G 1/25: Will the European Patent Office still ask us to edit the description to match the claims?
The EPO’s Enlarged Board of Appeal (EBA) has been asked to clarify whether the European Patent Convention (EPC) requires the description of a patent to be amended to align with the claims. This referral, G 1/25, come from decision T 697/22, which highlighted diverging case law on the issue.
The Core Issue
The referral addresses a long-standing and controversial EPO practice: requiring applicants to adapt the description to match the allowed claims. This often involves deleting or marking embodiments not covered by the claims as “not part of the invention,”. This can lead to added subject matter concerns or interpretational risks.
The Board referred three questions to the EBA:
- Is there a legal basis in the EPC for requiring such adaptation?
- If so, which provisions apply?
- Does the answer differ between examination and opposition proceedings?
Why It Matters
The referral follows G 1/24, which confirmed that the description and drawings must always be considered when interpreting claims. This has intensified scrutiny of the EPO’s insistence on description amendments, especially given the lack of consensus among Boards:
- Some decisions (e.g. T 1024/18) support the requirement, citing Article 84 EPC and Rules 42/43.
- Others (e.g. T 1989/18, T 1444/20) argue there’s no clear legal basis, and that forced amendments may do more harm than good.
The referral also touches on broader concerns about legal certainty, third-party rights, and the role of the description in litigation, especially in light of recent Unified Patent Court (UPC) decisions (e.g. Agfa v Gucci, UPC_CFI_278/2023; NanoString v 10x Genomics, UPC_CoA_335/2023).
What’s Next
While the referral is pending, the EPO has confirmed that its current practice requiring adaptation of the description to match the claims will continue unchanged. However, if the Enlarged Board finds the G 1/25 referral admissible and provides clear answers to the referred questions, it could offer long-awaited legal certainty and guidance for both applicants and examiners regarding the role of the description in European patent practice.
What you should do in the meantime
Be careful when amending the description to conform to the claims. Minimal amendments is advised.
If an Examiner requests amendments, be careful as to what to accept. If advantageous, it may be possible to request a stay of proceedings, pending the outcome of G1/25,
Since the description is used to interpret the claims in most jurisdictions, it is vital to ensure that any amendments does not alter the interpretation of the claims.
Our expert Patent Attorneys will be happy help you with any queries on description amendments and please don’t hesitate to get in touch at info@ip21.com or via our website.
Written by Lauren Mills, Cristina Penine, and Joeeta Murphy for ip21
September 2025