The EPO’s insistence that the description be amended to conform to the claims (“description adaptation”) before a European patent application is granted has been controversial, with the Boards of Appeal recently issuing divergent decisions about the topic.
It had been hoped that greater legal certainty would be provided by a referral to the Enlarged Board of Appeal, based on T 56/21. Unfortunately, no such referral was made. Instead, it was decided that no referral was necessary because the law on this topic was unequivocal: “neither Article 84 nor Rules 42, 43 and 48 EPC provide a legal basis for requiring that the description be adapted to match allowable claims of more limited subject matter”.
History
Before a European patent application is granted, Examining Divisions require the description to be amended to “conform to the claims”. The amount of amendment required depends on the particular Division, with some Divisions requiring only obvious inconsistencies to be removed, and others requiring more substantial amendments to the description.
The process of amending the description can be time-consuming and may introduce risks for the applicant. For example, the amendments could be considered to offend the EPO’s strict added subject matter provisions. Amendments to the description could also affect how the claims will be interpreted in infringement proceedings. This is because of Article 69(1) EPC, which states that the description and drawings shall be used to interpret the claims. This means that it is possible for an amendment made to the description of a European patent application to affect the scope of protection of the corresponding patent after grant.
Therefore, there has been understandable reluctance from applicants to implement description adaptation, leading to recent controversy regarding the “requirement” to amend the description.
It has been questioned whether there is any legal basis for requiring description adaptation.
The only explicit mention of description adaptation is in the more recent versions of the EPO’s Guidelines for Examination (“the Guidelines”). However, the Guidelines are not legally binding on the Boards of Appeal.
T 56/21 addressed the question of whether there is any legal basis for requiring the description of a European patent application to be amended to be in line with the claims.
The application
During examination, the claims of this application (European Patent Application No. 15700545.5) were found allowable. The Division issued a notice of allowance, including amendments to the description to delete subject matter that they considered to be outside the scope of the allowed claims. A section entitled “Specific Embodiments”, which included claim-like clauses, was deleted.
After the applicant challenged the description adaptation, the Division refused the application, reasoning that the application did not meet the requirements of:
- The Guidelines (F-IV, 4.4);
- Article 84 EPC (clarity);
- Rule 48(1)(c) EPC (irrelevant matter).
The appeal
The applicant appealed this decision, arguing that the Guidelines are not legally binding, and that the requirements of Article 84 EPC and Rule 48(1)(c) EPC were met by the application.
The Board of Appeal agreed with the applicant, deciding that neither Article 84 nor Rule 48 EPC provide a legal basis for requiring that the description be adapted to match allowable claims of more limited subject matter. Rules 42 and 43 EPC were also found to provide no legal basis for the description adaptation.
The Board stated that the title and wording of Article 84 EPC confirms that Article 84 EPC states requirements in respect of the claims and not of the description. According to Article 84 EPC, it is the claims that define the subject matter for which protection is sought.
Examiners have often relied on Article 69 EPC to argue that description adaptation is necessary, because Article 69 EPC states that the description can be used to interpret the claims. This means that the description can affect the scope of the patent, and it has been argued that the description therefore must also be clear. However, the Board stated that Article 69 EPC is not applicable in grant proceedings before the EPO and that Article 84 and Rule 43 EPC should be assessed separately of considerations of the extent of protection when examining a patent application.
When refusing the application the Division had also relied on Rule 48(1)(c) EPC, which states that the application shall not contain “any statement or other matter obviously irrelevant or unnecessary under the circumstances”. The Board decided that this Rule is about preventing the publication of statements that are contrary to public morality or public order, or certain disparaging or irrelevant statements. Therefore, it was decided that this Rule does not provide a ground for refusal based on the inclusion of merely “irrelevant or unnecessary” matter or discrepancies between the subject matter claimed and that disclosed in the description.
What next?
T 56/21 may help applicants to push back against Examining Divisions requiring amendments to the description to conform to allowable claims. However, a referral to the Enlarged Board of Appeal about description adaptation would provide further guidance and hopefully put an end to this series of diverging decisions.
