G 1/25: Form over function and how expensive is it?

In the patent description, the applicant seeks to generalize the invention to a certain extent to prevent easy circumvention of the invention; for example, “DNA” would be generalized to “nucleic acid”. The claims define what others shall not copy. Patent applications typically start with a broader, generalized description of the invention, and respective broad claims. During prosecution before the EPO, claims are often amended to more specific, narrower subject matter. So, the patent application starts with a “zoo of animals” in the description and in the claims and eventually claims shrink to a certain “species of the zoo”.  If the patent was later enforced against an infringer, the national court would look at the claims to determine whether claims are infringed. National courts have always dealt with more specific patent claims in view of a broader description.

The problem

The EPO, however, developed the opinion that a broader description along with narrower granted claims could cause confusion. Therefore, the EPO requires to “adapt the description” before the patent is granted. However, the skilled person is aware that patent specifications may contain definitions extending beyond the scope of the claims. How could the mere presence of such definitions give rise to uncertainty as to the meaning of the claims? The skilled person understands that it is the claims that define the invention. How can statements in the description create ambiguity as to what is claimed? This may mean for the applicant that the entire description, which often consists of more than a hundred pages, must be repeatedly “rewritten” to match the shrinking scope of the claims. In oral proceedings applicants may file several claim sets and must submit for each version an “adapted” description – a writing exercise that is extensive and very costly. 

The case law of the TBoA has developed along two conflicting lines on the question of whether the description must be adapted following an amendment of the claims. One line required extensive rewriting of the description in view of the amended claims. The other line of decisions saw no basis at all for this unnecessary writing exercise. However, examiners have nevertheless required extensive adaptation of the description. In such a case of diverging case law, the EBoA must decide which line of decisions is the correct one.

The decision G 1/25 of the EBoA

The EBoA could have provided legal certainty if it had decided in favor of one of those lines. However, it did not adapt either of the two approaches. It created a “middle way” which per se introduces new legal uncertainty that needs further case law to provide understanding. The EBoA stated that the description must be adapted where an “inconsistency” between the claims and description causes non-compliance with the EPC. And that an adaptation is needed if the reader of the claims “would be left in real doubt as to the meaning of the claim”. But when is there an “inconsistency”? What does “real doubt” mean? Future decisions must shed light on what this “oracle” of the EBoA really means. There was no need for the EPO to “help the national courts” by introducing the adaptation requirement to this exhaustive extent. The new decision of the EBoA is not helping either. Applicants are now left with having to allocate substantial resources, either to adapt the description extensively, or to extensively argue against such a request. More work for attorneys, more costs for applicants, no gain, form over function.

Ute Kilger