EPO Board of Appeal Finds “No Legal Basis” for Requirement to Adapt the Description to Conform to the Claims
As applicants and representatives will be well-aware, the EPO has, for a very long time, required that the description of a patent application be amended prior to grant to ensure that it "conforms" to the allowed claims. Traditionally such amendments took the form of amending the "summary of the invention" or similar introductory portion of the application to recite the wording of the allowed independent claims, or to make explicit reference to those claims. Such amendments, whilst occasionally tedious, became an accepted part of practice at the EPO and had no noticeable impact on the scope of protection.
However, in the past year or so, we have seen a significant "tightening-up" of the EPO's approach to description amendments which has become, in many cases, extremely burdensome and raised concerns about the interpretation of the resulting granted patents. This process started with the issuance of internal guidance to EPO examiners regarding the amendments, that guidance being largely codified in the 2021 edition of the EPO's Guidelines for Examination as reported here. Most relevantly, the Guidelines specified that embodiments which do not fall under the scope of the claims should be deleted or "prominently stated" as not being covered by the claims. The revised Guidelines also indicated that it was "not sufficient to use 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" without indicating which parts of the description are no longer covered" and that "merely changing the wording "invention" to "disclosure" and/or the wording "embodiment" to "example", "aspect" or similar is not sufficient … it has to be explicitly specified that this part of the description does not describe part of the claimed invention."
These revised requirements have been widely criticised by both applicants and representatives; they often add a considerable burden in time and cost revising the description at the grant stage (and/or checking examiner-proposed amendments) and applicants have raised concerns about the effect on the scope of protection. In particular, given the requirement for courts to take account of "equivalents" when interpreting claims, statements that embodiments are "not covered by the claims/invention" (because they do not fall within the literal scope of the claims) seem likely to make it problematic to argue that that embodiment can be considered an "equivalent". These and other concerns were the basis of our recent webinar on this topic.
Moreover, the approach of EPO examiners on this issue has, in our experience, been highly variable. Whilst many have been satisfied with a slightly more substantial application of the previous approach, several have insisted on extensive re-writing of the detailed description and liberal insertion of the wording "not according to the present invention" or similar. In many cases these amendments have failed to appreciate that, for example, alternatives to features specified in dependent claims still fall within the scope of the invention. As a result, applicants have been forced to not only check these amendments extremely carefully, but in many cases have ended up rejecting the text proposed for grant in order to correct errors in the examiner-proposed amendments.
Appeal decision in T1989/18
Against this background the recent decision of the EPO Board of Appeal in case T1989/18 is of considerable interest. Despite the appealed decision pre-dating the recent developments in this area, the board in this decision was asked to consider the legality of an examining division's refusal of an application in which the claims had been found to be allowable, but the applicant refused to amend the description as required by the examining division. Specifically, the application was refused under Art. 84 EPC because the examining division considered that sections of the description "related to subject-matter which was broader than the subject-matter of [independent] claim 17".
Perhaps surprisingly, the only one of the applicant's description amendments which the board considered problematic was the "standard" addition of the statement that "The invention is defined by the claims", which was considered to introduce ambiguity. The board requested that the applicant remove this statement.
In reaching its decision that this revised version of the description filed by the applicant complied with the EPC (including Art. 84), the board reviewed a wide range of legal provisions in the EPC that it considered might give rise to a requirement for consistency between the description and the claims. These were: Art. 84 EPC, Art. 69 EPC (scope of protection), Rule 42(1)(c) EPC (content of the description) and Rule 48(1)(c) EPC (prohibited matter).
Having reviewed all of these provisions, the board stated that it "fails to see how the aforementioned provisions of the EPC, or any others, can lead to the requirement that embodiments disclosed in the description of an application which are of a more general nature than the subject-matter of a given independent claim must constitute potential subject-matter of a claim dependent on that independent claim." The board therefore concluded that the applicant's claims and description complied with the requirements of the EPC and remitted the application to the examining division with an order to grant a patent in that form.
Notably, in relation to Art. 84 EPC, which is the legal basis cited most often by examiners as requiring amendments to the description to ensure conformity with the amended claims, the board noted that Art. 84 EPC does not impose a requirement of "clarity" on the description. Rather, they indicated that "if the claims are clear in themselves and supported by the description, their clarity is not affected if the description contains subject-matter which is not claimed."
The future for description amendments at the EPO?
The next revision of the Guidelines is due in March 2022 and it was widely anticipated that these would contain more extensive provisions on the requirements to revise the description, as previewed by an EPO post in November 2021. According to the latter, the draft text for the Guidelines would "reflect users' requirements with a view to legal certainty in the post-grant stage … while considering the legal provisions and established case law of the Boards of Appeal. The Office will implement a harmonised approach throughout the examining and opposition divisions."
However, unless this "harmonised approach" was to be a substantive abandonment of the requirement to amend the description to conform to the allowed claims (which seems highly unlikely), the revisions may need to be rapidly revisited in light of T1989/18, which is sure to be cited by applicants wanting to push back against examiner-proposed description amendments. We await further developments on this.