Description amendments at the EPO
The beginning of the end?
Practice at the European Patent Office (EPO) currently requires that, before an application is granted, the description must be brought into line with the allowed claims. Doing this can be time-consuming and may involve making difficult choices about what amendments are required and how they should be made. EPO examiners, who are required to follow their Guidelines for Examination, can be strict in applying this requirement, typically allowing no room for ambiguity between what is defined in the claims and what is described in the rest of the application. If, for example, something in the application is described as an “embodiment”, current practice will tend to require this to be within the scope of the claims. Otherwise, the description of the embodiment may need to be deleted or mentioned as being not according to the invention. The nature of drafting patent applications, however, means that often there may be some doubt about what is described as an embodiment being within the claims, especially if the claims have been amended to obtain allowance.
There have been strong disagreements about the legal basis for the requirement of conforming the description to the claims. The current Guidelines for Examination states: “Any inconsistency between the description and claims must be avoided if it could throw doubt on the subject-matter for which protection is sought” (F-IV 4.3). Justification for this is claimed to be from Article 84 EPC, which states that the claims of an application “shall be clear and concise and be supported by the description”. Many, however, have questioned whether this requirement for support justifies a requirement for conformity.
A common feature in patent drafting is to include a section in the description in which a number of claim-like clauses are set out, the intention of which is to provide basis for amendments that might be made later, including after grant. Such clauses are specifically identified for deletion in the Guidelines, based on the reasoning that leaving them in the application would “lead to unclarity [sic] on the subject-matter for which protection is sought” (F-IV 4.4). This specific practice has now been put to the test by an applicant who, during examination, objected to deleting a set of claim-like clauses in an otherwise allowable application. The application was then refused for the sole reason that Article 84 EPC was not complied with. The applicant appealed this decision, which has now resulted in a recently published decision T 56/21 on the question of whether such amendments are actually required.
In their appeal, the applicant argued that the Guidelines were not correct in stating that amendments to the description to conform to the claims were required, indicating that there was no legal basis for this. The Board of Appeal, however, took the view that it was not their job to criticise the Guidelines but instead to consider whether there was any justification for the practice from the law itself. The Board stated:
“The question to be addressed is that of whether Article 84 EPC provides a legal basis for objecting to an inconsistency between what is disclosed as the invention in the description (and/or drawings, if any) and the subject-matter of the claims, the inconsistency being that the description (or any drawing) contains subject-matter which is not claimed, and for requiring removal of this inconsistency by way of amendment of the description (hereinafter: “adaptation of the description“). If so, an application could be refused if the applicant did not amend the description accordingly, or did not agree to an amendment of the description proposed by an examining division” (point 2 of the Reasons for the Decision, emphasis in the original).
The question to be addressed was therefore a broader one than whether claim-like clauses would need to be deleted, and instead related to whether the description should need to be amended at all if there were any inconsistencies with the claims. The Board also referred to Article 69 EPC, which had been used as a further justification for removing any inconsistencies. This provision, which defines the extent of protection of a European patent or application, was considered by the Board to be separate from the assessment of patentability and intended to be used by national courts in infringement proceedings rather than for assessing patentability. The question was therefore limited only to whether Article 84 EPC provided any justification for removing inconsistencies between the description and claims. The purpose of Article 84 EPC, in the Board’s view, was to ensure that there was a clear definition of the subject-matter in the claims in terms of technical features of the invention to allow examination for patentability. Claims should be clear from their wording alone, so clarity of the claims of an application should, in the Board’s view, be key in examination. If the description were to be used to interpret the meaning of the claims this could, the Board suggested, lead to broad claims being granted based on a narrower interpretation from the description, which would lead to diverging decisions after grant.
On the key question of description amendments, the Board considered that the ordinary meaning of the words of Article 84 EPC (“The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description“) did not support a requirement to bring the description into agreement with the claims by deleting or disclaiming subject-matter in the description which is not claimed. Some previous decisions from the Boards of Appeal had decided questions of whether a claimed invention was supported by the description, but these related to whether broad claims should be brought into line with the disclosure by limiting the claims. Other decisions related to bringing the description into conformity with the claims but, in the Board’s view, these misconstrued the relationship between Articles 84 and 69 EPC as well as the relationship between the claims and the description. Given that the two provisions should be applied independently in separate situations, with Article 84 before grant and Article 69 after, the Board concluded that there was no rationale for adapting the description to match the subject-matter claims. Matching the description to unclear claims would fail to provide legal certainty, while adapting the description to clear claims would likewise fail to improve legal certainty. The attempts by the EPO and some previous Boards of Appeal may have been aimed at reducing variability in the extent of protection of granted patents, but in the Board’s view this encroached on the competence of the national courts and legislators.
In conclusion, the Board decided that Article 84 EPC did not provide a legal basis for a mandatory adaptation of the description to claims of a more limited subject-matter. While the Board had initially envisaged referring a question to the Enlarged Board, in the end they considered that there was no need for this because the requirements of Article 84 EPC for the purpose of examination were unequivocal. The wording left no room for requiring, in examination, that the description be adapted to allowable claims to match their subject-matter. The Board was also not persuaded by the EPO’s reasons for requiring the description to be adapted to allowable claims, which were to provide a more uniform determination and better predictability of the extent of protection of granted patents. The Board considered that this could only be achieved if the granted claims were clear in themselves. Adapting the content of the description to match the subject-matter of allowable claims would reduce the reservoir of technical information that could be used in national courts to determine the protection conferred by the granted patent. The Board therefore allowed the appeal and ordered the Examining Division to grant a patent on the basis of the specification with the claim-like clauses intact.
While the reasoning behind this decision is complex and lengthy the conclusion is clear, which is that there is no legal basis for requiring applicants to amend the description during examination to match allowed claims. The decision flatly contradicts current practice at the EPO, as defined by the current Guidelines for Examination. It should therefore be expected that there will be a period of uncertainty before any changes are made to practice at the EPO. From the perspective of many applicants and their representatives, however, the decision is a welcome sign of things moving in the right direction.
For any advice on how to manage issues relating to description amendments at the EPO, please contact your usual Barker Brettell attorney or the author of this article.
