Oral proceedings in referral G 1/25 before the Enlarged Board of Appeal (EBoA) have now concluded. The referral, arising from T 697/22, seeks clarification on whether the European Patent Convention (EPC) requires the adaptation of the description to align with amended claims. The issue stems from the absence of any explicit provision in the EPC stating that the description must be adapted to conform with the claims, which has in turn led to divergent streams of case law – some treating description amendments as mandatory, others rejecting such a requirement.
The Enlarged Board did not issue an immediate decision at the end of proceedings and will now deliberate on the matters raised during the oral proceedings before providing a written final decision. While the final outcome is awaited, several points from the hearing were of interest.
Notably, the President of the European Patent Office (EPO) took the position that a number of EPC provisions beyond Article 84 EPC, such as Rule 42(1)(c) EPC, all point in the same direction, namely towards a requirement to adapt the description. On this basis, the practice of adapting the description was presented as being deeply rooted in the EPC as a whole, rather than deriving from any single provision in isolation.
A number of counter arguments were advanced. In particular, it was argued that a normal reading of the cited provisions (for example, Article 84 EPC), taken together with secondary sources such as the Travaux Préparatoires, does not provide a clear legal basis for imposing a requirement to amend the description. It was also highlighted that, by comparison with other major patent offices – namely the USPTO, JPO, KIPO and CNIPA (members of the so‑called IP5 offices) – no equivalent obligations are imposed on applicants, leaving the EPO as an outlier.
Several parties additionally raised the relevance of the decision in G 1/24 (see our article here), which emphasises the unitary nature of claim interpretation, requiring claims and the description to be considered together. It was suggested that this may sit uneasily with the EPO’s long-established procedural practice, whereby claims are examined and amended first, with the description addressed only thereafter. This sequencing is particularly well established in the life sciences and chemistry fields, where amendments to the description can be time consuming and contentious – an issue clearly illustrated by the very referral in G 1/25. There appeared to be broad agreement that departing from this procedural approach should be avoided.
While the Board itself revealed little during the hearing, its preliminary (non‑binding) opinion suggests they are leaning in favour of description amendments (see our article here). Accordingly, the future of adapting the description to conform with the claims now awaits the Enlarged Board’s written final decision.
Philip Horler and Bradley Wilson
This publication is a general summary of the law. It should not replace legal advice tailored to your specific circumstances.
© Withers & Rogers LLP May 2026
