The Sentence G 1/25 Actually Wants Deleted
Unclaimed embodiments may stay. The Enlarged Board of Appeal defines when an inconsistency between amended claims and the description requires adaptation, and names the statement that has to be removed.
After claim 1 is narrowed, the reflex is to strike every embodiment that no longer fits. G 1/25 says those embodiments may stay. The sentence that has to go is a different one, and almost every description contains it.
The European Patent Office has long asked applicants and patent proprietors to bring the description into line with amended claims, and since T 1989/18 in 2021 the Boards of Appeal have disagreed about whether the European Patent Convention actually requires it. In G 1/25, decided on 3. September 2026 on a referral by Technical Board of Appeal 3.3.02 in T 0697/22, the Enlarged Board of Appeal answers that question with a definition rather than a rule. The description must be adapted where an inconsistency introduced by the claim amendment leads to non-compliance with a requirement of the EPC, and only then. The commentary so far has concentrated on the headline that adaptation is no longer automatic. This article concentrates on the sentence the Enlarged Board of Appeal says must still go, and on the test that decides it.
What did the referral in T 0697/22 ask?
The underlying case is an opposition by Rockwool A/S against a patent of Knauf Insulation for a hydroponic growing medium. The opposition division maintained the patent on the basis of the claims of auxiliary request 1E and an amended description. Both parties appealed. The Referring Board found the claims of auxiliary request 1E allowable, did not admit a further amended description filed for the first time at the oral proceedings, and then identified an inconsistency between the amended claim 1 and paragraphs [0013] and [0016] of the description that remained on file.
Whether that inconsistency was an obstacle to maintenance depended on which of two lines of case law applied. The prevailing line found a legal basis for adapting the description in Article 84 EPC. A second line, comprising T 1989/18, T 2194/19, T 1444/20 and, most fully developed, T 0056/21, read Article 84 EPC as a one-way street. On that reading the claims must be supported by the description, the description owes the claims nothing, and clarity is assessed without recourse to the description. The Referring Board asked three questions. Does the EPC require the description to be adapted when claims are amended in opposition or opposition-appeal proceedings? Which requirement of the EPC necessitates it? Does the answer differ in examination?
How does the Enlarged Board of Appeal define an inconsistency?
Neither the referral nor the EPC defines the word, so the Enlarged Board of Appeal supplies a definition, and the whole decision turns on it. An inconsistency between the claims and the description, and any drawings, exists where one or more statements in the description, including the drawings, suggest an understanding of a claim which is incompatible with the apparent meaning of the claim, and that incompatibility cannot readily be resolved by applying the principles set out in G 1/24. If the person skilled in the art reading the claim in the light of the description and any drawings would be left in real doubt as to the meaning of the claim, there is an inconsistency.
Two consequences follow directly from that wording. First, an inconsistency is not established merely because the description, including any drawings, contains a technical teaching, examples, or embodiments that do not fall within the claimed subject-matter. An embodiment that plainly falls outside the amended claim is not, by itself, a problem. Second, if because of such an incompatibility it is unclear whether a technical teaching, examples or embodiments do or do not fall within the claimed subject-matter, an inconsistency exists.
The definition is anchored in G 1/24. The Enlarged Board of Appeal restates that decision as a holistic approach, endorsing point 2.4 of the reasons in T 0439/22: claim interpretation is the result of reading the claims, the description and the drawings as a unitary process, not a sequential method in which the claim wording is construed first and the description consulted only if uncertainty remains. The description may affect the meaning the skilled person gives to the claim wording, but it cannot be used to impose on the claim a limitation or expansion for which the claim wording provides no basis. In many cases what looks at first like an incompatibility is resolved without difficulty by that reading. An inconsistency in the sense of G 1/25 is what remains when it is not.
Why is Article 84 EPC not a one-way street?
The Enlarged Board of Appeal does not follow the second line of case law, because it rests on premises that can no longer be maintained after G 1/24. Those decisions proceed on the basis that Article 84 EPC concerns only the claims and that clarity must be assessed without reference to the description. To the extent that this premise excludes the interpretative role of the description recognised in G 1/24, it cannot be followed.
The wording of the provision is examined directly. A natural reading of the sentence "They shall be clear and concise and be supported by the description" cannot be said to impose a unilateral directionality that renders the description, including any drawings, irrelevant when inconsistencies compromise the understanding of the claims. At the same time, Article 84 EPC does not require a purely formal concordance between the description and the wording of the claims, nor does it impose a general obligation to remove from the description all matter not reflected in the claims. The link to the definition is explicit: if it is unclear whether information, examples, subject-matter or embodiments are or are not within the scope of the claim, then it cannot be said that the claim is supported by the description.
The same principles apply to Articles 52 to 57 EPC. An inconsistency may affect compliance with those provisions where a statement in the description suggests an understanding of a claim which is incompatible with its apparent meaning, and that incompatibility is relevant for the fulfilment of one of those requirements. For Articles 83, 76(1) and 123 EPC the Enlarged Board of Appeal regards the question as more theoretical than practical and expects such issues to arise rarely, if ever, while noting that the same principles would apply mutatis mutandis.
Which statement in the description has to be removed?
This is the passage most likely to shape day-to-day practice, and it has received little attention. The Enlarged Board of Appeal gives a single worked example. If a claim has successfully been amended to meet the requirement of non-obviousness in Article 56 EPC, but a statement in the description, including any drawings, expresses a technical teaching reflecting the claim before this amendment, and this statement thus conflicts with the fulfilment of the requirement of non-obviousness, this inconsistency in the description, including in the drawings, has to be removed. The reason given is that the requirements of Articles 52 to 57 EPC are assessed on the basis of the claims as interpreted, and where the inconsistency materially affects that interpretative exercise, the claim may fail to meet those requirements.
The practical shape of this example is familiar to anyone who has narrowed claim 1 in response to an inventive step objection. The summary of the invention, the statement of the problem solved and the general advantages paragraph are typically written around the claim as filed. After the amendment they still describe the broader teaching, and read together with the narrowed claim they suggest a meaning the claim no longer carries. That statement, not the unclaimed embodiment, is what G 1/25 identifies as the inconsistency that has to be removed.
The conclusion is stated in general terms: the necessity to adapt the description or any drawings is not a consequence of the existence of an inconsistency as such, but arises only where, and to the extent that, the inconsistency has legal significance because it leads to non-compliance with a requirement of the EPC. Where it does, the patent or application can comply with the EPC only if the inconsistency is removed or neutralised, either by amending the claims, by amending the description and drawings, or both. Question 2 is answered accordingly. There is no single provision that mandates adaptation whenever the claims are amended. The legal basis for any necessary adaptation is the provision of the EPC with which compliance is lacking by reason of the inconsistency in question.
Does the answer differ between examination and opposition?
No. The Enlarged Board of Appeal answers Question 3 first, because doing so avoids repetition. The interpretative role of the description and any drawings in assessing the requirements of the EPC is not dependent on the procedural stage, and no reason to treat the examining and opposition divisions differently was suggested in the submissions. The order accordingly speaks of proceedings before the departments of the EPO and of appeal proceedings without distinction, and of a European patent or a patent application alike.
The Enlarged Board of Appeal also notes that, although the referral arises from claim amendments, the interpretative approach and the definition of inconsistency are not contingent on such amendments. The same considerations may arise where a patent as granted is examined in opposition, or where an application is examined in unamended form. The answers are confined to the procedural context of the referral, but the principles are stated as general ones.
When should the description be adapted?
The obiter remarks at the end of the decision address timing, and they cut against any reading of G 1/25 as an invitation to defer the description. From a procedural law perspective it is not possible to distinguish between amending the claims and adapting the description to those amended claims. These actions are part of the same procedural step, even if there is a lapse of time between the amendment of the claims and that of the description and drawings. In appeal proceedings the description is almost always finalised in the oral proceedings before the Board, and nothing in the decision calls for a change to that practice. Adapting the description while the appeal is pending is described as generally the most efficient course of action in the interests of a swift conclusion, and as preferable to remitting the case to the administrative instance for the description to be adapted, which could itself result in a further appeal.
What must practitioners change after G 1/25?
The objection to be answered has changed in kind. An objection that the description does not match the claims, or that unclaimed embodiments remain, no longer identifies an inconsistency in the sense of the decision. An objection must now identify a statement that suggests a claim meaning incompatible with the apparent meaning of the claim, explain why the reading under G 1/24 does not resolve it, and name the requirement of the EPC that is not complied with because of it. Responses to communications from the examining division and submissions in opposition can be structured along exactly those three steps.
For the applicant or patent proprietor, the passages that deserve attention first are the ones that restate the claim as it was. They are the summary of the invention, the statement of the problem, the advantages paragraph and any definition that was written to fit the original claim 1. Under the Article 56 EPC example those statements are the inconsistency that has to be removed. Embodiments that simply fall outside the narrowed claim may stay, provided it is not unclear whether they fall within it.
The decision also settles the record for later proceedings. Every adaptation that is required is now tied to a named provision of the EPC, so the reasons for a deletion will be visible in the file. In the light of G 1/24 and the holistic approach confirmed here, statements that remain in the description continue to be consulted when the claims are interpreted, in examination, in opposition and before the courts. The care spent on what stays is now as consequential as the care spent on what goes.