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# Why the EPO may still ask you to adapt your description after G 1/25

 13 november 2026  News Hot Topic News Publication 

The EPO published a [notice on 10 November 2026](https://www.epo.org/en/legal/official-journal/notice-10-november-2026) telling the general public how the examining and opposition divisions will apply [G 1/25](https://www.epo.org/en/boards-of-appeal/decisions/g250001ex1). On its face, the notice adopts the Enlarged Board’s test. In practice, its guidance risks letting familiar drafting rules decide the outcome before that test is even applied.

Instead of closing the gap between first-instance practice and the Boards’ case law, the notice could entrench it.




##### Before G 1/25: the Guidelines for Examination under pressure from the Boards of Appeal 

Adapting the description has been part of EPO practice from the outset. The first Guidelines for Examination entered into force on 1 June 1978. Section C‑III, 4.3 of that edition ([reproduced in Annex 2 to the EPO President’s observations](https://link.epo.org/web/eba/referrals-pending-enlarged-board/G-1-25-Comments-of-the-President-of-the-EPO-29.01.26.pdf#page=34)) already called for serious inconsistencies to be corrected.

Two instructions in the [April 2026 Guidelines (F-IV, 4.3)](https://www.epo.org/en/legal/guidelines-epc/2026/f_iv_4_3.html) matter especially in practice. They call for embodiments still presented as part of the invention but no longer covered by the claims to be deleted or clearly marked as falling outside them. They also say that features required by an independent claim must not be presented in the description as optional. Section [F-IV, 4.4](https://www.epo.org/en/legal/guidelines-epc/2026/f_iv_4_4.html) calls for claim-like clauses to be removed or reworded.

Suppose the independent claim as filed reads “An apparatus comprising A and B”. The description says that the apparatus *preferably* also includes C. To overcome an inventive-step objection, the applicant amends the claim to read “An apparatus comprising A, B and C”. An embodiment with all three features still falls within the amended claim and can stay. Under the Guidelines in force up to today, however, the passage presenting C as optional had to be rewritten.

Now suppose the description also presents an apparatus with A, B and D, but no C, as an embodiment of the invention. The original independent claim required only A and B and did not exclude D, so it covered that embodiment. The amended claim has now been limited to require C, which that embodiment lacks. Under the Guidelines, said embodiment had to be deleted or expressly marked as falling outside the amended claim.

A series of Board of Appeal decisions questioned how far that practice could go. In [T 1989/18](https://www.epo.org/en/boards-of-appeal/decisions/t181989eu1), the board held that claims clear in themselves and supported by the description do not lose their clarity merely because the description contains unclaimed subject-matter. [T 1444/20](https://www.epo.org/en/boards-of-appeal/decisions/t201444eu1) declined to require the removal of claim-like clauses that caused no lack of clarity. [T 2194/19](https://www.epo.org/en/boards-of-appeal/decisions/t192194eu1) likewise held that the mere presence of an embodiment outside the claims was not enough: the examining division had to justify any alleged inconsistency.

[T 56/21](https://www.epo.org/en/boards-of-appeal/decisions/t210056eu1) set out in detail why the board considered that neither Article 84 EPC nor Rules 42, 43 and 48 EPC provided a basis for requiring the description to be brought into line with allowable claims of more limited subject-matter. The board had considered a referral to the Enlarged Board but decided the point itself. The application went back for grant with its claim-like clauses intact. Other boards took a different view of the substantive obligation. [T 438/22](https://www.epo.org/en/boards-of-appeal/decisions/t220438eu1), for example, held that the form of claim-like clauses alone did not justify removing them, while accepting that a substantive inconsistency could require adaptation.

The divisions continued to apply the Guidelines. Against that background, [T 697/22](https://www.epo.org/en/legal/official-journal/2026/02/a16) referred the question on 29 July 2025: if a claim amendment introduces an inconsistency, does the EPC require adaptation, and if so, which provision requires it? [G 1/24](https://www.epo.org/en/legal/official-journal/2025/09/a60) had answered a different question: the description and drawings must always be consulted when interpreting claims to assess patentability under Articles 52 to 57 EPC. It did not decide when the description or drawings must be amended.

##### Why G 1/25 should have settled the question for both instances

G 1/25 took G 1/24’s approach to interpretation as its starting point and answered the separate question of when adaptation is required. The Enlarged Board expressly declined to endorse the reading of Article 84 EPC developed in T 56/21 and the other cases in that line: the description and drawings matter when assessing what the claims mean and whether they are supported. But it reached a narrower conclusion in the same direction: Article 84 does not require formal alignment or the removal of all unclaimed material (Reasons 28-35). The [Order](https://www.epo.org/en/boards-of-appeal/decisions/g250001ex1) of 3 September 2026 is narrow. Adaptation is required where a claim amendment introduces an inconsistency and where, *because of that inconsistency*, Articles 52 to 57, 76(1), 83, 84, 123(2) or 123(3) EPC are not complied with. There are two gates, and they come in that order.

The first gate is one of claim interpretation. The skilled person reads the claim, the description and any drawings together, in a single exercise. That is the holistic approach: there is no preliminary reading of the claim in isolation. The description and drawings can inform the meaning of the claim wording, but cannot impose a limitation or expansion for which that wording provides no basis (Reasons 7-10).

A passage in the description or a drawing may suggest a reading incompatible with the claim’s apparent meaning. But *real doubt* sets a demanding threshold for finding an inconsistency. A reasoned objection must answer two questions in order. First, can the apparent conflict readily be resolved by reading the claim in context under G 1/24? If not, what real doubt remains for the skilled person about what the claim means or covers? The mere presence of examples or embodiments outside the claim does not establish such doubt (Reasons 18-20, in particular Reason 20).

The second gate asks whether the inconsistency itself causes non-compliance with a specific EPC requirement. Adaptation is required only if, and to the extent that, it does (Reasons 21-23 and 43-44).

Both gates must be applied at first instance, not just on appeal. The Enlarged Board expressly gave the same answer for examining and opposition divisions (Reasons 13-15 and the Order).

##### The notice of 10 November 2026

The notice, released in advance of publication in the Official Journal, gives every appearance of putting G 1/25 into practice. It says the decision has been implemented and that the Guidelines will be revised accordingly. It adopts the holistic approach, confirms that clearly unclaimed material does not in itself create an inconsistency, and expressly rejects formal concordance as an end in itself. Even claim-like clauses no longer have to be removed merely because of their form. So far, there is little to suggest that the old approach will survive. The first of the “Practical examples” is where that reassurance breaks down.

**Example 1.** The claim defines an apparatus comprising A, B and C. The description presents A and B as the invention and says that C may be present in an embodiment. The notice states: “Reading the claim in the light of the description in accordance with the holistic approach, the skilled person would be left in doubt as to whether feature C is required by the claim. The inconsistency cannot therefore be readily resolved by applying the principles of claim interpretation”. It concludes that the reader cannot tell whether the described embodiments fall within the claim, so the claim lacks support under Article 84 EPC. It also posits a problem under Article 56 EPC if reading the claim without C would undo the inventive-step distinction that led to the amendment. The example ends with a drafting instruction: a feature required by an independent claim "may therefore not be described in the description as optional" using wording such as "preferably", "may" or "optionally".

That last sentence repeats, almost word for word, the instructions already set out in the 2026 edition of the Guidelines, which predate G 1/25.

Example 1 speaks of “doubt”, not the “real doubt” referred to in G 1/25 (Reason 19). More importantly, the notice identifies the apparent incompatibility but does not explain why the claim’s express requirement for C, read in context, fails to resolve it. Read as a general drafting rule, its conclusion short-circuits both inquiries at the first gate: whenever a mandatory feature is described as optional, the conflict is deemed not readily resolvable and real doubt is presumed. The word *preferably* should trigger the analysis, not decide it.

The same shortcut could reach the A+B+D embodiment that does not contain C. A division could demand deletion or relabelling simply because the description still presents it as part of the invention.

**Example 2** looks like a relaxation. The notice concludes that a detailed A+B+C embodiment does not justify reading C into an open claim to A+B and that no adaptation is required. On the notice’s reading of C as merely an additional feature of an embodiment already covered by the claim, the 2026 edition of the Guidelines would have, once again, led to the same result.

A divergence to plan for

[T 384/25](https://www.epo.org/en/boards-of-appeal/decisions/t250384eu1), decided on 11 September 2026, applies G 1/25 to a contested adaptation objection based on subject-matter left in the description after the amendments narrowed what was claimed. The proprietor abandoned the medical-use claims and pursued four product claims. Opponent 1 objected that six paragraphs still described the abandoned uses. The board worked through both inquiries at the first gate: it tested the alleged conflict by reading the amended claims in the context of the disputed passages, then asked whether any real doubt remained. It found “no doubt, let alone a real doubt” about what the claims meant or covered, and ordered maintenance with the description and figures as granted (Reasons 3.5-3.10 and the Order).

At the oral proceedings in [T 657/24](https://www.epo.org/en/boards-of-appeal/decisions/t240657eu1), the board indicated that no adaptation to the description was needed, and the parties confirmed that view. Applying G 1/25, the board found no inconsistency that resulted in non-compliance with the EPC. It ordered the patent to be maintained with amended claims and with the description and drawings as granted (Reason 6 and the Order).

These two decisions illustrate how the Boards assess whether adaptation is needed after a claim amendment. Under G 1/25, there is no inconsistency unless real doubt remains, so whoever argues that the description is inconsistent has to show it. A division treating Example 1 as a drafting rule takes that doubt as given. The same description could then have to be adapted at first instance but be left unchanged on appeal. Applicants and proprietors should factor that risk into their strategy from the start.

There is one European Patent Convention, and G 1/25 sets the same test at first instance and on appeal. The revised Guidelines should give effect to that interpretation, not set a different threshold for when the description must change.

##### The consequences that follow

When a division asks an applicant to adapt the description because a previously optional feature has become mandatory in an amended claim, the task can be harder than deleting a single word such as "preferably", "may" or "optionally". Faced with a difficult rewrite and the cost, delay and uncertainty of contesting the objection, the applicant may decide to delete the entire paragraph instead. Even if the claim wording does not change again, the granted claims will be read without that passage.

That choice can matter even if the claims are never amended in opposition. G 1/25 distinguishes between how claims are read and when adaptation is required. The decision addresses the need for adaptation only where a claim amendment has introduced an inconsistency (Reason 26). Its principles on claim interpretation and its definition of inconsistency apply more broadly: the Enlarged Board expressly gives a patent examined as granted in opposition as an example (Reasons 24-25). The granted claims are therefore read with the description and any drawings as granted, whether or not those documents were adapted before grant.

In opposition, a proposed deletion from the granted description must satisfy Rule 80 EPC: it must be occasioned by a ground for opposition, even if the opponent has not raised that ground. A claim amendment made to address such a ground does not justify unrelated deletions from the description.

At either stage, an adaptation that goes further than necessary may create the very problem it is meant to cure. Suppose a claim requires a viscosity below 100 mPa**·**s, and deleting an out-of-scope example also removes the only instruction to measure viscosity at 20 °C. The remaining examples report values only at 40 °C, but the description still links the claimed threshold to performance at room temperature. It may then be unclear whether the claim covers a formulation that meets the limit at 40 °C but not at 20 °C. A board could use G 1/25’s broader reasoning to assess whether the deletion itself has created an inconsistency that leads to non-compliance with the EPC, without extending the Order to a situation it did not decide.

##### What comes next

The pending referral in [G 1/26](https://www.epo.org/en/case-law-appeals/communications/referral-enlarged-board-appeal-g-126-coated-steel-strips) could make that choice more consequential still. If a feature disclosed only in the description or drawings can be read into a granted claim, retaining or deleting that disclosure could determine whether the claim is read as requiring the feature.

As more cases are decided under G 1/25, will first-instance and appeal practice converge on when the description needs to change, or will the gap between them widen?

One case to watch is the resumed appeal in [T 697/22](https://www.epo.org/en/legal/official-journal/2026/02/a16). Applying G 1/25, the board’s provisional view is that the amended description leaves real doubt as to whether the embodiments it still describes fall within the claim, so that Article 84 is not met. Two third parties have argued [on the file](https://register.epo.org/application?number=EP07704142&lng=en&tab=doclist) that no real doubt arises, because the description cannot widen a claim whose wording is clear. Whichever way it goes, the reasoning will matter more than the result.

By [Olivier Catania](https://www.hoyngrokhmonegier.com/nl/our-team/legal-experts/olivier-catania), member of our EPO opposition team.