In the European patent system, few issues have generated as much debate in recent years as the relationship between the claims and the description. The recent G 1\/24 and G 1\/25 decisions of the Enlarged Board of Appeal of the European Patent Office (EPO) have addressed precisely this issue, providing long-awaited clarification. <\/p>\n\n\n\n
To understand the significance of these decisions, it is useful to recall the basic structure of a patent. The claims legally define the subject matter for which protection is sought, while the description explains the invention in greater detail and usually includes definitions, examples and drawings. Traditionally, there was a consensus that the claims constituted the starting point for assessing a patent. However, European case law was not consistent on a fundamental question: whether the claims should be interpreted exclusively on the basis of their own wording or whether the description and drawings should always be taken into account. <\/p>\n\n\n\n
Decision G 1\/24, issued in June 2025, answered this question. Until then, different lines of case law had coexisted. Some decisions held that, if a claim appeared clear in itself, it should be interpreted without reference to the description. Others maintained that the description should form part of the interpretative process in all cases. The Enlarged Board endorsed the latter position and established that claims must always be interpreted in the light of the description and drawings, even where their wording appears clear at first sight. <\/p>\n\n\n\n
However, it should also be noted that decision G 1\/24 did not resolve every issue concerning claim interpretation. The Enlarged Board did not expressly rule on the extent to which a definition contained in the description may prevail over the ordinary technical meaning of a term used in a claim. This is an issue that will likely continue to develop in future decisions. <\/p>\n\n\n\n
From a practical perspective, the impact of G 1\/24 is considerable. It is now more difficult to defend interpretations of claims that are entirely detached from what is explained in the patent specification. Moreover, the decision helps bring EPO practice closer to that followed by other European courts, including the Unified Patent Court, thereby promoting greater consistency in the interpretation of European patents. <\/p>\n\n\n\n
Once G 1\/24 had established that claims must be interpreted in the light of the description and drawings, an inevitable question arose: what happens when, following an amendment to the claims during the prosecution of an application or during opposition proceedings, the description continues to contain passages that appear to indicate a scope different from that defined in the claims? Is it always mandatory to adapt the description in order to eliminate every discrepancy? <\/p>\n\n\n\n
This question was addressed in decision G 1\/25, issued in September 2026. For years, EPO practice had tended to require comprehensive adaptation of the description whenever the claims were limited. This involved considerable effort for applicants, particularly in complex applications containing numerous variants, embodiments and examples. <\/p>\n\n\n\n
The Enlarged Board adopted an intermediate position. On the one hand, it made clear that the mere presence in the description of embodiments and\/or examples that are no longer covered by the claims does not automatically require their removal. On the other hand, it recalled that certain discrepancies between the claims and the description may indeed be relevant. The question in such cases is whether the difference may affect compliance with requirements of the European Patent Convention (EPC), such as clarity, sufficiency of disclosure, added subject matter or even the patentability of the invention itself. <\/p>\n\n\n\n
In summary, G 1\/24 and G 1\/25 reinforce a coherent understanding of the role of the description in the European patent system. While the former confirms that claims must be interpreted in the light of the description and drawings, the latter clarifies when it is genuinely necessary to adapt the description following an amendment to the claims, by linking that requirement to compliance with the provisions of the EPC. Both decisions therefore encourage a more practical and predictable approach, moving away from purely formal requirements.<\/p>\n\n\n\n
In our view, G 1\/24 and G 1\/25 represent an important step towards a more coherent and pragmatic interpretation of European patents. Nevertheless, it is difficult to believe that these decisions will definitively bring the debate to a close. The relationship between the claims and the description has been one of the most controversial issues in European patent practice in recent years, giving rise to widely differing positions both in the case law and among practitioners themselves. <\/p>\n\n\n\n
Precisely because the description now plays a central role in claim interpretation, further debate will continue to arise concerning the scope to be attributed to particular terms and the consequences of discrepancies between these two parts of the document. Although both decisions provide much-needed clarification, their practical application will likely continue to be refined through future decisions. That said, one point is clear: for applicants and practitioners, these decisions reinforce the importance of drafting applications in which the description and claims are carefully aligned from the earliest stages of prosecution.<\/p>\n","protected":false},"featured_media":26889,"template":"","categorias-ip-litigations":[115,118],"class_list":["post-26888","ip-law","type-ip-law","status-publish","has-post-thumbnail","hentry","categorias-ip-litigations-inventions","categorias-ip-litigations-technology"],"yoast_head":"\n