Video overview:
At the final stage of prosecution, the EPO increasingly insists each patent description must align with the allowed claims to improve clarity and eliminate inconsistencies. However, this strict benchmark presents risks as amendments may introduce added matter. Examiner practices vary, leading to uncertainty.
Examiners increasingly demand deletion of conflicting paragraphs or entire embodiments not covered by the allowed claims. Mishandling this stage can invite validity challenges.
Mitigation strategy: Avoid deleting content by suitable re-wording or disclaimers (e.g., "not in accordance with the claimed invention").
Best drafting practices:
- Use "examples" instead of calling all figures "embodiments."
- Clearly show how features can apply across examples.
- Include a robust Summary of Invention highlighting features independently.
Grant-stage approval of the description is critical, with risks of oral proceedings or even appeal if objections are not overcome.
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.
