However, as is often the case with deliberately concise Enlarged Board rulings, G 1/24 settled the principle without fully articulating its operational boundaries. A new referral G 1/26 (T 873/24, “Coated steel strips”) seeks clarity on how the principles of G 1/24 are to be applied in practice.

In the patent considered in T 873/24, a compositional parameter (“ratio of titanium to nitrogen in excess of 3.42”) is recited in general terms in the claims, while the description consistently discloses the ratio on a weight basis. The decisive question is whether the skilled person, interpreting the claim in light of the description, would read this limitation into the claim, or whether the broader interpretation must be retained for the purposes of assessing added subject-matter.

Pending the outcome of G 1/26, practitioners face a number of practical challenges. At the drafting stage, strict discipline in the use of consistent terminology will become even more critical. During both prosecution and opposition proceedings, amendment strategies must account for the possibility that the Enlarged Board may conclude that G 1/24 does not justify construing a generic claim term narrowly on the basis of the description when assessing conformity with Article 123(2) EPC.

In this context, it is noteworthy that, with regard to clarity under Article 84 EPC, the Enlarged Board stated in point 20 of G 1/24 that any lack of clarity must, in principle, be addressed by amendment. A comparable line of reasoning would be consistent in the context of Article 123(2) EPC, although this question now squarely falls within the scope of the pending referral.

Der Beitrag Referral G 1/26 erschien zuerst auf meier ip.

It is the EPO’s practice that the description must be aligned with amended claims. I.e., when claims are amended, the description should be adapted accordingly to reflect these changes, avoid contradictions, and maintain a coherent disclosure.

At least one Board of Appeal has previously voiced doubts as to whether there is a legal basis for this practice, as previously reported in this blog section.

Considering recent case law from the Enlarged Board (G 1/24, point 20), it would be surprising if the Enlarged Board took the position that the EPO’s practice on adaptation of the description had no legal basis. The adaptation of the description also appears to be dear to many in EPO management, who seem to regard consistency of description and claims to be a KPI for the ongoing patent quality discussion.

Der Beitrag Referreal on adaptation of description erschien zuerst auf meier ip.