Once a set of claims has been found allowable in examination proceedings before the European Patent Office (EPO), adapting the description to the claims deemed allowable is usually the final step to be taken before an official notice of allowance is issued.
Present case law and potential pitfalls
In recent years, there has been some controversy around this topic and, in fact, divergent case law from the EPO Boards of Appeal not only with regard to the extent of the adaptation that is required but also regarding the actual legal basis of the description adaptation requirement.
One line of case law (see, e.g., decisions T 1808/06, T 1024/18, T 121/20, T 2293/18, T 2766/17, T 1516/20, and T 3097/19) as well as the EPO Guidelines for Examination (2021 and later versions) refer to Article 84 of the European Patent Convention (EPC), requiring that the claims are supported by the description, and stipulate that any inconsistencies between the claims and those parts of the description disclosing the invention be removed – either by deleting embodiments no longer covered by the claims or by prominently labelling them as not being part of the claimed invention. Another line of case law from the EPO Boards of Appeal (see, e.g., decisions T 1989/18, T 1444/20, and T 2194/19) explicitly disagrees with this approach and questions its legal basis in the EPC.
Adapting the description to the allowable claims cannot only be burdensome and cause significant additional costs for a patent applicant but may also give rise to potential added matter issues under Article 123(2) EPC which are being handled notoriously strictly by the EPO and which can endanger the validity of a granted patent. Moreover, amendments to the description may also have a direct impact on claim interpretation, and, thus, the scope of protection of a granted claim. For example, while Article 69(1) EPC states that the scope of protection conferred by a European patent application shall be determined by the claims, it also says that the description and drawings shall be used to interpret the claims. The final description of a European patent may also be relevant for assessing equivalent infringement of a patent claim by the national courts of some EPC member states.
Possible referral to the EPO Enlarged Board of Appeal
Notably, in the currently pending appeal case T 56/21 regarding European patent application EP 3 094 648 (“FC-region variants with improved protein A-binding”; F. Hoffmann-La Roche AG), the Board of Appeal has proposed referring the question to the EPO Enlarged Board of Appeal (the highest instance in EPO proceedings) as to whether a claim could be found to lack clarity or support under Article 84 EPC “if a part of the disclosure of the invention in the description and/or drawings of an application (e.g. an embodiment of the invention, an example, or a claim-like clause) is not encompassed by the subject-matter for which protection is sought”. As of today, no referral decision has been made, and also the exact scope of a potential referral is still unclear. However, it is generally expected that a referral will be made and that, if the referral is found to be admissible, a respective decision by the EPO Enlarged Board of Appeal will provide guidance and greater legal certainty for all parties involved.
Practice points
We will keep you updated on any further developments in this matter. In the meantime, we recommend to continue carefully considering any amendments to the description, including those proposed by the EPO examiner, in particular with respect to potential added matter issues as well as their impact on claim interpretation. Although this may vary on a case by case basis, it is generally recommendable to keep substantial amendments to the description at a minimum. In case more extensive amendments are requested by the EPO examiner, actively engaging with the examiner by phone is usually a promising strategy to find a mutually acceptable solution.
