G 1/25 relates to a patent for a hydroponics growing medium
For years, patent attorneys outside of Europe have asked the same question when prosecuting European patent applications: what exactly counts as an inconsistency between the claims and the description?
Unlike most major patent offices, the European Patent Office (EPO) has made this concept central to examination, opposition, and appeal practice. And with the Enlarged Board of Appeal (EBA) referral G 1/25 now pending, the definition — and legal significance — of an “inconsistency” may be about to change dramatically.
Why Are We Still Talking About Inconsistencies?
Under current EPO practice, applicants are expected to align their descriptions with the amended claims before grant, deleting or flagging subject‑matter that no longer falls within the claim scope. The EPO has confirmed that examination and opposition divisions will continue applying this practice while the referral is pending, and the case‑law background on ‘bringing the description into line’ is summarised in the EPO’s own materials.
So… What *Is* an Inconsistency at the EPO?
Traditionally, the EPO considers an inconsistency to arise when the description contains embodiments, language, or technical statements that contradict or extend beyond the subject‑matter defined in the allowed claims. See the EPO Guidelines Section 4.3. Examples include: (i) describing optional features that an amended claim now defines as mandatory; (ii) presenting embodiments broader than a narrowed claim scope; and (iii) using terminology that implies a different technical scope from the claims. Some Boards consider these inconsistencies to undermine clarity/support under Article 84 EPC, while others take the view that clarity is a property of the claims themselves — a split that the EPO acknowledges, hence the EBA referral.
How Did G 1/24 Change the Stakes?
During opposition of EP3076804, the opponent to the patent as granted, argued that the term “gathered sheet”, present in claim 1, had a broader meaning taken from the description, rendering claim 1 invalid, whereas the proprietor argued that the claim should take a normal interpretation of the term from the art.
In G 1/24, the EBA emphasised that the description and drawings must always be consulted when interpreting the claims, after a referral from the Technical Board of Appeal.
This makes clear the interpretive importance of the description across the system. The practical consequence is straightforward; if the description must always inform claim construction, then inconsistencies can skew interpretation downstream, including in opposition and litigation.
Why Did G 1/25 Ask the Question All Over Again?
The referring case (T 697/22) concerned a hydroponics patent with claims amended to require an organic binder while the description spoke more broadly about binders. Faced with divergent case law on whether such a mismatch must be corrected, the Technical Boards of Appeal referred three questions to the EBA: (1) must inconsistencies be removed; (2) if yes, under which EPC provision(s); and (3) does the answer differ between examination and opposition? While the referral is pending, the EPO’s line is to continue current practice; in other words, mandating amendments to the description in line with the claims.
Are All Inconsistencies Equal? Practical Examples
Not at the EPO. Some inconsistencies are treated more seriously than others. For example: embodiments plainly outside the claim scope may be tolerated as background in some decisions but must be deleted or prominently labelled in others; optional vs mandatory features often trigger alignment demands; and subtle terminological drift can still attract an objection.
Why Does This Matter to You?
Most other major patent offices (e.g., US, JP, CN) do not require wholesale description rewrites to match amended claims. The EPO’s approach can increase cost, prosecution time, and added‑matter risk. Until G 1/25 is decided, it is prudent to budget for alignment rounds and to plan fallbacks carefully when prosecuting European and Euro-PCT applications.
What Happens Next?
Pending the EBA’s decision in G 1/25, assume the Guidelines‑aligned practice remains in force and be ready to remove or mark inconsistent embodiments to align with the claims. The core question — what is an “inconsistency” — should soon receive clearer, uniform guidance, and when it does, we will update our strategic advice for applicants and foreign counsel.
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