It is long-standing practice for examining divisions at the
European Patent Office to require the description of a patent
application to be amended into conformity with the allowable claims
prior to grant.
However, in 2021, the patent office's guidelines for
examination were updated to make this requirement more stringent.
The issue of description amendment has been a hot topic ever
since.
This is because of applicants' and attorneys' general
aversion to substantial amendment to the description due to the
additional cost and potentially harmful postgrant implications, as
well as Technical Board of Appeal disagreement over whether there
is a legal basis in the European Patent Convention, or EPC, for
requiring such amendments.
Against this background, the Technical Board of Appeal in case T
56/21 indicated, in July 2023, that it was minded to refer the
matter to the enlarged board of appeal to provide a definitive
answer.
However, in a surprise reversal, this 56/21 board issued a lengthy
and detailed decision on Oct. 4, 2024, without a referral, in which
it held that there is unequivocally no legal basis in the EPC for
requiring pregrant description amendments. This article reviews
that decision and its implications.
Background
Description amendments have been a feature of European Patent
Office practice for many years. But in March 2021, the guidelines
became much more prescriptive on the extent to which a description
should be amended.
The current guidelines specify that any inconsistencies between the
claims and the description must be removed, either by deleting the
inconsistent embodiment or explicitly marking it as not falling
within the scope of the claims.
This often entails substantial amendment to the description in ways
that are uncomfortable for applicants, for example, by explicitly
marking embodiments as not in accordance with the invention, or
similar.
Such extensive amendment to the description may negatively affect
how a granted claim is interpreted in national infringement
proceedings. In particular, a number of European Patent Office
member states apply a doctrine of equivalents, under which
something that does not fall within the literal meaning of the
claims may still infringe if it is considered to be an
equivalent.1
However, a successful finding of infringement by equivalents may be
less likely if embodiments have been explicitly characterized as
not according to the invention.
Additionally, preparing extensively amended descriptions can be
costly and fraught with difficulty, and the practice can cause
problems for corresponding applications and patents in other
jurisdictions. For instance, courts in jurisdictions such as the
U.S. may rely on file histories from foreign prosecution when
considering corresponding national applications in
litigation.
Therefore, the current European Patent Office approach generally
has not been popular with applicants and attorneys.
Crucially, the guidelines do not constitute a legal basis in their
own right. The fraught issue of whether the EPC provides the legal
basis for requiring description amendments has been considered in a
number of Technical Board of Appeal decisions since the 2021
guidelines were issued, with various technical boards disagreeing
on the matter.2 Thus, an unsatisfactory legal
uncertainty has prevailed in recent years.
T 56/21
During the prosecution of the application under appeal in T
56/21, the applicant, F. Hoffmann-La Roche AG, refused to delete
claimlike clauses from the description, which the current
guidelines require. The examining division refused the application
on this basis, and the applicant appealed the decision.
In July 2023, the Technical Board of Appeal in T 56/21 indicated
that it was considering referring a question to the enlarged board
of appeal on whether the EPC — in particular Article 84 EPC,
which sets out clarity requirements — provides the legal
basis for amendment to the description, leading to much
anticipation that the matter would finally be resolved.
However, this board unexpectedly issued its decision on Oct. 4,
2024, without a referral. In an apparent reversal, this board
explained in its decision that it does not consider a referral to
be necessary, and set out in detail why it does not consider the
EPC to provide the legal basis for requiring description
amendments.
Decisions favoring the requirement for description amendments have
pointed to different sources in the EPC as the legal basis for this
requirement. The board in T 56/21 dealt with each of these in turn,
and found that none provided the legal basis for requiring
amendment to the description.
Article 84 of the EPC
Article 84 of the EPC stipulates that the claims shall define
the subject matter for which protection is sought, be clear and
concise, and be supported by the description.
Both the requirements of clarity and support referenced in Article
84 have been identified as providing a legal basis for requiring
description amendments, and it is under Article 84 that the
guidelines discuss amendment to the description.
The T 56/21 board began its assessment of Article 84 of the EPC by
setting out the article's purpose, which it considered to be to
define the matter for which protection is sought.
It characterized the claims as "precise statements of what is
sought to be protected in terms of distinctive technical
features."3 The Technical Board of Appeal concluded
that Article 84 sets out requirements for the claims, and does not
provide any legal requirement for the description to be adapted to
reflect a more limited claim scope.
Article 69(1) of the EPC
Article 69 of the EPC defines the extent of protection conferred
by a European patent. It stipulates that the scope of protection
conferred shall be determined by the claims, but that the
description and drawings shall nevertheless be used to interpret
the claims.
Some Technical Board of Appeal decisions favoring mandatory
amendments to the description have reasoned that Article 69(1), in
conjunction with Article 84, sets out a requirement for the
description to be amended to be consistent with the claims.
These decisions have reasoned that because the description is used
to interpret the claims, the description cannot be inconsistent
with the claims.4 Noting that the claims do not stand
alone and that the patent should be interpreted as a
whole,5 the extent of protection that is interpreted in
line with Article 69 can only be determined precisely when the
description is consistent with the claims.
The board in T 56/21 took an alternative view, consistent with
other decisions.6 It did not consider Article 69 of the
EPC to relate to the assessment of patentability before the
European Patent Office.
Instead, it considered Article 69(1) of the EPC to be a postgrant
consideration of whether a potentially infringing subject matter
falls within the scope of the claims of a granted patent.
Therefore, it concluded that Article 69 was not relevant for grant
proceedings before the European Patent Office, so it could not
provide the legal basis for requiring pregrant description
amendments.
The Technical Board of Appeal acknowledged that prior decisions may
have attempted to reduce variability in the determination of the
extent of the protection a patent confers by national courts under
the EPC's Article 69(1) by requiring pregrant description
amendments. However, this board did not consider this to be within
the competence of the European Patent Office.
Rule 42(1) of the EPC
Rule 42(1)(c) of the EPC stipulates that the description shall
disclose the claimed invention in a manner such that the technical
problem and its solution can be understood, and that the
description shall state any advantageous effects of the invention
with reference to the background art.
The Technical Board of Appeal did not consider this to establish
any legal basis to require broad amendments to the
description.7 This board noted that this rule is very
specific and provides defined, limited information that must be set
out in the description.
Rule 48(1)(c) of the EPC
Rule 48 of the EPC sets out certain prohibited matters that
should not be present in a European patent application. Rule
48(1)(c) specifies that an application shall not contain any
statement or other matter obviously irrelevant or unnecessary under
the circumstances.
Some favoring by a Technical Board of Appeal of mandatory
amendments to the description have also reasoned that Rule 48(1)(c)
of the EPC provides the legal basis to require the description to
be amended to be consistent with the claims.8
However, the board in T 56/21 reviewed other decisions9
assessing Rule 48 EPC as a whole, the corresponding Patent
Cooperation Treaty legislation — Article 21(6) and Rule 9 of
the treaty — and the minutes of the diplomatic conference for
the setting up of the EPC, and concluded that Rule 48 EPC is
intended only to avoid expressions that are contrary to public
morality or public order, or certain disparaging or irrelevant
statements.10
The board in T 56/21 concluded that Rule 48(1)(c) EPC does not
provide a ground for refusal of an application at all, let alone
due to alleged discrepancies between the claims and the
description.
Reasons for No Referral
The T 56/21 appeal board also set out its reasoning for not
proceeding with a referral to the enlarged board of appeal. In
relation to Article 84 of the EPC, this board concluded that the
requirements of Article 84 are unequivocal and that the wording of
Article 84 does not leave any room for requiring the description to
be adapted to match the claimed subject matter.
Similarly, it considered it to be settled that Article 69 of the
EPC was not directed to pregrant matters, so it could not be
interpreted as providing the legal basis for description
amendments.
The Technical Board of Appeal also noted that its interpretation of
Article 84 of the EPC was consistent with the interpretation and
explanation of Articles 84, 69, and 123 of the EPC in prior
decisions and opinions of the enlarged board of appeal.
Regarding apparently divergent decisions, the Technical Board of
Appeal considered this to represent an evolution of practice,
rather than true divergence.
Therefore, it did not consider a referral to the enlarged board of
appeal to be necessary.
However, the Technical Board of Appeal's reasoning for
nonreferral is questionable. It is arguably irrelevant whether this
particular board considers the lack of legal basis to be
unequivocal; the salient point is whether there is disagreement
between different boards.
On this point, claims by a Technical Board of Appeal that the case
law is merely evolving is unconvincing in view of the mounting pile
of conflicting decisions on this issue. Regarding the reasoning
being consistent with the previous interpretation of the relevant
articles by the enlarged board of appeal, this appears to miss the
point that it is the application of the EPC to the specific issue
of amendment to the description where there is apparent
disagreement, and this has not been directly considered by the
enlarged board of appeal.
The lack of a referral therefore appears to be a missed opportunity
to provide much-needed legal certainty on this issue.
Conclusions
Although T 56/21 sets out in detail that the Technical Board of
Appeals considers there to be no legal basis for requiring
description amendments, it is only binding on the examining
division that issued the decision under the appeal.
Examining divisions are required to follow the guidelines, not
Technical Board of Appeal decisions, so it is anticipated that
examining divisions will continue to apply a strict approach to
pregrant description amendments unless the guidelines are
updated.11
The European Patent Office provides a yearly update to the
guidelines each March, and it remains to be seen whether the 2025
update will reflect this latest Technical Board of Appeal
decision.
It is notable that the Technical Board of Appeal in T 56/21 was the
same board that issued the first decision12 disagreeing
with the practice of mandatory description amendments following the
updated 2021 guidelines.
Therefore, although the reasoning in T 56/21 is extremely detailed,
the European Patent Office may consider T 56/21 to merely represent
the latest banging of the drum by a dissenting board rather than a
significant addition to the weight of contrary decisions.
Legal uncertainty on this issue therefore continues to subsist, and
the issue seems far from resolved.
Practice Points
Nevertheless, T 56/21 may be a useful case to cite when
resisting description amendments proposed by examining divisions.
However, the likelihood of success will depend on the attitude of
the examining division in question, and chances may be low.
It is also important to note that the applicant has a right to
amend the description of its own volition. In many instances, it
will remain best practice to continue to amend the description to
at least some extent.
For example, there is case law in at least Germany13 and
the U.K.14 that indicates that alternatives that are
disclosed but not claimed do not fall within the scope of the
claims, even as an equivalent.
Therefore, in instances where claims are limited to one of a number
of alternatives, it may still be advisable to delete the
alternatives that are not claimed but could be considered
infringing equivalents.
Footnotes
1 Including the U.K., France, Germany, the Netherlands, and more recently the Unified Patent Court.
2 See, for example, T 1989/18, T 1444/20, T 2194/19, T 1024/18, T 2766/17, T 3097/19.
3 G 1/93.
4 T 3097/19.
5 T 556/02, T 1871/09, T 1871/14.
6 T 1989/18.
7 See also T 2194/19.
8 T 544/88, T 329/89, T 1903/06, T 853/91, and T 443/11.
9 E.g., T 1989/18.
10 Minutes of the proceedings of Main Committee I of the Munich Diplomatic Conference for the setting up of a European System for the Grant of Patents, document M/PR/I, No. 2225 to 2236.
11 EPO Guidelines for Examination, H-V, 2.7.
12 T 1989/18.
13 Case X ZR 16/09 – Okklusionsvorrichtung (Occlusion Device).
14 Shenzhen Carku Technology v The NOCO Company [2022] EWHC 2034 (Pat).
Originally published by Law360, 13 January 2025
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