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The 2022 edition of the EPO’s Guidelines for Examination will come into force on 1 March 2022. A preview of the 2022 Guidelines has been published and can be found here.
Amendments have been made to all eight parts of the Guidelines, with the aim of bringing the text into line with current practice and recent Board of Appeal and Enlarged Board of Appeal decisions.
We reported last year on a number of changes made in the 2021 Guidelines to the sections discussing adaptation of the description for conformity with the claims. These changes appeared to be requiring a more extensive revision of the description in order to bring it into conformity with the claims. In practice, we have noticed that many examiners have indeed adopted a stricter approach to amendment of the description since March 2021.
However, the new stricter approach has attracted a lot of criticism, and the EPO seems to have taken this criticism on board. In particular, the EPO held a dedicated workshop and an extraordinary meeting with the SACEPO Working Party on the Guidelines in November 2021, during which we understand that the EPO’s approach to the description was discussed in detail. The current changes in Part F, Chapter IV, 4.3 (iii) of the 2022 Guidelines, which deal with amendment of the description, have emerged from those discussions.
Overall, the changes appear to be an attempt to make the EPO’s approach less strict. For example, one passage in the 2021 Guidelines that attracted much criticism stated that embodiments in the description which are no longer covered by the independent claims must be deleted or prominently stated as not being covered by the claims. That passage is not present in the 2022 Guidelines.
Despite the aim of the changes apparently being to soften the EPO’s overall approach, the 2022 Guidelines do still require that inconsistencies between the description and the claims be addressed, either by deleting the inconsistent passage from the description or by indicating that it is not covered by the claims. Clearly this language is fairly similar in scope to the deleted text, and may well mean that the EPO’s approach does not change significantly in practice.
As to the mechanism for addressing any alleged inconsistencies, to many practitioners’ disappointment, the 2022 Guidelines do not ameliorate the overall burden of onerous description amendments. In particular, each inconsistency has to be addressed in turn with a suitable amendment. Generic statements such as "embodiments not falling under the scope of the appended claims are to be considered merely as examples suitable for understanding the invention" are not considered acceptable.
Despite the limited extent of the softening of the EPO’s approach, the 2022 Guidelines do offer some respite for applicants, stating that “[f]or borderline cases where there is doubt as to whether an embodiment is consistent with the claims, the benefit of the doubt is given to the applicant”. It is to be hoped, therefore, that examiners do indeed give applicants the benefit of the doubt more often than at present.
One point of note is that the 2022 Guidelines were finalised before decision T1989/18, in which a Board of Appeal held that there was no legal basis in the EPC to require that the description be amended for conformity with the claims. See here for further discussion of that decision. It remains to be seen whether this view is shared by other decision-making authorities at the EPO.
The EPO continues to gather user feedback on this controversial issue, and is currently conducting an online public user consultation which is open until 15 April 2022 (see here).