{"id":6245,"date":"2024-10-29T13:45:40","date_gmt":"2024-10-29T13:45:40","guid":{"rendered":"https:\/\/forresters-ip.com\/t56-21-no-legal-basis-for-description-adaptation-at-the-epo\/"},"modified":"2025-09-16T10:08:04","modified_gmt":"2025-09-16T10:08:04","slug":"t56-21-no-legal-basis-for-description-adaptation-at-the-epo","status":"publish","type":"post","link":"https:\/\/forresters-ip.com\/de\/t56-21-no-legal-basis-for-description-adaptation-at-the-epo\/","title":{"rendered":"T56\/21 – No legal basis for description adaptation at the EPO"},"content":{"rendered":"\n

The EPO\u2019s insistence that the description be amended to conform to the claims (\u201cdescription adaptation\u201d) before a European patent application is granted has been controversial, with the Boards of Appeal recently issuing divergent decisions about the topic.<\/p>\n\n\n\n

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: \u201cneither 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\u201d.<\/p>\n\n\n\n

History<\/h2>\n\n\n\n

Before a European patent application is granted, Examining Divisions require the description to be amended to \u201cconform to the claims\u201d. 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.<\/p>\n\n\n\n

The process of amending the description can be time-consuming and may introduce risks for the applicant.\u00a0 For example, the amendments could be considered to offend the EPO\u2019s strict added subject matter provisions.\u00a0 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.\u00a0<\/p>\n\n\n\n

Therefore, there has been understandable reluctance from applicants to implement description adaptation, leading to recent controversy regarding the \u201crequirement\u201d to amend the description.<\/p>\n\n\n\n

It has been questioned whether there is any legal basis for requiring description adaptation.<\/p>\n\n\n\n

The only explicit mention of description adaptation is in the more recent versions of the EPO\u2019s Guidelines for Examination (\u201cthe Guidelines\u201d). However, the Guidelines are not legally binding on the Boards of Appeal.<\/p>\n\n\n\n

T 56\/21<\/a> 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.<\/p>\n\n\n\n

The application<\/h2>\n\n\n\n

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 \u201cSpecific Embodiments\u201d, which included claim-like clauses, was deleted. <\/p>\n\n\n\n

After the applicant challenged the description adaptation, the Division refused the application, reasoning that the application did not meet the requirements of:<\/p>\n\n\n\n