,5% have answered NO

From the briefs having answered Q3  12,5% have answered YES

Against adaptation of the description to the claims

Most of the briefs having answered NO stem from patent representatives or associations of representatives, like epi, CIPA, CNCPI (FR), VPP, AIPLA, JP IP Association, or from firms using the EP system and associations of such firms like FEMIPI, IPAC of the BIA (UK) or the IP Federation.

The main reasons brought forward are

• the lack of legal basis for this requirement in the EPC,
• the risk of introducing added matter,
• the capability of post-grant deciding jurisdictions to come to a proper interpretation of the claims in view of the description,
• disproportionate efforts and costs to applicants/proprietors
• inconsistencies between the description and amended claims do not introduce uncertainty or unclarity and last but not least,
• nothing in the EPC prevents applicants/patentees from including subject matter in the description that, while related to the invention, is not claimed
• the EPO is not required and is not empowered to determine the “extent of protection”
• the EPO is an outlier within the other patent offices.

One example given in an amicus curiae claims a screw. The description mentions a rivet. According to the author, it would allow to cover equivalents and would also represent an infringement according to the German Federal Court. The problem is that a screw is a releasably means for fixing two pieces together, but a rivet is anything but a releasably means for fixing two pieces together. The rivet can only be removed by destroying it. We are thus far from equivalents…..

Adaptation of the description to the claims is necessary

The few Amicus Curiae who are in favour of the adaptation of the description to the claims, be it in opposition and in examination, bring forward the following reasons

• the European patent system presupposes consistency between claims and description                 
• inconsistencies are not merely of formal concern  
• an inconsistency between claims and description can allow the proprietor to claim more that he is entitled to, as national courts can ignore the claims and base the interpretation on the broader meaning in the description
• the Travaux Préparatoires to the EPC 1973 lead to the conclusion that claims and description must be consistent with each other
• applying G 3/14 can bring problems in opposition is the description is not adapted.      

As legal basis all Amicus Curiae in favour of adaptation, as well as the president of the EPA are proposing as legal basis Art 84, and possibly R 42(1,c) and R 48(1,c).  

Some of the Amicus Curiae in favour of adaptation went back to the “Travaux Préparatoires to the EPC 73 and also referred to the PCT..

It is interesting to Note that the German Patentanwaltskammer has replied positively to Q 1+3..

The GRUR Standing Committee on Patent Law did not answer Q1 and declared that no uniform position on the “Whether” of the adaptation of the description was reached among its members. It added that if necessary adaptation should only to be done on the claims intended to be granted or upheld.         

Some comments on the case law brought forward in the briefs

It in interesting to note that the famous decision of the UPC-CFI Hamburg Agfa/Gucci has been used both by

• those against an adaptation of the description, as the UPC-CFI Hamburg was perfectly able to ignore the meaning “chromatic” when deciding on the scope of protection, and
• those in favour by noting that the UPC-CFI Hamburg mentioned that “chromatic” should have been deleted before grant.

One of the writers of an Amicus Curiae showed also, that contrary to what some have alleged in favour of not adapting the description, that by not adapting the description, the proprietor could be entitled a much broader scope of protection than that resulting from the plain wording of the claims, by merely using the description as a dictionary. A nagtional court acted accordingly.

In its decision UPC_CFI_358/2023, 13.11.2025, the UPC-CFI-LD Paris, in HP vs. Lama held that, in spite of Figs 4+8 clearly marked as “unclaimed example”, since those figures were part of the disclosure, they could be used to interpret the claim. The court referred to these figures in its decision. The only medicine against this is to require to clearly mark those figures as not falling under the claims if they do not have any other purpose.

It is also interesting to note that whether they were against or in favour of the adaptation of the description to the claims, both groups referred to G 1/24, but with exactly opposite conclusions.

Some claim that G 1/24 said it all, and allows to conclude against adaptation.

Others claim that G 1/25 is the continuation of G 1/24 (not just myself).   

Some further comments

When looking at the long lasting line of case law requiring adaptation of the description, it appears that the EPO and its boards of appeal cannot have erred in their requirement of the adaptation of the description for over 45 years.

Experience shows that the EBA has rarely thrown overboard a long lasting line of case law. If the EBA found good reasons to confirm it on the basis f the EPC, it has confirmed it. I think here to the red line going through its decisions on what is directly and unambiguously derivable. That in the question of the validity of priority it put an end to a pure formal objection was however justified.

Now it is wait and see.

Reasons why the EPO cannot be compared to national granting authorities

For patent specialists, it should however not come as a surprise that the EPO is an outlier in the patent system and requires adaptation of the description. The EPC has been conceived with a clear cut difference between grant and post-grant procedures before national courts and the UPC. It has been set up as a system in which its competence stops at grant, and only regains competence on validity in case of oppositions.

In view of the dichotomy between grant and use of the title after grant, It appears necessary to arrive to an harmonised interpretation of a granted patent before and after grant that any inconsistency has to be removed before grant or before maintenance in amended form.

In an autonomous system, like a national granting an judicial system in contracting states of the EPC, national courts can iron out inconsistencies between claims and description, but this is not guaranteed as a national example has been given. The same could also happen at the UPC, even if it was not so in the Agfa/Gucci case.