SONN Patentanwälte – IP Attorneys

Correction of inconsistencies between claims and description in opposition proceedings

In application of the decision of the Enlarged Board of Appeal G 3/14, an objection under Article 84 EPC that a claim is not supported by the description is open to examination in opposition or opposition appeal proceedings only when, and then only to the extent that, the lack of support has been introduced by an amendment to the patent in the contentious proceedings. According to Rule 138 EPC, the description, claims and drawings of the European patent can only be amended in opposition proceedings if these amendments are occasioned by a ground for opposition, even if this ground has not been raised by the opponent. Since the lack of support of a claim by the description does not constitute a ground for opposition, it is not possible to eliminate a contradiction between the description and a claim amended in opposition or opposition appeal proceedings if this contradiction already existed in the granted patent (EPO Board of Appeal 28. 9. 2023T 447/22).