G 1/25: The Future of Description Adaptation in European Patent Law
At first glance, the referral G 1/25 may look like a narrow technical issue of interest mainly to examination specialists. On closer inspection, however, it touches a fundamental question of the European patent system: What is the proper relationship between the claims and the description, and what follows from that relationship in practice ? T
The Legal Background: Article 84 EPC in Focus
The starting point of the referral is Article 84 EPC, which requires that the claims define the matter for which protection is sought and be “supported by the description”. The central question is what “supported by the description” actually means – and how far the obligation to adapt the description to amended claims really extends.
G 1/25 can be seen as the logical follow-up to G 1/24: once the description plays a more prominent role in claim interpretation, the next question is inevitably whether, and to what extent, the description itself must be brought into line.
The Perspectives at a Glance
The debate does not run along simple stakeholder lines but cuts across private practice, industry, the judiciary, and academia.
Private Practice Perspective
For private practitioners, the main concern is not workload but legal risk:
- Extensive revision of the description may trigger new issues of added matter under Article 123(2) EPC.
- In later infringement proceedings, overly broad deletions or reformulations may weaken the patentee’s position, particularly under the doctrine of equivalents.
- Representatives face a tension between satisfying examination practice and managing liability risks; criticism that too much or too little was adapted is easy to level in hindsight.
Industry Perspective
From an industrial perspective – for example, that of a company like Ericsson – economic considerations come to the fore. For large patent portfolios, even an adaptation rate of 50% of cases translates into substantial additional cost and workload, the benefit of which is questionable unless real legal clarity is gained. For SMEs in particular, this can result in a significant budget impact without a corresponding return.
Judicial Perspective
At the Unified Patent Court (UPC) and in national infringement proceedings, the description serves as an important reservoir for interpretation. The judicial interest is twofold: to avoid internal inconsistencies, while preserving the primacy of the claims.
Academic Perspective
There is no uniform view in academia either. One pragmatic compromise suggests that description adaptation – if required at all – should take place only once, at the end of proceedings (for example after opposition), rather than for each auxiliary request, to avoid unnecessary work and legal uncertainty. By contrast, the President of the European Patent Office has indicated that the description should, in most cases, be adapted and brought into conformity with the claims.
The Preliminary Opinion of the Enlarged Board of Appeal
Ahead of the oral proceedings, the Enlarged Board of Appeal published a preliminary opinion. Its key points can be structured along the three referral questions:
The Board therefore currently leans towards the first line of case law, under which an adaptation obligation can be derived from Article 84 EPC.
What Is Really at Stake?
The real question is not whether consistency between claims and description is desirable, but how far the law actually requires adaptation to go. If that standard remains unclear, legal uncertainty merely shifts from interpretation to prosecution. A patent should “not speak with two voices” – but the price for that consistency must not be a disproportionate burden on the applicant.
