Implications Of European Patent Office Decision G1/25 – Comment By Louise Carr
The European Patent Office (EPO) is unusual in that it routinely requires patentees to amend the description to conform to the allowed claims prior to grant (unlike other patent offices around the world). The legal basis for this has long been contested and finally, a referral to the Enlarged Board of Appeal has resulted in decision G1/25.
G1/25 decided that the description must be adapted only where an inconsistency between the claims and description causes non-compliance with the European Patent Convention. The EPO must justify any request for adaptation of the description by explaining the non-compliance.
Our Louise Carr, Senior Patent Attorney, comments on the decision below:
“At first glance, this appears to reduce the burden on patentees to amend the description. However, due to the justification which will be provided by the EPO, the significance placed on the amendments could have an increased effect on claim interpretation during litigation or opposition.
“In many cases, we are likely to see less amendment of the description required, which is welcome. However, where description amendments are required, applicants will need to carefully consider how or whether to respond to the justification provided by the EPO for the amendments and any effects this could have on post-grant proceedings.”
For any queries further to Decision G1/25 or on European patent practice in general, please contact Louise Carr (louise@cameronintellectualproperty.com) or your regular Cameron IP attorney.
Categories: Patents