The Application of G 1/25: T 0384/25 on Description Adaptation and Unclaimed Embodiments
Following the Enlarged Board of Appeal's framework in G 1/25, T 0384/25 confirms that retaining unclaimed medical use embodiments in the description does not automatically create a legally relevant inconsistency.
The doctrinal framework for adapting the description to amended claims has undergone a fundamental reset following the Enlarged Board of Appeal decision G 1/25. While that decision established that adaptation is only required when a legally relevant inconsistency arises, practitioners have waited to see how the Technical Boards of Appeal would apply this standard to specific amendments. In T 0384/25, the Board provides an early practical application, confirming that merely retaining unclaimed embodiments in the specification does not automatically trigger an inconsistency under the new regime.
Why did the Board find the liquid meal replacement inventive over D7?
Before addressing the procedural question, the Board had to resolve an objection of lack of inventive step against the respondent's auxiliary request 5. Claim 1 was directed to a liquid meal replacement comprising whey protein micelles and a second protein source, namely whey protein isolates or hydrolysed milk proteins, in specific weight percentages alongside lipids, carbohydrates, and fibres. The opponent relied on D7, which disclosed whey protein micelles in various nutritional compositions.
The Board systematically rejected the objections based on three different starting points in D7. When starting from example 17, a whey-protein enriched white chocolate, the Board questioned whether a solid chocolate bar was even a realistic starting point for a liquid meal. More critically, when starting from example 26, a dehydrated soup base, the opponent argued that the inclusion of cream implicitly disclosed whey protein isolate. The Board rejected this argument because no documentary evidence was provided to establish the exact composition of cream.
Crucially, the Board identified a specific technical effect not known from the cited prior art: whey protein micelles are digested considerably more slowly than whey protein isolate, hydrolysed whey, and hydrolysed casein. The combination of these protein sources solves the objective technical problem of inducing and maintaining a concentration of plasma amino acids (reasons 2.4.11). Because the prior art did not suggest this specific combination to solve the problem, the claim involved an inventive step.
How does G 1/25 govern the retention of medical use embodiments?
The most legally significant aspect of the decision concerns the adaptation of the description. The granted patent included claims directed to medical uses for treating muscle atrophy or sarcopenia. During the appeal, the proprietor maintained only auxiliary request 5, which consisted entirely of product claims. The opponent argued that paragraphs [0001], [0012], [0013], [0022], [0023], and [0032] of the granted specification had to be amended because they referred to medical uses no longer encompassed by the claims.
Applying the framework of G 1/25, the Board noted that an inconsistency exists only where statements in the description suggest an understanding of a claim that is incompatible with its apparent meaning, and where that incompatibility cannot be resolved by applying the interpretative principles of G 1/24. The Board found that the product claims of auxiliary request 5 leave no doubt as to what they mean and what falls within the claimed subject-matter (reasons 3.9).
The Board explicitly held that while the unamended description encompasses technical teachings and embodiments regarding medical uses, this fact alone is not an inconsistency within the meaning of G 1/25. Consequently, the Board concluded that the adaptation requested by the opponent was not required, allowing the patent to be maintained in amended form with the unamended granted description.
What must practitioners change when arguing description adaptation after T 0384/25?
This decision demonstrates that the burden for requiring an adaptation of the description has shifted significantly. An opponent can no longer rely solely on a simple mismatch between the scope of the claims and the embodiments in the description. To require an adaptation, an opponent must articulate exactly how a retained embodiment creates a real doubt as to the meaning of the claims under Article 84 EPC or affects compliance with another EPC requirement.
For patent proprietors, T 0384/25 offers a robust defence against broad requests to delete unclaimed embodiments. When defending amended claims, proprietors should focus on the clarity of the claim language itself. If the claim boundaries are unambiguous, the mere presence of broader or divergent technical teachings in the specification does not automatically necessitate their deletion.