After conflicting Board of Appeal decisions in recent years concerning the legal basis for the European Patent Office (EPO) to require adaptation of the description prior to grant, the Board of Appeal in decision T0439/ 22 has referred a number of questions to the Enlarged Board of Appeal (EBoA) in the hope of greater clarity on the relationship between the description and the claims of a European patent.
The description adaptation controversy
Current practice at the EPO mandates that the description of a patent application be brought into conformity with the allowable claims before issuance of a notice of allowance. The EPO argues that adaptation of the description is necessary to ensure clarity and support for the claims as required by Article 84 EPC. This stance is supported by numerous decisions by the EPO Boards of Appeal.
However, a contradicting branch of case law from the EPO Boards of Appeal exists, which questions the legal basis in the EPC of the approach adopted by the EPO.
The criticism against the approach adopted by the EPO centres on Article 69(1) EPC, which recites that the description and drawings shall be used to interpret the scope of the claims of a European patent. Therefore, any amendments made to the description prior to grant may affect the ultimate scope of a European patent. Whether this is generally the case, depends on to what extent the description of a European patent should be used to interpret the claims. Also in this area, there is divergent EPO case law.
Referral to the EPO Enlarged Board of Appeal
As a result of the contradicting case law in this area, a referral to the EBoA regarding to what extent the description should be taken into account for claim interpretation has long been expected.
On 24 June 2024, a referral (G1/24) to the EBoA was finally made with interlocutory decision T 0439/22. G1/24 refers the following questions to the EBoA:
- Is Article 69 (1), second sentence EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC to be applied to the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC?
- May the description and figures be consulted when interpreting the claims to assess patentability and, if so, may this be done generally or only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation?
- May a definition or similar information on a term used in the claims which is explicitly given in the description be disregarded when interpreting the claims to assess patentability and, if so, under what conditions?
Particularly questions 2 and 3 aim to obtain more clarity on, under which circumstances, the description may be used to interpret the scope of the claims.
There are some important remarks accompanying this referral to keep in mind.
Firstly, while the referral has been made, the EBoA still needs to accept the referral as admissible. Due to the complexity of the issues raised, it is quite possible that the EBoA will choose not to admit the referral.
Secondly, if the referral is admitted, the EBoA may rephrase or limit the scope of the questions, should it deem the questions too broad to be justified by the case underlying the referral.
Finally, the EPO has already issued guidance stating that proceedings will not be stayed while the referral is pending – i.e., the day-to-day examination and opposition proceedings at the EPO will not be paused while the EBoA reaches a decision on the above questions.
Conclusion
Referral G 1/24 emphasises the need for more consistent claim interpretation practice and greater clarity as to the relationship between the description and claims of a European patent. Only with such clarity, can applicants accurately assess the potential impact of description amendments on the scope of their claims.
While there is still uncertainty regarding the referral’s admissibility, there is hope that a much-anticipated EBoA referral from T 0056/21, regarding description adaptation, may strengthen the case for an EBoA decision clarifying the relationship between the description and the claims.
In the meantime, we maintain our advice to carefully consider any amendments to the description, including those proposed by the EPO examiner, in particular with respect to their impact on claim interpretation.
