Zusammenfassung von Article 112(1)(a) EPC für die Entscheidung T0697/22 vom 29.07.2025

In T 697/22 the board agreed with the appellant-opponent that there was an inconsistency between claim 1 of auxiliary request 1E, which required that a specific feature was mandatory, and the amended description as filed during the oral proceedings before the opposition division, according to which said feature was optional. According to the board, if this inconsistency was considered to be in contravention of the requirement in Art. 84 EPC that the claims must be supported by the description, or any other requirement of the EPC, the request based on the claims of auxiliary request 1E and the description as amended during the oral proceedings before the opposition division was not allowable. Otherwise, it would be allowable. The board analysed the case law relating to the requirement to adapt the description to amended claims, and concluded that there are two diverging lines of case law. The first line of case law is followed in most of the cases studied and is referred to in numerous decisions as the established line of case law, see e.g. T 1024/18 and T 438/22. The common underlying principle is that there is a legal basis that requires the description to be consistent with the amended claims. Under this line of case law, the applicant or proprietor is or should be invited to amend the description so that any inconsistency caused by the amendment of the claims is removed. The removal of an inconsistency may, for example, take the form of a deletion of subject-matter or an insertion of an additional statement in the description. The decisions that follow the first line of case law cite as a legal basis parts of the EPC or its Implementing Regulations, but there is no consensus on one precise legal basis. Regarding the second line of case law, the board noted that a few recent decisions (T 56/21, T 1444/20, T 1989/18 and T 2194/19) are clearly divergent from the first line of case law. In these decisions, which were all taken in examination-appeal proceedings, it was decided that there is no legal basis for the refusal of a patent application if there is an inconsistency between any amended claims and the description caused by the claim amendment. The board noted that the divergence in the case law concerns both whether it is necessary to adapt the description to the amended claims (to be answered in the positive in the first line or in the negative in the second line of case law) and, if it is to be answered in the positive, what the legal basis is. Therefore, to ensure uniform application of the law, the board referred the following questions to the Enlarged Board (referral pending under G 1/25 – "Hydroponics"): 1. If the claims of a European patent are amended during opposition proceedings or opposition-appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description of the patent, is it necessary, to comply with the requirements of the EPC, to adapt the description to the amended claims so as to remove the inconsistency? 2. If the first question is answered in the affirmative, which requirement(s) of the EPC necessitate(s) such an adaptation? 3. Would the answer to questions 1 and 2 be different if the claims of a European patent application are amended during examination proceedings or examination-appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description of the patent application?