Session 4:
Patents
Discussion on recent decisions of the Enlarged Board of Appeal,
including FICPI Amicus Brief.
Barış Atalay
Alfa Patent Stan Advoka
Member
FICPI Türkiye
FICPI FICPI TÜRKIYE SEMINAR
FICPI &FICPI
TÜRKIYE SEMINAR
Revisiting
G 1/92
and the
Concept of
“Availability to
the
Public”
Barış
ATALAY
Alfa Paten Stan Advoka
[email protected]
G 1/23 – The Stakes: Why This Matters
G 1/23 – The
Stakes: Why
This Matters
Central Question:
What constitutes the "State of the Art" under Article 54(2) EPC?
Legal Consequences:
•
Novelty
&
Inventive Step:
If a product is "available," it can invalidate subsequent
patent claims.
•
The
"Social Contract":
Patents are granted in exchange for disclosure; if the public
already has access to the info via a product, no monopoly should be granted.
Deep Dive
– The
Policy Shift:
•
Old
View (G
1/92):
Knowledge is only "public" if you can physically replicate it.
•
New View (G
1/23):
Knowledge is "public" if you can extract information from it via
analysis.
Practical Impact:
Patent searches must now move beyond databases and include
"teardown" analysis of existing market products.
What is “State of the Art”?
What is
“State of
the
Art”?
The
Statutory Definition:
•
Includes everything made available to the public by means of a written or oral
description, by use, or in any other way.
•
G 1/92
Foundation:
"Everything made available to the public..." includes the
internal structure of sold products.
The Three
Pillars of Disclosure:
•
Written:
Patents, journals, manuals.
•
Oral:
Lectures, conferences.
•
By Use:
Products sold or displayed in public.
Key Legal Refinement:
•
Information vs. Object:
G 1/23 emphasizes that it is the
information
derived
from the object that enters the state of the art, not just the physical item.
The Key Question: The “Black Box”
Dilemma
The
Key Question:
The
“Black Box”
Dilemma
Scenario:
A company puts a sophisticated chemical compound or microchip
on the market.
What
becomes "Public Information"?
•
The
Product Itself:
Clearly public.
•
External Properties:
Size, color, measurable weight (Extrinsic).
•
Internal Composition:
Chemical formula, layer structure (Intrinsic).
•
Manufacturing Process:
The "recipe" or hidden steps (Process).
The
Conflict:
•
If a product is sold but cannot be "decoded," is it actually part of human
knowledge?
•
Practical Reality:
Modern reverse engineering (X-ray, Spectroscopy) makes
almost every "Black Box" transparent.
G 1/92: The Traditional Rule (The Dual Test)
G
1/92:
The
Traditional Rule
(The
Dual
Test)
The
Jurisprudence for
30
Years:
•
A product is only "prior art" if a skilled person can:
•
Analyze it:
Discover what it is.
•
Reproduce it:
Make it again without undue burden.
The
"Enabling Disclosure" Requirement:
•
Borrowed from the rules for written descriptions: You must be able to "work"
the invention.
•
Rationale:
If you can't build it, you don't "know" it in a way that benefits the
public.
The
Resulting Loophole:
•
Complex materials (polymers, alloys) often escaped being "prior art"
because their exact synthesis was a trade secret, even if the product was
sold by the millions.
The Growing Problem: Reality vs. G 1/92
The
Growing Problem: Reality vs.
G 1/92
The
Conflict
with
Modern Industry:
•
In practice, many products are highly complex, proprietary, or even
impossible to perfectly replicate without the original "recipe".
•
Examples:
Advanced polymers, complex pharmaceuticals, and high-tech
alloys.
The
Conceptual Tension:
•
If a product is physically in the hands of the public, but the manufacturing
steps are hidden, does it qualify as "known"?.
•
The
Old Dilemma:
Under the strict G 1/92 rule, if you could not reproduce a
marketed material, that material was legally "invisible" for novelty purposes.
Practical Insight:
This created an "empty state of the art," where millions of
sold products were ignored by patent examiners simply because the
production method was secret.
G 1/23: The Modern Turning Point
G
1/23:
The
Modern Turning Point
Re-
evaluating
the
"Reproducibility" Requirement:
•
G 1/23 marks a significant shift:
Reproducibility
is
no longer
a
mandatory barrier
for a product to be considered prior art.
•
The Enlarged Board of Appeal (EBA) ruled that a product cannot be
excluded from the state of the art
solely
because it cannot be
reproduced.
The
"Absurd Result" Argument:
•
If we required perfect reproducibility for everything, we would face an
"infinite regress": every raw material used to make the product would
also need to be reproducible.
•
Outcome:
The law now aligns with reality: knowledge equals
access
,
not just the ability to manufacture.
Accessibility vs. Analysability
Accessibility vs. Analysability
The New
Hierarchy of Disclosure:
•
Accessibility:
Is the product available to the public?.
•
Analysability:
Can a skilled person discover its features using modern
tools?.
What
Information
is
Released?
•
Public:
All analysable properties and measurable features (e.g.,
chemical composition, layer thickness, mechanical strength).
•
Not Automatically Public:
Hidden manufacturing processes or
extrinsic characteristics that leave no measurable trace on the final
product.
Deep Dive:
The "Skilled Person" is now viewed as an
analyst
, not
necessarily a
manufacturer
.
The "No Motivation" Principle Reconfirmed
The
"No Motivation" Principle Reconfirmed
Objective Availability:
•
Information is considered "available" the moment there is
direct
and
unambiguous access
to it.
•
There is no requirement to prove that anyone
actually
analyzed the
product or had a reason to do so.
The
Legal Fiction:
•
If a product is on a shelf in a store, the law assumes the skilled
person has already analyzed it.
•
Accessibility ≠ Intention:
The patent system focuses on
the
potential
for knowledge, not the
history
of its use.
Information vs. Reproduction (The Key Distinction)
Information vs. Reproduction
(The
Key
Distinction)
The
Core Philosophy of
G
1/23:
•
Information belongs to
the
public:
If you can see it or measure it, it is part of
the "State of the Art".
•
Manufacturing ability
is
secondary:
You don't need to know
how
to build a
car to know that a car with four wheels exists.
Impact on Patentability:
•
Novelty:
All measurable information counts toward destroying novelty.
•
Inventive Step:
While information is public, a skilled person might still
disregard "impractical" or non-reproducible disclosures when looking for a
solution to a technical problem.
Practical Impact:
This distinction forces patent drafters to focus on "non-
measurable" process steps if they want to avoid prior art rejections based on
their own previous products.
Novelty vs. Inventive Step (The Practical Split)
Novelty vs. Inventive Step
(The
Practical
Split)
How
G 1/23
Impacts
the
Legal Test:
•
Novelty (Art.
54
EPC):
•
The "State of the Art" now includes all information that can be extracted from a
product through analysis.
•
The inability to reproduce the product is no longer a "shield" against a novelty
rejection.
•
Inventive Step (Art.
56
EPC):
•
The skilled person remains a rational actor.
•
If a disclosure is technically "public" but practically "impractical" or non-
reproducible, the skilled person may disregard it as a starting point for further
development.
Key Takeaway:
G 1/23 broadens the pool for
Novelty
but allows for
nuanced arguments regarding
Inventive Step
.
Beyond Coca-Cola: A Technical Example
Beyond Coca
-
Cola: A Technical Example
Case
Study: High
-
Performance Thermoplastics
•
The
Scenario:
A specific grade of carbon-fiber-reinforced polymer is
sold globally.
•
What is
Analyzable (Prior Art):
•
Fiber-to-resin ratio, fiber orientation, and chemical structure of the matrix.
•
These features are now "known" because they are measurable.
•
What Remains
Secret (Not Prior Art):
•
The exact cooling rate in the mold or the specific sequence of catalyst addition.
•
If these "hidden processes" are what the new patent claims, the patent may still
be valid.
The
Lesson:
"Knowledge" is defined by what the lab can see, not what
the factory hides.
Summary of the Shift (G 1/92 vs. G 1/23)
Summary of
the
Shift
(G 1/92
vs.
G 1/23)
Feature
G 1/92 (Old Rule)
G 1/23 (New Rule)
Primary Requirement
Analysis +
Reproduction
Accessibility + Analysis
Reproducibility
Mandatory Barrier
Not Required for
Disclosure
Legal Philosophy
Knowledge = Ability to
Make
Knowledge = Ability to
See/Measure
Industry Impact
Favorable to "Secret
Recipes"
Realistic and Pro-
Transparency
Practical Consequences for Practitioners
Practical Consequences for Practitioners
Strategic Advice for Patent Prosecution
&
Litigation:
•
For Applicants:
•
Be aware that your own marketed products are now "stronger" prior art against
your future filings.
•
Focus claims on manufacturing "know-how" that cannot be detected in the final
product.
•
For Opponents:
•
The "non-reproducibility" defense is significantly weakened.
•
Invest in high-end reverse engineering; if you can measure a feature, you can kill
a claim.
The
Burden of Proof:
The "skilled person" is now assumed to be
equipped with the latest analytical tools.
Final Takeaways
Final Takeaways
Aligning Patent
Law with
Modern Reality:
•
Availability
is
Key:
If a product is in the public's hands, its
analyzable secrets are no longer "new".
•
End of
the
"Reproducibility Loophole":
Complex chemical or
technical structures can no longer hide behind a "difficult to
manufacture" excuse.
•
Balanced State of
the
Art:
The EPO has moved toward a more
realistic definition of what the "Public Domain" actually contains.
"In
patent law, access to
the
object
is
access to
its
information."
Case Study A – The AI “Black Box” Chip
Case
Study A
– The
AI“Black Box” Chip
Scenario:
A company releases a next-generation AI accelerator chip. The hardware
architecture (gate density, transistor size) is visible under an electron microscope, but
the
firmware
-
level routing logic
and
weight
-
optimization algorithms
are hidden.
The G 1/23
Analysis:
•
Prior Art (Disclosed):
Any physical feature detectable via high-resolution imaging or
signal probing (e.g., the specific arrangement of processing cores).
•
The
"Reproducibility" Trap:
Under G 1/92, the patent owner might argue,
"You can
see the cores, but you can't manufacture this chip without our proprietary
lithography recipe, so it's not prior art."
•
The New
Reality:
If a competitor can measure the electrical output or map the
physical traces, that architecture is
public
. The difficulty of building a rival fab is
irrelevant.
Strategic Takeaway:
Hardware layout is now highly vulnerable. Protection must shift
toward the software-hardware interface that cannot be "probed" without destroying
the data.
Case Study B – The Self-Assembling Nano-Polymer
Case
Study
B – The
Self
-
Assembling Nano
-
Polymer
Scenario:
A pharmaceutical company markets a drug-delivery coating made of a
polymer that "self-assembles" into a specific lattice at room temperature. The final
lattice structure is easily measurable via X-ray crystallography.
The G 1/23
Analysis:
•
The
Conflict:
The exact concentration of the specialized "initiator" catalyst used
during synthesis is a trade secret and cannot be detected in the final dry coating.
•
What is
Prior Art?
The
final lattice structure
and its
chemical proportions
.
Because a skilled person can "see" the lattice, it is now part of the state of the art.
•
What is NOT
Prior Art?
The specific temperature-ramping sequence used to trigger
the self-assembly.
Strategic Takeaway:
If you are the patentee, you should claim the
process
of
synthesis. If you are the challenger, you only need to prove the
end-state
was
measurable to destroy the novelty of the material itself.
Does this mean trade secrets are dead?
Does
this mean trade
secrets
are
dead?
No. G 1/23 clarifies that only the
information
you can extract from
the product enters the state of the art. The 'how-to'—the specific
pressures, temperatures, or catalyst sequences that don't leave a
measurable fingerprint—remains a valid area for patenting or trade
secret protection. The law has simply caught up with the reality of
modern reverse engineering.
Dr. Christian Wende
DTS Patent- und Rechtsanwälte
Germany
Chair, Group 4: European Patents
Study & Work Committee
G 1/24 – “Heated Aerosol”
25
STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY
www.ficpi.org
Technical Board of Appeal 3.3.01 has by interlocutory decision T 439/22 referred
the following questions to the Enlarged Board of Appeal (referral pending under
4 "Heated aerosol"):
•
Is Article 69(1), second sentence EPC and Article 1 of the Protocol on the
Interpretation of Article 69 EPC to be applied on the interpretation of patent
claims when assessing the patentability of an invention under Articles 52 to
57 EPC?
•
May the description and figures be consulted when interpreting the claims
to assess patentability and, if so, may this be done generally or only if the
person skilled in the art finds a claim to be unclear or ambiguous when read
in isolation?
•
May a definition or similar information on a term used in the claims which is
explicitly given in the description be disregarded when interpreting the
claims to assess patentability and, if so, under what conditions?
G 1/24 – “Heated Aerosol”
26
STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY
www.ficpi.org
Article
69
,
Extent of protection
(1)
The extent of the protection conferred by a European patent or a European patent application
shall be determined by the claims. Nevertheless, the description and drawings shall be used to
interpret the claims.
(2)
For the period up to grant of the European patent, the extent of the protection conferred by the
European patent application shall be determined by the claims contained in the application as
published. However, the European patent as granted or as amended in opposition, limitation or
revocation proceedings shall determine retroactively the protection conferred by the application,
in so far as such protection is not thereby extended.
Amended by the Act revising the European Patent Convention of 29.11.2000.
The Protocol on the Interpretation of Article 69 EPC is an integral part of the Convention pursuant to
.
See decisions of the Enlarged Board of Appeal
,
,
(Annex I).
https://www.epo.org/en/legal/epc/2020/a69.html
G 1/24 – FICPI Amicus Curiae Brief
27
STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY
www.ficpi.org
G 1/24 – Heated Aerosol
28
STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY
www.ficpi.org
Decision of the Enlarged Board of Appeal
–
G 1/24 (“Heated Aerosol”)
•
The Enlarged Board issued its decision in case G 1/24 on June 18, 2025. It concluded that the
claims are the starting point and the basis for assessing the patentability of an invention, and
that the description and drawings must always be consulted to interpret the claims for this
assessment.
•
The Enlarged Board also referred to the harmonisation philosophy behind the EPC and noted
that the case law of the UPC Court of Appeal on claim interpretation appeared to be consistent
with its conclusions.
•
This decision and its reasoning are in line with the position of FICPI, as outlined in its Amicus
Curiae Brief.
•
Further, FICPI welcomes the commitment of the EPO to patent law harmonization in patent law
and also has an active role in the Substantive Patent Law Harmonisation (SPLH).
Robert Watson
Mewburn Ellis, UK
President
Study & Work Committee
G1/25 –
Description Amendments
Referral number:
G 1/25
Referred on:
29 July 2025
Referring Board:
Technical Board of Appeal 3.3.02
Underlying case:
T 697/22 (opposition appeal)
Patent:
EP 2124521 (hydroponic growing medium)
Auxiliary request 1E (claims and amended description) were filed in opposition oral proceedings and
allowed by Opposition Division
In Appeal Oral Proceedings, proprietor filed different amended description for AR 1E, as well as
maintaining the original amended description
Opponent pointed to inconsistency between the claims of AR 1E and the amended description, caused by
the amendments filed
Background
Most cases studied
E.g. T1024/18 and T438/22
Legal basis that requires description to be consistent with the amended claims
Consistency can be achieved by deletion or insertion of additional statement
Various legal basis cited, but no consensus!
Article 84 EPC
Article 84 EPC + another provision
Rule 42 EPC
General reference to requirements of EPC
Reference to general requirement of consistency
Diverging case law
– First Line
A few cases studied
All examination-appeal proceedings
E.g. T56/21
No
Legal basis that requires description to be consistent with the amended claims
Any inconsistency and possible consequences are applicant’s responsibility
Diverging case law
–
Second Line
Early UPC case
AGFA NV v Gucci Sweden AB (30 April 2025)
Claims must always be interpreted with the aid of the description and drawings
Inconsistency between description and claims – can’t user broader description to interpret a limited
claim
Diverging case law
–
Case law from other courts
The referring board considered that the answer to the first question from the Enlarged Board would be
decisive for the outcome of the referral case
Depending on Enlarged Board decision, is AR 1E with initial amended description allowable?
Clearly divergent case law
EB decision needed to ensure uniform application of the law
3
rd
question
Looks at exam appeal question
Need for a referral
Referred questions
Question 1
Questions 2 and 3
FICPI Amicus Brief
FICPI had already considered the issues at the heart of this case
CONSIDERING
the practice of the European Patent Office (EPO) to require applicants and proprietors to
remove from the description and drawings of European patent applications or patents (e.g. at the end of
opposition
NOTING
that the Guidelines for examination in the EPO (“Guidelines”) allow applicants and proprietors to
either remove from the description and drawings subject-matter which is not covered by the claims, or to
alternatively present such subject-matter not as embodiments of the invention but as background art or
examples useful for understanding the invention, in order to avoid potential inconsistencies between the
claims and the description/drawings (Guidelines F-IV.4.3(iii)),n proceedings) subject-matter which is not
specifically recited by the claims,
EXCO/FR22/RES/002
OBSERVING
that there is a critical difference between subject-matter that falls outside the wording of the
claims on the one hand and subject-matter that falls within the wording of the claims but is not explicitly
recited as such in the claims on the other,
FURTHER OBSERVING
that, pursuant to Article 69 (1) of the European Patent Convention (EPC), while the
extent of the protection conferred by a European patent or a European patent application shall be
determined by the claims, the description and drawings shall be used to interpret the claims, and thus
that the removal of subject-matter from the description and the drawing may adversely affect the
position of an applicant or a proprietor at a later stage, in particular in court proceedings,
FURTHER NOTING
that the practice of the EPO is inconsistent with all of the other IP5 Offices, as well as
the vast majority of the Offices of the EPC Contracting States and that users benefit from harmonisation
of practices and procedures at the IP5 and EPC national Offices,
EXCO/FR22/RES/002
EMPHASING
that decisions T1444/20 and T1989/18 made clear that no provision of the EPC requires the
deletion or marking of subject-matter which is not covered by the claims,
FURHTER NOTING
that these decisions are contradicted by T1024/18, T121/20, T2293/18 and T2766/17,
BELIEVING
that decision T1989/18 supersedes decision T1808/06, which does not contain any thorough
analysis of Article 84 EPC and justifies the deletion of unclaimed subject-matter with reference to the
Guidelines,
ADVISING
that amendment of the description and drawings can require substantial additional work by
applicants, proprietors and/or their representatives, leading to significant increased costs,
EXCO/FR22/RES/002
URGES
the EPO to refrain from insisting on the removal of any subject-matter from the description and
the drawings of European patent applications or European patents, provided that the presence of such
subject-matter does not throw doubt on the extent of protection by clearly contradicting the claims.
EXCO/FR22/RES/002
Definition of “inconsistency”
Guidelines for examination, F-IV 4.3(iii) -
“Part of the description and/or drawings is inconsistent with the
subject-matter for which protection is sought”.
Situation in which a hypothetical independent claim includes, e.g. the feature “A comprising B”, while the
description discloses the features “A comprising B or C” or “A preferably comprising B”
According to F-IV 4.3(iii), the description should be amended by deleting or disclaiming the unclaimed
features (e.g. “A comprising B or C” or “A preferably comprising B”), otherwise the independent claim(s)
would be “inconsistent” and thus not supported by the description.
The presence of features or embodiments which are not encompassed by the wording of the claims
would cause a lack of support also according to the first line of case law and to the objections of the
opponent-appellant in case T 0697/22.
Amicus Brief
-
Inconsistency
Such as inconsistency cannot render a claim unclear, unless the description contains an explicit indication
that a specific unclaimed subject-matter is covered by the claims, e.g. by using references such as
“according to the claim” or “according to the claimed invention”. In this case, the description should be
amended to remove any explicit reference to the claims, as it would throw doubt on their extent of
protection.
In all other cases, it is clear that, even in the most creative interpretation, unclaimed subject-matter (e.g.
“A comprising C” and “A not comprising B”) is not encompassed by the wording of an independent claim
(e.g. “A comprising B”), especially when the primacy of the claims is taken into account, as required by
Art. 84 EPC, first sentence.
Amicus Brief
-
Clarity
Therefore, unclaimed subject-matter in the description, as such, does not contradict the claims, so that it
cannot throw doubt on their extent of protection.
This is also indirectly confirmed by the fact that the first line of case law and the objections of the
opponent-appellant in case T 0697/22 always indicate the support requirement, not the clarity
requirement, as a basis for their objections.
FICPI believes that the clarity requirement of Art. 84 EPC is not violated by the presence of unclaimed
subject-matter in the description, provided that this subject-matter does not explicitly refer to the claims.
Amicus Brief
-
Clarity
Art. 84 EPC requires that the claims be supported by the description and there is no provision in the EPC
requiring the description to be supported by the claims, i.e. requiring a one-to-one correspondence
between description and claims.
This is confirmed by the Guidelines for examination, F-IV, 6.1, which define the support requirement of
Art. 84 EPC as follows:
“The claims must be supported by the description. This means that there must be a basis in the
description for the subject-matter of every claim and the scope of the claims must not be broader than is
justified by the extent of the description and drawings and also the contribution to the art (see T 409/91).
Regarding the support of dependent claims by the description, see F-IV, 6.6.”
Amicus Brief
-
Support
According to the Guidelines for examination, F-IV, 6.1, the support requirement of Art. 84 EPC is satisfied
when claimed subject-matter is included in the description, not vice versa.
This interpretation substantially corresponds with the “universal” interpretation adopted by the other
patent offices, as explained e.g. at paragraphs 58-78 of the “Study on the sufficiency of disclosure”
SCP/22/4 of WIPO :
“59. The meaning of the term “the claims shall be fully supported by the description” is largely similar in
most jurisdictions. In general, the term means that there must be a basis in the description for the subject
matter of every claim and that the scope of the claims must not be broader than is justified by the
description and drawings. The examination guidelines of some offices also add that the scope of the
claims must not be broader than is justified by “the contribution to the art”.”
Amicus Brief
-
Clarity
We observe that the same interpretation can be found in the first version (4419/IV/63-D) of the support
requirement discussed in 1963 during the Travaux Préparatoires of the EPC :
Art. 68 (5) No patent claim may contain any subject matter that is not disclosed in the description.
A second version (Art. 66(1), BR/68/70) corresponding to Art. 6 PCT, was proposed in 1970. However, at
the beginning of 1972 (Art. 71(a) BR/169/72) it was considered
“whether, as most of the organizations
proposed, the word “fully” should be deleted and whether it should be replaced by a less restrictive
wording.”
(emphasis added). Soon after, (Art. BR/177/72) the term “fully” was deleted without any
replacement, to arrive to the current version of Art. 84 EPC.
Thus, this “less restrictive” interpretation of the support requirement can be found in:
a) the second line of case law mentioned in T 0697/22,
b) the EPO Guidelines for examination, F-IV, 6.1 and 6.6,
c) the “universal” interpretation adopted by the other patent offices, and
d) the Travaux Préparatoires of the EPC.
Amicus Brief
-
Clarity
On the other hand, as mentioned before, the Guidelines for examination, F-IV, 4.3, propose a stricter
interpretation requiring description amendments.
However, F -IV, 4.3 does not explain why unclaimed subject-matter in the description would violate the
support requirement, since this violation is already taken for granted, as follows:
“According to Art. 84, second sentence, the claims must be supported by the description. This means that
there must not be inconsistency between the claims and the description.”
Also the decisions cited by the first line of case law (see e.g. T 1024/18, point 3.1.1., and T 0438/22, point
4.6) do not provide any proper explanation on why claims which are supported by subject-matter
included in the description are no longer supported when the description also contains unclaimed
subject-matter.
In view of the above, FICPI believes the support requirement of Art. 84 EPC means that claimed subject-
matter must be present in the description and nothing else, so that that the presence
Amicus Brief
-
Clarity
T 140/19 invoked Rule 42 instead of or in addition to Art 84 EPC.
Seems to be irrelevant, since it does not provide any explanation, apart from the need to remit the case
“to the
opposition division for adaptation of the description, particularly since a large number of adaptations appear to
be necessary.”.
Guidelines F-IV, 4.4 are also cited in the interlocutory decision, in particular with reference to the “clauses”, as
follows:
“Finally, claim-like clauses must also be deleted or amended to avoid claim-like language prior to grant since they
otherwise may lead to unclarity on the subject-matter for which protection is sought.
"Claim-like" clauses are clauses present in the description which, despite not being identified as a claim, appear
as such and usually comprise an independent clause followed by a number of clauses referring to previous
clauses.”
FICPI believes that the requirement of deleting claim-like clauses is unjustified, since features or embodiments
included in the description cannot be confused with the claims, irrespective of the form in which these
features/embodiments are presented in the description, provided that there is no explicit reference to the
claims.
Amicus Brief
–
Rule 42
1.
No,
it is not necessary to adapt the description to the claims to remove an inconsistency consisting of the
presence of unclaimed subject-matter in the description, since no requirement of the EPC necessitates such
an adaption.
2. There is no need to answer to question 2 in view of the answer to question 1.
3. The answer to question 1 applies to all proceedings and also when the claims have not been amended. At
any rate, irrespective of the answer to these questions, an applicant/proprietor should always be given at
least one opportunity to amend the description after a set of claims has been approved by an
examination/opposition division or a board of appeal.
FICPI Proposed Answers
Other Amicus Briefs
40 Amicus Briefs
Q1 – Yes
Bugnion (law firm)
Daniel Thomas (ex-BoA member)
EP&C Patent Attorneys (law firm)
Patentwerk B.V.
Peter de Lange
Apple Inc.
EPO President
Q1 answers in Amicus Briefs
Preliminary Opinion
Issued 11 March 2026
Question 1
–
When is description adaptation required?
The EBoA distinguishes between:
inconsistencies between claims and description that do not cause non-compliance with the EPC, and
inconsistencies that
do
cause non-compliance with the EPC.
They only consider the inconsistencies that do cause non-compliance with the EPC to be relevant. Where
an inconsistency leads to EPC non-compliance, the EBoA’s preliminary view is that
further amendment of
the description and/or the claims is necessary
to restore compliance.
Preliminary Opinion
Question
2 –
Which EPC provisions justify adaptation?
The EBoA explains that adaptation is required by whichever EPC provision is infringed by the
inconsistency. While the referral refers to the EPC generally, the opinion focuses on Article 84 EPC.
The EBoA states that it is currently of the view that the established line of case law allowing reliance on
Article 84 EPC should be followed.
It expressly distances itself from the approach adopted in T56/21, which found description amendments
to be unnecessary, noting that this approach appears inconsistent with G 1/24 and its underlying
reasoning.
Question
3 –
Is examination treated differently from opposition?
The Board sees no reason to distinguish between examination and opposition proceedings in the context
of this referral. The same principles are considered to apply in both contexts.
Preliminary Opinion
What’s next?
Oral Proceedings – 8 May 2026
Live stream link will be published at
https://www.epo.org/en/case-law-appeals/communications/oral-proceedings-case-g-
125-hydroponics-enlarged-board-appeal
Decision expected in 2026
Possible amendment of EPO guidelines in 2027
Get involved with FICPI and our European Study Group (CET 4) to help on this and many other issues
Next Steps
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