The EPO User Day 2025 is scheduled for September 23-24, 2025. This year, the EPO will offer dedicated sessions for SMEs and micro-entities, focusing on how patents can support growth and innovation. The event also offers breakout sessions for patent professionals.
Referreal on adaptation of description
As reported by the European Patent Office (EPO), questions relating to the adaptation of the description were referred to the Enlarged Board of Appeal (G 1/25).
It is the EPO’s practice that the description must be aligned with amended claims. I.e., when claims are amended, the description should be adapted accordingly to reflect these changes, avoid contradictions, and maintain a coherent disclosure.
At least one Board of Appeal has previously voiced doubts as to whether there is a legal basis for this practice, as previously reported in this blog section.
Considering recent case law from the Enlarged Board (G 1/24, point 20), it would be surprising if the Enlarged Board took the position that the EPO’s practice on adaptation of the description had no legal basis. The adaptation of the description also appears to be dear to many in EPO management, who seem to regard consistency of description and claims to be a KPI for the ongoing patent quality discussion.
EPO Case Law Book (11th ed.)
The EPO has published the 11th edition of the Case Law of the Boards of Appeal. The case law book (which is available in digital format only) is a great resource on the plethora of decisions rendered by the Boards of Appeal in both ex partes and inter partes proceedings.
New UPC CMS
The new UPC Case Management System (CMS) went live today. Entering the new CMS was smooth. Users can look forward to the integration of additional functionality into the new CMS in phase 2 of the roll-out.
Completion of the transition from the old CMS (which is still needed for most UPC CMS functions at the time of phase 1 of the new CMS roll-out ) might be a blow to companies that offer dedicated authentication and signature card solutions tailored for the old CMS.
G 1/24 – claim interpretation
On 18 June 2025, the Enlarged Board of Appeal (EBA) rendered its decision on claim interpretation in EPO proceedings in matter G 1/24 . The EBA held that (headnote of the decision): “The description and any drawings are always referred to when interpreting the claims, and not just in the case of unclarity or ambiguity.” Thus, claim interpretation in proceedings before the EPO is based on the same principles as in infringement proceedings. Prior to G 1/24, some Boards of Appeal took the position that the description and drawings are to be consulted for claim interpretation only in case the claims were unclear or ambiguous.
Many useful and valuable resources on G 1/24 are already available online, such as:
- The EPO’s Press Communiqué of 18 June 2025
- The IPKat’s review of the decision
- The Kluwer Patent Blog’s review of the decision
While the headnote of G 1/24 stipulates that the description is to be taken into consideration for claim interpretation in proceedings before the EPO, this does not mean that clarity issues in the claims can be resolved by simply referring to the description. Point 20 of G 1/24 highlights “… the importance of the examining division carrying out a high quality examination of whether a claim fulfils the clarity requirements of Article 84 EPC. The correct response to any unclarity in a claim is amendment.”
Appeal proceedings with intervener
In proceedings before the EPO, the question of whether appeal proceedings may be continued, after withdrawal of the sole appeal, with a party who intervened at the appeal stage has been settled for a long time. The Enlarged Board of Appeals (EBA) held in decision G 3/04: “After withdrawal of the sole appeal, the proceedings may not be continued with a third party who intervened during the appeal proceedings.”
In T 1286/23, the Board brings this question before the Enlarged Board of Appeals again. As stated in r. 3.7 of the decision, “[the] referring Board is … not in agreement that Article 105 EPC in combination with Article 107 EPC must be read in the sense that also a third party intervening only at the appeal stage can never become more than a non-appealing opponent.” The referring Board provides detailed reasons for this position in r. 3.7 et seq. of the decision.
Thus, the procedural question pertaining to a party who intervened at the appeal stage is going to be revisited.
GPTO and WIPO DAS
The participation of the German Patent and Trademark Office (GPTO) as a depositing office in the WIPO Digital Access Service (DAS) offers significant advantages for patent applicants. While the GPTO requires that a dedicated request be filed for entering a document into WIPO DAS, the GPTO allows for the deposit of priority documents even when the priority term has (long) expired and for documents that pre-date the GPTO’s designation as a depositing office. This flexibility is particularly beneficial when applicants require access to priority documents after the expiration of the priority term, such as during the filing of a bypass continuation in the U.S.
EU design reform update
As previously reported on this blog, the EU design regulation and the EU design directive are going to be modified. This is a multi-phase process, with the first of the phases entering into force on 1 May 2025. If you want to learn more, check out the EUIPO’s webinar recording that provides updated information on the changes.
One important aspect of the changes is that the new regulation will allow IP stakeholders to more easily obtain adequate design protection for designs that can be represented in an electronic register. The new requirements on the graphical representation will be specified in the secondary legislation (Implementing and Delegated Regulations), which will enter into force in Phase II of the reform (starting from 1 October 2026).
Search and Examination Matters 2025
The European Patent Office’s (EPO) Search and Examination Matters 2025 event is scheduled to take place on Feb 18-21, 2025. The Search and Examination matters event serves as a platform for patent professionals and other IP stakeholders looking to gain deeper insights into the intricacies of the EPO’s search and examination processes and practices.
Furnishing Priority Document for a PCT Application
There are instances where the WIPO Digital Access Service (DAS) access code may not be available at the time of filing a PCT application. A typical example is when the depositing office has not yet deposited the priority document into WIPO DAS upon expiry of the priority term.
The WIPO DAS access code is essential for retrieving priority documents electronically from WIPO DAS. Fortunately, the WIPO has instituted a user-friendly solution through the ePCT system. ePCT allows the eOwner to initiate the retrieval of the priority document by performing the action “Obtain priority document from DAS” to effect retrieval of the priority document within the time period of R. 17.1(b-bis). The eOwner can simply log into their ePCT account and initiate the retrieval of the priority document.