5.3. Bringing the description into line with amended claims

In T 977/94 the board decided that if the patentee amended the claims, it was essential that the description be adapted to them, because of its fundamental importance. An invention was only claimable to the extent that it was supported by the description (Art. 84, second sentence, EPC 1973), and the claims were interpreted in the light of the description (Art. 69 EPC 1973). It was thus necessary to check that the essential elements of the invention claimed were also described as such in the description. See also T 300/04, T 1399/17.

In T 1808/06 the board recalled that, in order to meet the requirement of Art. 84 EPC that the claims have to be supported by the description, any disclosure in the description and/or drawings inconsistent with the amended subject-matter should normally be excised (see also T 1883/11, T 1252/11, T 237/16). Reference to embodiments no longer covered by amended claims must be deleted, unless these embodiments can reasonably be considered useful for highlighting specific aspects of the amended subject-matter. In such a case, the fact that an embodiment is not covered by the claims must be prominently stated (see also T 978/16). Reference to Art. 69(1) EPC was not an appropriate justification for a less stringent adaptation of the description and in so far misleading as it could be understood to suggest a direct applicability of its contents at the examination or opposition stage. This was clearly not the case as Art. 69(1) EPC related to the scope of protection (see in this chapter II.A.6.2.1 "Decision G 1/24"and II.A.6.2.3b) "Legal basis for using the description and drawings to interpret the claims provided in the case law prior to G 1/24"). It was only in situations where the removal of inconsistencies was not possible for procedural reasons (e.g. no amendment possible of the granted version) that – purely as an auxiliary construction – Art. 69(1) EPC could be invoked for an interpretation of the claimed subject-matter.

In T 1989/18 the board held that, if the claims were clear in themselves and supported by the description, their clarity was not affected if the description contained subject-matter which was not claimed. Art. 84 EPC could not serve as a legal basis for a refusal in such circumstances. When assessing clarity, Art. 69 EPC was of no relevance since it was only concerned with the extent of protection conferred. In the absence of an objection of lack of unity under Art. 82 EPC, the board failed to see how R. 42(1)(c) EPC could be the legal basis for requiring the applicant, as a general rule, to bring the description in line with claims intended for grant, and to remove passages of the description that disclosed embodiments which were not claimed. A number of decisions have relied on R. 48(1)(c) EPC as a potential legal basis for requiring the description to be adapted to the subject-matter as claimed. However, the board, taking into account the wording and history of R. 48(1)(c) EPC, considered that this provision could not serve as a legal basis for the refusal of an application if the description was not adapted to the claimed subject-matter.

In T 1024/18 the board disagreed with decision T 1989/18. The board recalled that the established case law of the boards of appeal had interpreted the requirement of support by the description as requiring the entirety of the description to be consistent with any claims found to meet the requirements of the EPC. That this was the established case law of the boards could also be gleaned from the explanatory remarks to Art. 11 RPBA which deal with the case where remittal to the department of first instance is still provided for the purpose of adaptation of the description. The board found that the requirement in Art. 84 EPC that the claims be supported by the description included the requirement that the description be consistent with the claims not only in part but throughout. The board confirmed that when amendments were made to the claims, the description had to be made consistent therewith in the sense that a reader was not presented with any information conflicting with the wording of the claims. It stated that embodiments of the invention which were not consistent with the claims therefore had to be deleted or had to be clearly identifiable to the reader, for example by rewording of relevant passages to indicate that such passages were not, or were no longer, part of the invention. T 1024/18 was followed in T 2378/13, T 2766/17, T 1968/18, T 2293/18, T 2685/19, T 3097/19, T 121/20, T 1516/20, T 438/22, T 673/22.

In T 1444/20 the board pointed out that if claim-like clauses in the description did not result in a lack of clarity of the actual claims, Art. 84 EPC could not provide the justification for removing them. The board further noted that the entire section "Specific embodiments of the invention", where the claim-like clauses were included, related to the same subject-matter as the claims. Thus, this section provided additional support for the claims in the description, as also required in Art. 84 EPC. Regarding the removal of the "Specific embodiments of the invention" from the description as "redundant" subject-matter, the board followed T 1989/18. It rejected that R. 42(1)(c) EPC and R. 48(1)(c) EPC provided a legal basis for the obligation to bring the description in line with the claims of the main request, and to remove passages of the description that disclosed embodiments which were not claimed.

In T 2194/19 the board was of the view that the requirement that the claims are to be supported by the description under Art. 84, second sentence, EPC does not necessarily mean that all the "embodiments" of the description of a patent application have to be covered by the (independent) claims. The board further rejected that R. 42(1)(c) EPC could be the legal basis for establishing such a broad requirement for an adaptation of the description to the claims. In T 3097/19 the board disagreed with the conclusions of T 2194/19 and it considered necessary that embodiments said to be "of the invention" fall within the scope of the claims.

According to the board in T 438/22, there is no provision stipulating that examples within the meaning of R. 42(1)(e) EPC should not be in the form of claim-like clauses at the end of or in another part of the description. There is no justification for deleting such examples just because they are drafted as claim-like clauses. They are to be treated like any other part of the description and thus, inter alia, must support the claims (Art. 84 EPC). It is a general and overarching objective, and as such also a "requirement" of the EPC, that authorities, courts and the public interpreting the claims at a later stage should, as far as possible, arrive at the same understanding of the claimed subject-matter as the EPO bodies deciding on its patentability. The only tool for achieving this objective is the patent specification as the expression of a unitary legal title. The description, as an integral part of the patent specification, should therefore also serve this overriding objective, i.e. it should provide a common understanding and interpretation of the claims. If the description contains subject-matter which manifestly impedes a common understanding, it is legitimate to insist on its removal under Art. 84 and 94(3) EPC and R. 42 EPC, R. 48 EPC and R. 71(1) EPC. The board approved the practice where instead of a direct removal, i.e. the deletion of the subject-matter not covered by the claims, a "removal" by way of an appropriate statement is made, leaving the technical disclosure unaffected. See also T 1426/21, where the board held that there was no reason to require the deletion of claim-like clauses which were consistent with the claims.

In T 56/21 the board analysed the function and relationship of the claims and the description, the relationship between the assessment of patentability and the determination of the extent of protection as well as the requirements of support by the description and clarity in Art. 84 EPC. Regarding the adaptation of the description the board revised the early and recent decisions of the boards of appeal, and concluded that in examination of a patent application, neither Art. 84 EPC nor R. 42, 43 or 48 EPC provided a legal basis for requiring that the description be adapted to match allowable claims of more limited subject-matter. In the case at hand the description included a passage entitled "specific embodiments", which contained claim-like clauses. Those clauses included subject-matter which was not claimed. The board set aside the refusal decision and remitted the case to the examining division with the order to grant a patent.

In T 697/22 of 29 July 2025 (OJ 2026, A16), 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 is followed in most cases 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, although 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. 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. Thus, the divergence in the case law concerned both whether it is necessary to adapt the description to the amended claims and, if so, 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?”

In T 2391/18 the board dealt with an alleged inconsistency between the claims and the description, which was already present in the granted version. Since Art. 84 EPC is not a ground for opposition, the board held that the requested amendment to the description was not "occasioned by a ground for opposition" within the meaning of R. 80 EPC. Moreover, applying the considerations of the Enlarged Board in G 3/14, the board concluded that the claims of the patent could be examined for compliance with the requirements of Art. 84 EPC only when, and then only to the extent that the amendment introduced non-compliance with Art. 84 EPC. See also T 1477/15, T 454/20, T 447/22, T 736/22 and T 2328/22.

In T 295/02 the board found that an inconsistency between a claim and the provisional description was not a valid reason to refuse the application. The inconsistency arose from an amendment in the claims and the appellant was prepared to adapt the description to conform to a definite allowable set of claims.

On the question whether adapting the description is to be treated as an amendment to a party's appeal case and the admittance of such an amendment, see chapters chapter V.A.4.2.3k) and chapter V.A.4.5.4o), respectively.