Rarely a decision of the EBA has attracted so many comments, many of which have been highly critical. I have commented G 1/25 in my blog.
G 1/25 has been commented in IPKat, in different place, e.g. here and here.
G 1/25 has been commented in Kluwer Patent blog, in three different places. Here, here and here.
G 1/25 has also been commented in Le Blog du Droit Européen des Brevets.
I found in Lexology a series of comments stemming from various firms of patent attorneys.
They stem from Venner Shipley, Gill Jennings & Every LLP, Richardt Patentanwälte PartG mbB, Marks & Clerk, Lewis Silkin LLP and Finnegan, Henderson, Farabow, Garrett & Dunner, LLP. This list does not claim to be exhaustive.
In a post published before the summer, I found out 5 situations in which the description need to be adapted.
In view of G 1/25 and the numerous comments, I have revised this list. The list has not changed, but for some of them explanations appear appropriate in view of G 1/25.
1. Different definition of the matter for which protection is sought in the description and in the claim
When the description gives a different definition of the subject-matter for which protection is thought, this definition can be broader or more limited than that derivable from the plain wording of the claim.
In G 1/25, the EBA endorsed the holistic approach found in T 0439/22.
This does, in my opinion, not mean the definition found in the description is merely “virtually” or “intellectually” “read” into the claim and nothing changes.
What the EBA said, may be not in so many words, is that the definition found in the description is actually replacing in the claim the original feature.
In doing this exercise, the inconsistency stemming from the different definitions in the claim and in the description is automatically resolved. If it leads to a lack of N due to broad prior art, then any further discussion on the adaptation of the description becomes moot.
In the absence of relevant prior art, this does not dispense the applicant/proprietor to align description and claims in order that no different definition of the matter for which protection is sought between claims and description is possible.
Only then, the claims can be held properly supported by the description. The choice is left to the applicant/proprietor to decide whether the definition of the description comes into the claim or the definition in the claim comes into the description.
After this exercise, the definition of the matter for which protection is sought is automatically aligned in the description and in the claim. Care should be taken for any amendment to comply with the requirements of Art 123.
In T 439/22 the board actually “wrote” the broadening definition in the description into the claim, with the consequence that claim 1 as granted lacked N. Description and claims were de facto aligned.
In numerous cases, e.g. T 2027/23, the boards have refused to “read” in a broad claim limitations which were only disclosed in some specific embodiments. This was neither suggested in G 1/24 nor in T 439/22, when the latter is applied as suggested in G 1/25. A broad claim remains a broad claim in spite of limiting examples found in the description.
If the boards would accept this view, it would mean that the subject-matter of dependent claims would, when it comes to N and IS, take the place of the subject-matter of the independent claim. This cannot be serious. Dependent claims are there to protect directly specific more limited embodiments, and are often disclosed as optional in the original disclosure.
This implies necessarily that a broadening or a limiting feature has to be applicable to all embodiments originally disclosed in order to be “read/written” into the claim according to G 1/25.
2. One alternative originally claimed is deleted
When one originally claimed alternative has been deleted from the claim in view of the prior art, the description cannot continue to disclose this feature as belonging to the claimed invention.
This is best exemplified in the Agfa/Gucci case. An obiter dictum in a decision of a UPC CFI is not binding to the EBA or to any board of the EPO, but the court clearly criticised the maintenance of “chromatic” at grant.
By leaving “chromatic” in the description, it allowed Agfa to claim infringement also for the “chromatic” alternative, although it was deleted from the granted claim. In other words, Agfa created a nice Angora cat.
3. Optional feature in the description
Once a feature disclosed as optional in the original description is used to limit an independent claim, the optional character of said feature cannot be left in the left in the description. It has to be deleted. This happens mostly when the subject-matter of a dependent claim is incorporated in the original independent claim.
In this situation, leaving the in the description the optional character of this feature, would allow the proprietor to allege that its claim is actually broader than its plain wording. We are mutatis mutandis in the Agfa/Gucci situation.
4. Original embodiments not any longer encompassed by a limited claim
When after examination or opposition, the original independent claim is limited and some originally disclosed embodiments are not any longer patentable for lack of N and/or IS, those embodiments cannot be held in the description as still falling under the definition of the matter for which protection is sought. They do not have to be deleted, but marked accordingly.
Leaving in the description unmarked embodiments, but not any longer falling under the definition for which protection is sought, would allow the proprietor to allege that its claim encompasses features actually broader than its plain wording would allow. Here as well, we are mutatis mutandis in the Agfa/Gucci situation.
5. Claim like clauses
Claim-like clauses are not a notion found in the EPC, neither when it comes to the claims nor to the description. There is no mention of claim like clauses in R 42 governing the content of the description, nor in R 43 governing the content of the claims.
Claim-like clauses are also a way of saving claim fees. This is not acceptable either.
Conclusion
For a start, in G 1/25 the EBA has made clear that Art 84 is not limited to the claims, but also touches upon the description, in that the claims ought to be supported by the description.
In cases 1-4, leaving in the description statements allowing to give the matter for which protection is sought different interpretations implies real substantial doubts about the claimed subject-matter.
It is true that the EBA has said that formal concordance is not needed, but the EBA has left no doubt about substantial concordance between claims and description when it come to compliance with Art 52 to 57, 76(1), 83, 84, 123(2) or 123(3).
For legal certainty, it cannot be left to the applicant/proprietor to change the definition of the matter for which protection is sought as he thinks fit. After G 1/25, Angora cats should become a thing of the past.
This does by no mean withhold jurisdictions acting in post grant or post maintenance actions to decide whether there is direct, indirect or infringement by equivalence.
Some older case law in line with G 1/25:
T 2766/17, Reasons 6, penultimate §: the description cannot contain statements contradicting the plain claim wording as it may cast doubts as to the intended meaning of this wording.
T 0758/13, Reasons 2.1, last §: purely formal support by the description through repetition of the mention of a claimed feature does not meet the requirements of Art 84.
T 2178/17, Reasons 6.6.3: the adaptation of the description is not an amendment of the grounds of appeal relied on by a party and Art 13(2) RPBA does not apply. In Reasons 6.3.1: it is common practice, to postpone the submission of an adapted description until one request, in the form of a set of claims defining the matter for which protection is sought, is found admissible and allowable by a competent administrative department or by a board. Only when an allowable set of claims is available, is the adaptation of the description and its examination on the requirements of the EPC carried out in a subsequent final stage.
Comments
28 replies on “G 1/25-Some further thoughts”
DXT is to be thanked sincerely for his efforts to advance understanding of the practical consequences of G1 25. I see that one of his cited commentators observes that applicants are mostly inclined not to go to appeal only because of a disagreement about confirming the description and drawings to a narrower claim. So yes, we are going to have to wait a long time before the consequences of G1/25 become clear.
One commentator mentioned the situation where the original claim 1 recites 10 to 90% and this I want to enlarge upon.
Suppose that I support this claim, in the application as filed, with a cascade of ever-narrower claims, corresponding to an ever greater technical performance which amoothly increases to a peak occurring in the composition range at around 35%. This claim set is supported by a dozen or so experiments that with point values, not ranges, explore the full range from 10 to 90. Nowhere does the description declare that any one experiment is or is not “the invention”.
It turns out that 10 to 90 is too ambitious. In prosecution I need to narrow to the smaller range of claim 2. Or 3. One or other of my experiments now lies outside the range recited in amended claim 1. Is the EPO examiner now going to assert, based on G1/25, that they have real doubt what the claim means and that therefore the description must be amended?
Time will tell, I suppose
@ Max Drei,
I have to stress that it would be presumptuous for me to speak in the name of the EPO. I draw my conclusions from a long career at the EPO, in the patent world (50+ years), and through a continuous analysis of case law of the boards.
In the example you have given, I think that the examiner will assert, based on G1/25, that there is a real doubt what the claim means and that therefore the description must be amended.
The reason for this, is that the experiments are all about point values. That from point values ranges can be claimed is not disputed. However, it means that the values outside the restricted range are not any longer representative of the matter for which protection is sought. Introducing the smaller range of claim 2 or 3, corresponds to point 4 in my blog.
I accept that I could be wrong, but my gut feelings says no.
I would like to understand your position and I understand why Max Drei raised the question he did.
The Enlarged Board was careful to say “An inconsistency is not established merely because the description, including any drawings, contains a technical teaching, examples, or embodiments that do not fall within the claimed subject-matter.” What would be an example of a technical teaching that is outside the claimed subject-matter but which could be retained because it is not an inconsistency?
If Max Drei’s example is not an example of what the Enlarged Board was talking about, then what is?
Or, to put it another way, given a moderately intelligent and well -informed reader of a B publication that includes mention of the relevant prior art, and with a mind willing to understand, is it really tenable that the reader perceives an “inconsistency” that is potent enough to raise real doubts about compliance with Art 84?
As to Art 69, methinks deletion of some of the experiments, or inserting that they are not within the scope of protection, makes the job of the infringement court harder, not easier..
I can imagine similar situations raising in a chemical case with echoes of pemetrexed.
Meanwhile, Daniel, thank you for your thoughtful reply
@ Max Drei,
I have never said that the some experiments have to be deleted. I would not delete them, but “being a moderately intelligent and well-informed reader of a B publication that includes mention of the relevant prior art, and with a mind willing to understand”, the fact is that some experiments are not any longer encompassed by the definition of the matter for which protection is sought in the claim. This is a fact which cannot be disregarded under G 1/25.
I am thankful to you for the wonderful defintion of the reader of a B publication.
If the situation described here does not represent a real doubt in the meaning of G 1/25, then nothing will ever represent a real doubt in the meaning of G 1/25.
Even if Art 69 is not to be applied in procedures before the EPO, the fact of not deleting the examples not any longer encompassed by the definition of the matter for which protection is sought in the claim, is to nevertheless give a jurisdiction acting in post grant or post maintenance procedures a good picture about the technical teaching conveyed by the patent.
Clarifying what falls under the definition of the matter for which protection is sought is not antinomic with allowing a later court to decide upon direct, indirect infringement or infringement by equivalence. Different courts can have different views on the topic, but the proprietor should not be @ Max Drei,
I have never said that the some experiments have to be deleted. I would not delete them, but “being a moderately intelligent and well-informed reader of a B publication that includes mention of the relevant prior art, and with a mind willing to understand”, the fact is that some experiments are not any longer encompassed by the definition of the matter for which protection is sought in the claim. This is a fact which cannot be disregarded under G 1/25.
If the situation described here does not represent a real doubt in the meaning of G 1/25, then nothing will ever represent a real doubt in the meaning of G 1/25.
Even if Art 69 is not to be applied in procedures before the EPO, the fact of not deleting the examples not any longer encompassed by the definition of the matter for which protection is sought in the claim, is to nevertheless give a jurisdiction acting in post grant or post maintenance procedures a good picture about the technical teaching conveyed by the patent.
Clarifying what falls under the definition of the matter for which protection is sought is not antinomic with allowing a later court to decide upon direct, indirect infringement or infringement by equivalence. Different courts can have different views on the topic, but the proprietor should not be allowed to define the matter for which protection is sought as he sees fit, based on a not adapted description. .
@ Anon.-11.09.2026
I refer to my last reply to Max Drei.
For the surplus, you have to ask the EBA for an answer. The EBA has positively decided what is an inconsistency: any statement left in the description which allows real doubts about the definition of the matter for which protection is sought. It has not defined what is an inconsistency which does not raise real doubts about the definition of the matter for which protection is sought.
For logical reasons in the legal argumentation it was necessary to acknowledge two types of inconsistencies, but it was sufficient to define one of them.
I further refer to the three decisions mentioned at the end of the blog. Any person “being a moderately intelligent and well-informed reader of a B publication that includes mention of the relevant prior art, and with a mind willing to understand”, should be able to understand what the EBA meant.
Holding on to reasons 20 and 22 as if they were a lifesaving buoy will not help you further. The unidirectionality of Art 84 and basing the refusal to adapt the description on T 56/21 was also holding on those like a lifesaving buoy. I hope you have realised what happened to those arguments.
For the rest we will have to see how the boards will apply G 1/25. Some boards have already considered that in certain cases the description need not to be adapted. But those decisions are a dwindling minority.
I am thankful to Max Drei for is definition of the preson reading a B specification.
Your example is, to me, spot on aligned with the first sentence of r20.
(r20: An inconsistency is not established merely because the description, including any drawings, contains a technical teaching, examples, or embodiments that do not fall within the claimed subject-matter)
I don’t know what the examiner will do, but I do know what (s)he should do: Apply r20.
@ bj-13.09.2026
I am not sure which example you are referring to. If it is the example with the ranges and the point values, my conclusion is exactly the opposite.
Like all the people not in favour of adapting the description you stick to the first sentence of Reasons 20. Why do you wilfully ignore the second sentence of Reasons 20?
If it turns out that 10 to 90 is too ambitious and only a smaller range is allowable, all values outside the claimed range cannot, in all logic, be held to be encompassed by the claimed range. It has thus to be made clear that the values outside the range do not belong to the claimed range. They do not have to be deleted, but cannot be left as this implies that they still represent the claimed invention.
Support of the claims by the description does not mean that the description can contain statements allowing a broader interpretation of the claimed range.
If the values allowing to claim the broad range are maintained unamended, I would go as far as to allege that, in application of G 1/24 and T 439/22-2 as explained in G 1/25, the “apparently” limited claim still lacks novelty or inventive step.
Without amending the description, the reasons for refusal or revocation would still be present.
I cannot speak for the examiner, but if I where the examiner. I would apply the second sentence of Reasons 20.
I am referrring to the example of MaxDrei. He explained, importantly ‘ Nowhere does the description declare that any one experiment is or is not “the invention”.’
In such a case there is no reason at all to assume that these examples outside the scope of the claim might alter the scope of the claim or cause a lack of support. The examples are there, with a neutral status, with their status ‘according to the invention Yes or No’ undecided, to be determined if and when needed.
If you argue differently, that would mean that if an example is present in the description, it automatically produces an assumption that that example is part of the claimed invention. For me that is really stretching things too far. There can be inert ballast in a patent description, and in the absence of positive indications that something is according of the invention, it is not. Just being present is not sufficient.
You wrote: ‘ Like all the people not in favour of adapting the description you stick to the first sentence of Reasons 20. Why do you wilfully ignore the second sentence of Reasons 20’.
I did not ignore it. I just think that it is not applicable, because it is not unclear whether the examples do, or do not fall within the claimed subject matter. It is, on the contrary, perfectly clear: Anybody can imediately decide, after reading the example, whether it is yes or no according to the claimed invention. So there is no unclear situation, of the type referred to by the EBA in the second sentence of R.20.
You wrote ‘ Support of the claims by the description does not mean that the description can contain statements allowing a broader interpretation of the claimed range.’
I agree that the description should not attempt to define the scope of protection differently than the claims, but there is a certain objective threshold to be met before such a situation occurs. Merely ‘allowing a broader interpretsation’ is an unneccessarily low threshold, that does not consider the substance, but only formal alignment, and causes a lot of administration without any noticable substantive gains.
You like to refer to the achromatic/chromatic case as an example of something that went wrong and should be avoided. I see that case as a futile attempt, bound to fail from the beginning, to re-define the claim. There will always be people who argue untenable positions if the stakes are high enough.
@ bj-14.09.2026,
I think it is as best naïve to think that by not using the word “invention” or “embodiment” you will escape the necessity to adapt the description once the claim has been limited and some of the experiments are not any longer within the reduced claimed range.
The reason is not found in G 1/25 but in G 1/24 as explained in the latter decision. Any statement in the description will be taken at face value, and in spite of the limited claim, you will be faced with the values outside the range to be read into the limited claim. You will therefore not escape a N or IS objection.
What do you prefer, refusal or revocation because the description has not been adapted or because of a N or IS objection is raised in view of the broader disclosure? This is exactly what happened in T 439/22-2 (gathered). In French, I would call this choosing between pest and cholera. The result is not much different.
I would not delete the values corresponding to the originally claimed range, but they cannot, in all logic, be held as not having any link with the subject matter.
Inert ballast in a patent description does not have to be deleted, but claiming that the larger range compared with the eventually limited range cannot be said not to have any link with the matter for which protection is sought is going way to far. I would allow so far go as far as to claim that you are either acting in bad faith, or at least not with a mind willing to understand.
What I have said here about the ranges of values, applies mutatis mutandis to the “chromatic”/”achromatic” case. That a jurisdiction acting post grant or post maintenance in amended form, i.e. faced with the claim having a limited scope, but a not adapted description, can ignore G 1/24 and G 1/25. This does not mean that the EPO and its boards can ignore those two important decisions.
Last but not least, when it comes to futile argumentation, please think about it twice. You are bringing futile arguments which are clearly at odds with the whole philosophy behind G 1/24 and G 1/25.
My patience is coming to an end. Should you keep insisting like Who knows ! has done, I know what I have to do.
“It is true that the EBA has said that formal concordance is not needed, but the EBA has left no doubt about substantial concordance between claims and description when it come to compliance with Art 52 to 57, 76(1), 83, 84, 123(2) or 123(3).”
This seems correct, but only up to a certain point. It all depends on what one means by “substantial concordance”. If I understand you correctly, M. Thomas, your understanding of “substantial concordance” is so extensive that it is indistinguishable from “formal concordance”. In other words, any discrepancy whatsoever is enough to trigger the “substantial concordance” requirement.
This cannot be correct. It cannot be what the EBA intended, otherwise their clear statement that mere formal consistency is not required, becomes a completely dead letter with no meaning.
To aid with understanding, could you perhaps give an example of where you see the distinction between “formal” and “substantive” concordance? Can you give an example, for instance, of an inconsistency which would not trigger the “substantive” need for amendment, only a “formal” one? Because at present it seems that ALL inconsistencies, in your view, are “substantive”.
@ Anonymous-11.09.2026,
Please look at my last reply to Max Drei and to Anon.-11.09.2026.
I do not have anything to add, besides that I do not have the intention to repeat myself.
My position should by now be clear to any person according to the definition given by Max Drei, i.e. any person “being a moderately intelligent and well-informed reader of a B publication that includes mention of the relevant prior art, and with a mind willing to understand”.
I am thankful to Max Drei for this definition.
I suppose the moderately intelligent and well informer reader referred to by MaxDrei may be equated to a person skilled in the art.
The CGK of the skilled person have to be considered since they allow the explicit content of the description to be complemented by implicit teachings apparent to the skilled person. This is part of consulting the description under G 1/24. The CGK are frequently a key input to claim interpretation, and they are relevant to the assessment of all the EPC conditions (novelty, IS, sufficiency, new matter, clarity).
The CGK have to be available at the filing date for them to be admissible in the assessment of the EPC conditions. And they pertain to the person skilled in the art. The next question is : which art ? The answer again is found in the original application, which mentions the field of the invention, esp. the field of use, the problem to be solved, the effects/advantages.
Consulting the description according to G 1/24 is thus a two-level analysis. And it is clear to me that the description to be consulted is that of the original application, for the reasons above.
I agree, Mr Hagel, that the field of use declared in the application as filed, the free choice of the applicant, is of decisive importance. However, unless you are alluding to Art 123(2) EPC, I am not yet convinced that the answer, post-grant, is to be found in the originally filed description, at least in cases where during prosecution claim 1 is narrowed.
Suppose I am an architect (or vehicle engineer) good at mathematics and using CAD software. I invent an open mesh of struts in the form of a cylinder that, because of the particular new and inventive geometry of the struts and nodes, is better able to distribute throughout the mesh the stresses resulting from side impacts. I set out a wide range of potential uses, over many fields of technology.
Crucially, as it turns out, I have a stray afterthought that promps me to include a dependent claim to my cylinder, realised in the form of a trans-luminal nickel-titanium stent made of nickel-titanium shape memory alloy. I write in the description of my application as filed that, thanks to my invention, I can use a thinner gauge of nitinol and so access more vascular stenoses in narrower arteries than such stents hitherto.
During prosecution, my claim 1 gets narrowed down to the carotid stent. It turns out that this is the only subject matter disclosed that remains patentable. The claim gets granted and opposed by a leading manufacturer of nitinol stents. In which art do we find the skilled person and their cgk? Is the skilled person the same, before and after the narrowing amendment? After all, the technical problem has not changed.
Or does the B publication force a different definition of the skilled person?
Daniel, sorry, I just broke my own resolve, not again to resort to a hypothetical. Sometimes, as here, I am drioven by the thought that hypotheticals can be more fun to debate than theoreticals.
@MaxDrei
The second leg of your hypothetical, a stent, is so remote from the automotive field that I do not see how they could share a technical problem. The UPC CoA decision Meril cv Edwards of 25 Nov 2025 precisely relates to the type of structure you refer to. Points 51-55 dealing with the problem and the skilled person are of such special interest that I copy them below. The problem as described in points 53 & 54 combines structural aspects with the physician’s perspective, and consistently, the skilled person is a team including a medical device engineer and an interventional cardiologist.
This shows that the problem to be solved is to be considered with a holistic approach. It includes the objectives/constraints which pertain to the specific field of use and are a key component of the CGK pertaining to this field. They may be explicitly mentioned in the description but it is common that they are implicit and derivable in view of the CGK.
I think your hypothetical is unrealistic because covering two remote fields of use would actually boil down to two separate applications.
Another type of situation with different problems is quite common and familiar to patent practitioners. This happens if you draft an application so as to cover a structure, such as the one you describe, without claiming the field of use of real interest to the applicant in the independent claims. The field of use may, or may not, be claimed in dependent claims. In such a case, it is highly advisable to provide adequate support in the original application for a fallback position limited to the field of use, which includes the embodiments/examples and preferably explains the effects/advantages specific to the field of use.
Meril v Edwards UPC CoA 25 Nov 2025
“51. The patent concerns a system comprising a prosthetic heart valve and a delivery catheter comprising an inflatable balloon.
52. The patent specification states that a prosthetic valve is mounted in a crimped state on the end portion of a flexible catheter and advanced through a blood vessel of the patient until the valve reaches the implantation site. The valve at the catheter tip is then expanded to its functional size at the site of the defective native valve such as by inflating a balloon on which the valve is mounted (paragraph [0003]).
53. According to the specification, sealing devices that are needed to seal the interface between the prosthetic valve and the surrounding tissue to avoid regurgitation (leaking of blood) may increase the overall profile of the prosthetic valve in the compressed state (paragraph [0004]). In this context it is mentioned that a prosthetic valve that has a relatively large profile or diameter in the compressed state can inhibit the physician’s ability to advance the prosthetic valve through the femoral artery or vein and that a smaller profile allows for treatment of a wider population of patients, with enhanced safety (paragraph [0005]).
54. Against this background, the patent aims at improving the design of a balloon-expandable transcatheter prosthetic heart valve. To achieve this aim, the patent teaches to use a system as defined by the patent claims, which inter alia reduces the crimping profile of the valve and provides stability during crimping and subsequent expansion ([0039]) (the objective problem underlying the patent is discussed more exhaustively in paragraphs 137 ff. below).
@ Max Drei-12.09.2026
@ Mr Hagel-13.09.2026
Once again we are faced with a situation which could exist, but seems very far, too far from reality.
Bringing a reinforcement for side impacts in a car in for of a mesh of struts in the form of a cylinder together with a stent is simply not plausible.
For a car, the skilled person is competent in this field is totally different from the skilled person for a stent.
For a car, the skilled person is a mechanical engineer used to work with materials which can be used in the automotive industry. Those materials can be metals or composites. The need for a chemical engineer is not apparent at all.
For a stent, the skilled person is a composite made up of a doctor, a mechanical engineer and a chemical engineer. You need a doctor as the subject matter is a medical device, and it has to be sure that the stent will not damage the vessel in which it is implanted. You need a mechanical engineer to assess the mechanical stability of the stent. You need a chemical engineer as the material of the stent has to be biocompatible as it has to be expandable and at the same time there is a biological fluid which needs not to be polluted.
Max Drei, your comparison and example cannot be taken to illustrate the problems we are faced with in everyday patent life.
Mr Hagel, I do not need to resort to UPC decision to define the skilled person. I have been working in the field of stents for around 12 years, during a period where applications for stents were literally exploding.
When it comes to a pacemaker, I would add an electronic engineer as a pacemaker is actually a pulse generator.
I appreciate your efforts to reply but am disappointed not to get any further forward with the debate whether it is the A or the B publication that sets the OTP. And as to whether my hypo is divorced from “real life” I want to add that it was inspired by watching an engineer use a CAD system to improve the resilience of a cylindrical open mesh . The engineer’s employer happened to be a stent maker but the CAD exercise was to optimize the mechanical properties of an apertured cylinder, any such cylinder, regardless what use will be made of the more resilient cylindrical object. The set of claims I postulated is the one I might have drafted had I been given the task.
But hey, never mind. Once again, a hypo fails. Another lesson learned.
@ Max Drei-13.09.2026,
In view of the two very different fields in the A publication, there is not one skilled person, but two. The one is the automotive engineer, and the other one is a composite as explained before. The link between them is the use of a CAD system. Beyond that, they have nothing more in common.
Once the claim is limited to a stent, the skilled person in the automotive field has disappeared.
Such case is rather rare and no general conclusions about who is the skilled person cannot be drawn from your example.
Again, thanks, Daniel. Agreed that, for the claim that got to grant, the skilled person is stent-oriented, and for claim 1 of the application as filed, not.
That said though, I’m not sure that the skilled person for originally filed claim 1 is located in the automotive field. I mentioned in my original comment architecture and in my follow-up wrote that the strut geometry problem solved by the claimed subject matter:
“was to optimize the mechanical properties of an apertured cylinder, any such cylinder, regardless what use will be made of the more resilient cylindrical object”.
But never mind. As you say, such cases are unlikely to arise.
For my part, I just wanted to understand Mr Hagel’s assertion that we find out from the A publication (as opposed to the B) which technical field the notional skilled person is in. If I understand you right, you would say that, to the contrary, it is the B publication that sets the technical field and the OTP.
My hope is that, actually, in substance, we all three agree and that it is only an unfortunate choice of words that is the cause of this ongoing discussion
While we can all appreciate your motivations behind this debate, I struggle to understand why your reading of G 1/25 leaves so little leeway for the changes the Enlarged Board actually introduced. If your view, that virtually every teaching or embodiment no longer covered by the allowable claims must be removed or disclaimed, were correct, why would the Enlarged Board, as an example, explicitly include Paragraphs 20 and 22? Silence would have sufficed. Yet Paragraph 20 explicitly confirms that an inconsistency is not established merely because the description contains technical teachings, examples, or embodiments that fall outside the claimed subject-matter, and Paragraph 22 confirms that the EPC does not mandate adaptation merely for formal concordance.
Like others, I struggle to see what Paragraphs 20 and 22 were written for, especially if you read Paragraph 19: “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, however, there is an inconsistency”. Only in “real doubt” yet in most of the examples cited by others, there was no real doubt as to what is meant by the claims, even if the specification still discloses embodiments that do not fall within the scope of the allowable claims.
If we were to follow your premise to its logical end, why stop at embodiments? Why not delete the general technical field, background disclosures, and original problem statements whenever claims are narrowed, even though problem reformulation based on the closest prior art is standard problem-solution approach practice before the EPO?
That being said, please do not misunderstand me: I and many others fully appreciate your concern regarding “Angora cats” that shrink during EPO prosecution only to expand post-grant. However, interpreting claim scope, prosecution history, and equivalents under Article 69 EPC and its Protocol is the exclusive domain of national courts and the UPC, whether text has been deleted or not. If a national court decision yields a contentious outcome on a specific set of facts, such as in the Pemetrexed cases, that is a matter for post-grant National proceedings, not an issue for the EPO to pre-emptively cure through Article 84 EPC. In my humble opinion, I believe this is why all these caveats were given in G 1/25, which most commentators agree with.
This is all getting a bit repetitive and therefore boring. G1/25 falls short of explicitly forbidding the EPO from continuing its established practice under Art 84. The various caveats are in there to placate all those amici who don’t like present practice. Accordingly, I (and surely I am not alone in this) expect the practice to continue more or less unchanged. Seriously, why should any seasoned EPO practitioner bet on anything else?
@ Max Drei-14.09.2026
I can only but agree that the discussion is getting a bit repetitive and therefore boring. G 1/25 has not pushed the adaptation of the description to the dustbin of history, as some people would have liked it.
I do not expect a bit change in the EPO’s practice when it comes to the adaptation of the description.
G 1/25 is very clear in this respect and claiming something different is not realistic.
EDs will have to explain why the description needs to be amended, and will no longer be able to do so at the time of the communication under R 71(3) by simply referring to Article 84. This is already a definite step forward.
In principle, boards of appeal will have to decide on the adaptation of the description before referring the case back to the first instance, once a set of claims has been deemed patentable. This is yet another definite step forward.
Yes, Daniel, I too think it to be a “step forward” that Examiners are now obliged to “explain” why, upon a narrowing of the claim, particular passages within the description cannot be allowed to remain unamended.
How that works out in practice is going to be fun for me to observe. But based on these comments threads, I can imagine Examiners simply stating that they have “”real doubts”, about what is inside the claim and what is not and, for that reason alone, amendment is needed. I don’t know about you, but these days I am in “real doubt” about almost everything (and can explain why, if necessary).
Interesting for me is going to be what line EPO management and quality control takes, on adaptation, from now on. Examiners are going to need help from above, to decide when their doubts are real enough to be the foundation of a legitimate and fair objection under Art 84 EPC.
As to that guidance, the EBA is not going to be giving any specific guidance, any time soon.
@ who knows !-14.09.2026
In spite of what I have written in reply to Max Drei’s last entry, I will once more attempt to show you that you are on the wrong track.
For a start, I do not think that G 1/25 leaves much leeway when it comes to adapting the description. In my opinion, contrary to what you think, the EBA has not changed much in this matter. If you think so, reality will hit you sooner rather than later.
You stick to Reasons 20, first sentence, and Reasons 22, but you carefully ignore the second sentence of Reasons 20 and Reasons 21. I already explained that the EBA had for reasons of its legal argumentation to put in opposition the two possibilities of a non-inconsistency and of an inconsistency. This is something I learned during my law studies.
On the one hand the EBA explained what could not be held as an inconsistency, and on the other hand, what has to be considered as an inconsistency, cf. Reasons 21, 27-35, 36-39 and 40-41. Do you think that the EBA would have bothered to indicate when, in its opinion adaptation should be carried, if in the vast majority of cases, adaptation was not necessary? One could also consider Reasons 20, first sentence, and Reasons 22, as a tribute to external members of the EBA, but we will never know.
The EBA summarised its findings in the order. The order makes clear that any inconsistency leading to a non-compliance with Art 52-57, 76(1), 83, 84, 123(2) or 123(3) has to be removed. Is this not clear enough?
I do not build my understanding of G 1/25 on what lots of people seem the extract from it. As a vast majority is against adapting the description, it is clear that like you, they cling to Reasons 20, first sentence, and Reasons 22. This is however irrelevant.
The original description can be compared to the foundations of a house. When the claims are narrowed during proceedings, the foundations must be adjusted to be in line with the definition of the subject-matter for which protection is sought. The claims can be compared to the part of the house above ground. Leaving the foundations unchanged if the part above ground has been reduced during proceedings would be tantamount to building a rather rickety house.
G 1/24 has made clear that beyond Art 123(3), Art 69 is not applicable in proceedings before the EPO. Art 69 and the Protocol, allow a court, when ruling after grant or maintenance in amended form, to consider that other windows, doors or the shape of the roof might also be belonging to the above-ground part of the house. This does not fall within the remit of the EPO. However, the foundations of the house must correspond to the part of the house above ground, i.e. to the claims.
It is plainly ridiculous to allege that a series of items should be deleted, going further than embodiments not any longer corresponding to the definition of the matter for which protection is sought, like the general technical field, background disclosures, and original problem statements whenever claims are narrowed.
This amounts to a clear non-compliance with some rules, like R 42 and R 43, which by virtue of R 86 also apply in opposition. As far as problem reformulation and introduction of prior art in the description is concerned, I refer to the GL H-V, 2.4. The GL are not binding for the boards, but the boards are prompt at deciding upon added matter, if the reformulation is not done correctly.
With arguments like that, you are shooting yourself in the knee. Should you continue your present rant, I will delete any further comments of yours. It actually reminds me of proprietors who continue like a Tibetan praying mill to allege that the subject-matter of their claim is novel, when it has long been decided that this was not the case.
In another blog, I found this revealing statement: “Patentees will always bring bad claims for as long as we have the protocol to article 69. Whether the description is conformed is actually irrelevant.” I see in this statement a clear malicious intent. Come up with a bad claim, stuff the description with lots of other things, and in case of litigation, play around with Art 69+Protocol. This allows to interpret the claim as you think fit. In other words, let’s have a go at making an magnificent Angora cat.
The topic is now exhausted and I invite you to wait for decisions of the boards. Those decisions might not be to your liking, but this is your problem and not mine. I also accept that I could be proved wrong. However, continuing the discussion would be “repetitive and therefore boring”.
Thank you Daniel. Sometimes it takes an age before the penny drops For an Examiner pushed to deliver more production, it must be a mighty temptation to perform surgery on the description as part of the preparation for issue of a 71-3 Commn. If that really is not allowed any more, and instead they must reason out their objections, perhaps Examiners will from now on be more selective in their requirements on applicants to conform the description
I would say that with G 1/24 examiners will have to consult the description before searching and before deciding to grant or to maintain in amended form. With G 1/25, they will have to require adaptation of the description, but give good reasons for it.
G 1/24 and G 1/25 should stop oral instructions to examiners not to bother about Art 84 as it is not a ground for opposition. I know this not by hearsay, but have witnessed it many times in my active time. I think that in some spheres of DG1 it has continued up to today.
G 1/24 and G 1/25 should eventually lead to an improvement of patents granted or maintained by the EPO, on the condition that the search reveals the relevant documents.
It is positive that G 1/25 provides a solid legal basis for the EPO management’s decision to put an end to the practice of EDs entering substantial description amendments at the 71(3) stage without prior consultation with the applicant. It is to be noted that such practice relying on GL F-IV.4.3 was totally oblivious of GL C-V.1.1 allowing « amendments and corrections made by the examining division on its own initiative which it can reasonably expect the applicant to accept. » The reference to the GLs was indeed very selective !
Regarding the effects of deleting or disclaiming embodiments which are no longer covered by the amended claims, the technical teaching disclosed by the description of the original application has no reason to be affected by such amendments. This was illustrated in UPC LD Paris HPDC v Lama of 13 Nov 2024, relating to a patent in which embodiments shown in Fig 4-8 had been deleted or disclaimed during prosecution. The court stated as follows in point 41 (translation by myself, the decision was in French):
« 41. HPDC relies in particular on Figures 4 to 8 to explain the claim, whereas LAMA argues that these figures are explicitly referred to as “non-claimed examples” and infers from this that they do not relate to the claimed invention. However, the Court holds that, since Figures 4 to 8 form part of the description of the patent in question, there is no justification for disregarding them in principle; they may therefore be used, where appropriate, to interpret main claim 1. »
As to G 1/24, I agree with you on its high relevance to the search. Consulting the description could seem to state the obvious. It is significant for the scope of the search to include potential fallbacks, even when they are not claimed, for procedural efficiency. But I have come across cases in which the description had clearly not be paid much attention. For example, the language of the initial claims covered a class of appliances, let’s say two different types A and B. The description was specifically related to type A, but the search only cited prior art relating to type B.
This is just a short observation as to what an EPO ED is capable of, in its collective experience and wisdom, in the matter of reasonably “expecting” something from the Applicant.
When the ED is deciding whether to grant or refuse, and makes acceptance of its specific amendment of the description a condition of grant, it is going to be “reasonable”, every time, isn’t it, to “expect” the Applicant to accede to more or less ANY amendment? What else would one expect of any reasonable Applicant, who is driven by budget and business needs, and is faced with the choice of swallowing the amendment or getting a Notice of Refusal?
And especially an Applicant from Asia, if my understanding is correct. When in Asia, and when anybody in authority gives you their considered opinion, it is (as far as I know) not a good idea to argue back.
Is this perhaps how the EPO got into the habit of routinely making “Take it or Leave it” offers at 71(3) time (but then covering their backsides by adding their routine Caveat Emptor warning, that it is the sole responsibility of the Applicant to choose the text of the B publication). Is this a manifestation of management-think monetarization (crank up the productivity regardless of the ethics and anything is OK as long as it is not expressly forbidden) amongst those who run the EPO as a money-making business. Could it be, that some representatives of Big Corp actually encouraged the EPO to manage speedy and cheap progress in this way, all the way through to grant?
Incidentally, the discussion about amendments at 71-3 time reminds me of my years as an EPO representative, when the time came to send to the client a draft response to an EPO Examination Report. Trainee patent attorneys under my supervision would often draft for me the covering letter in which the client was asked to review the draft and then let us have their comments. I had to explain to the trainee that this is sub-optimal. Why? Because, frankly, the Last Thing we want from the client is their “comments”. What we actually want is their authority to proceed with filing the draft, or else their precise reasons why they were not content for the draft to be put on the public file at the EPO. Perhaps those within the EPO who devised the practice of drafting the intended B description to accompany the 71-3 were ex-members of patent attorney firms?