Jubilation may be the first emotion experienced by European patent attorneys when a hard-fought R71(3) communication arrives indicating that their client's patent application is soon to be granted. But in recent months, this feeling has been tainted by the burdensome question: to what extent must the description now be amended to meet the EPO's requirement of being “in line with the allowed claims”. Not only are these amendments usually painstaking to do, but there are also concerns amongst European patent attorneys about the implications of these last-minute changes to the description for claim interpretation after grant (Article 69 EPC) and added matter (Article 123(2) EPC).
While the EPO requirement to amend the description in line with the claims has long existed, last year's amendments to the EPO's Guidelines for Examination indicated that Examiners would be taking a much stricter approach going forward. Since then, applicants have been asked to make more significant changes to the description at the Rule 71(3) stage, including choosing between deleting entire embodiments or explicitly disclaiming them.
Inevitably, this stricter approach has once again put the legal basis for this requirement in the limelight. The European Patent Convention (EPC) specifies that the claims should be “supported by the description” (Article 84 EPC), but legal basis for stripping the description of anything not covered by the allowed claims is somewhat harder to find.
The Board of Appeal addressed this issue in a recent appeal case, T 1989/18. The appeal related to an application in which the claims had been found allowable, but the application had been refused because the description included subject-matter that was broader than the subject-matter of the claims. The Examining Division provided Article 84 EPC as the legal basis for the refusal.
The Board of Appeal found that Article 84 EPC could not serve as legal basis for the refusal. In coming to this decision, the Board made the following, perhaps more widely applicable, conclusions:
- Under Article 84 EPC, the claims must be clear in themselves;
- Under Article 84 EPC, the subject-matter of the claim must be in the description; but
- The clarity of the claims is not affected if the description contains subject-matter which is not claimed.
The Board of Appeal also considered Article 69 EPC, Rule 42(1)(c) EPC and Rule 48(1)(c) EPC and found that these did not provide legal basis for requiring the applicant, as a general rule, to bring the description in line with claims intended for grant, or for requiring the removal of passages of the description that disclose embodiments which are not claimed.
Earlier this month, the EPO published an advance preview of the annual update to the Guidelines that will come into effect in March 2022. While the Guidelines do appear to soften the requirement a little, they still state that:
- According to Art. 84 EPC, second sentence, the claims must be supported by the description;
- This means that there must not be inconsistency between the claims and the description; and therefore
- The applicant must remove any inconsistencies by amending the description either by deleting the inconsistent embodiments or marking them as not falling within the subject-matter for which protection is sought.
It is likely that this year's updates to the Guidelines were finalised before the T 1989/18 decision was published, and indeed there is no mention of it in the updated version. It therefore remains to be seen what influence T 1989/18 might have on the EPO's approach to description amendments. In the meantime, European patent attorneys will continue to hold their collective breath.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.