Amending the description is a requirement that applicants don't need to deal with in many other countries, like the U.S., for example.
That's right. But at the EPO, towards the end of the examination proceedings, we have to adapt the description. So, this means for example we need to remove parts of the description that could imply that the scope of protection is actually broader than what is claimed. So, the typical phrases of "spirit of the invention" and also generic references to "incorporation by reference" – we need to delete those. Also, we need to cite the prior art that was found in the search by the Examiner and then discussed during the examination.
That is typically the less controversial part of the exercise. It becomes trickier when the Examiner asks you – in accordance with the current Guidelines – to remove or clearly mark subject-matter that is not covered by the claims because the claims were amended and limited during the examination phase.
Yes, that's right. That is actually much more delicate. Firstly, because the description is used to interpret the claims. And that means, if we are modifying the description, we could be meddling with the scope of protection that is conferred by the patent. Also, the description forms the basis for the assessment whether the skilled person would be able to practice the invention. So, we have to be extra careful when we delete those parts that are critical in that respect.
From an infringement perspective, marking embodiments or examples as not being covered by the claimed subject-matter is, of course, not very helpful. Just deleting the embodiment, for example, is likely to be the better option. But, as you say, you need to carefully assess what disclosure is actually important, for example under enablement considerations. What I typically try to do is to use positive language instead of excluding language: "Xyz that can be used in conjunction with the claimed method", for example.
Right, there have actually been two decisions from the Boards of Appeal - one from December 2021 and one from May 2022 - that found that there is actually no need to amend the description. So, these Boards came to the conclusion that there is no legal requirement in the European Patent Convention to do so. So, following these decisions, there would actually be no need to amend the description.
Very interesting decisions indeed, but does that mean that the practice at the European Patent Office has changed or is currently changing?
MDR: Actually not — at least not at first instance – i.e., the Examining Divisions and the Opposition Divisions. There have also been decisions from the Boards of Appeal that contradict the other two decisions and found that, actually, there is a need to adapt the description in order to comply with Art. 84 of the EPC. Also, the Guidelines have recently been updated and they still reflect the EPO's current practice. On top of that, recently, the EPO made an announcement after a user conference that they will stick with the practice that they have today.
So, unless you are willing to fight this through to the appeal stage, you probably still have to amend the description. But perhaps, we are going to see a referral to the Enlarged Board of Appeal soon aiming to clarify the issue in view of the diverging case law.
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