I recently came across an interesting blog post (link below) while browsing my Linkedin feed. The author, Martin Wilming, puts forward some interesting points regarding the requirement in Europe to bring the description into line with the claims.

European patent attorneys will be all too familiar with the EPO's recent strict application of Art 84 EPC as it relates to amending the description such that the claims are "supported by the description". In the past, once an allowable claim set had been arrived at, it was often possible to simply amend the description to replace the phrase "in an embodiment there is provided" with "disclosed herein is", when describing examples not covered by the claims. However, the EPO's current approach is to request that such examples be deleted from the description or marked as not forming part of the claimed invention. That is, under the current approach it is not enough that the subject matter of the claims appear in the description, but that everything else that is not within the scope of the claims must be either removed or marked as such. This new approach can lead to a number of problems for applicants, and can add significant cost to what was previously a relatively simply matter to deal with.

While the EPOs approach is shaped by the case law of the Boards of Appeal, it is interesting to consider what the legislator had in mind when the EPC was drafted. Art 84 EPC specifies that the claims must be clear, concise, and supported by the description. Art 84 EPC is based on Art 6 PCT, but differs in that Art 84 EPC states that the claims "shall be clear and concise and be supported by the description", whereas Art 6 PCT states that "claims shall be clear and concise. They shall be fully supported by the description."

What I found particularly interesting, highlighted in the blog post, is that when the EPC was being drafted there was some discussion as to whether to remove/replace the word "fully", as used in Art 6 PCT. In particular, thought was given as to whether to use "less restrictive wording" than "fully supported". In the end, the word "fully" was not included in Art 84 EPC.

Removal of the word "fully" does appear to indicate that it was never the intention of the legislator that Art 84 EPC would be interpreted in the relatively restrictive way currently adopted by the EPO.

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