Curtains for the “amended description”?
18
Oct
2024
No referral to the EPO Enlarged Board of Appeal on the question of “amended descriptions” for now, but a detailed decision holding that there is no legal basis for mandating this practice

This article reports on a surprise decision T56/21, in which an EPO Board of Appeal has, despite widespread expectations, decided not to refer questions to the EPO Enlarged Board of Appeal regarding whether there is legal basis for mandating “amended descriptions” at the EPO (in sense of amendments to conform the description to the claims). Despite the absence of a referral, the decision is notable for its long and detailed rationale and conclusion that there is no legal basis for mandating description amendments during EPO examination, against decades of established practice.

The decision includes further comments on claim interpretation which, if followed, could have wider implications. This article briefly summarises the decision with a focus on potential immediate and long-term impacts on practice.

Background and decision

The process of amending the description before grant is a peculiarity of EPO practice which touches almost every pending application – according to EPO statistics, 93% of European applications have claims amended before grant, and many descriptions are amended again at the end of opposition proceedings. This practice has been well-established for decades, but is a source of frustration for some applicants, particularly after strict EPO Guidelines were issued in 2021.

The question of whether there is any legal basis for the requirement has come under scrutiny in recent years, with some Board of Appeal decisions questioning the legal basis, and the Board in the present case T56/21 suggesting that it would refer the question to the Enlarged Board of Appeal, in what may have been a “test case” for the patent applicant (see our previous article, ‘Potential referral to the EPO Enlarged Board on description amendments’, 25th July 2023).

T56/21 has concluded without a referral, but with an 86-page decision concluding that there is neither legal basis in the most commonly cited legal provisions, nor specific policy reasons, for mandating this practice. It is beyond the scope of this article to report all of the Board’s reasoning, but briefly:

a) The Board rejected the idea that amended descriptions should serve Article 69(1) EPC and the Protocol on the Interpretation of Article 69 EPC, which the Board viewed to be provisions for determining the extent of protection before the courts (e.g. in infringement proceedings) and having no applicability in examination proceedings. In the Board’s words: “Applying the guidance of the Protocol in grant proceedings would amount to putting the cart before the horse”.

b) On Article 84 EPC (and Rule 43 EPC), the Board essentially held that this provision applies only to the claims, which must be clear, but not to an extent which ensures a particular interpretation post-grant. The Board queries whether description amendments can rectify lack of clarity in the claims, although it did acknowledge that a discrepancy arising from conflicting definitions between the description and the claims may need to be amended.

c) On policy considerations, the Board acknowledged that in an “ideal‑world situation”, claim interpretation would be harmonized across patentability proceedings before the EPO and the courts handling infringement proceedings. However, the Board suggested that adapting the description was not the correct mechanism to achieve this, and in doing so the EPO may have “unwarranted consequences in post-grant proceedings” and even stray into the territory of national courts. As an interesting aside, the Board suggested that a single patent court for infringement, similar to the UPC but covering all Contracting States, would have been a more effective measure to achieve uniformity in claim interpretation.

Practical impact: do we still need to amend the description?

It is difficult to predict how the various tiers at the EPO will react, but we expect the practice of amended descriptions to continue for now. This decision might nevertheless be another step towards change, for instance, if it is followed by other Boards, or eventually results in a referral.

During examination, examiners may continue to follow the Guidelines for Examination which require removal of most “inconsistencies between the description and the claims”. EPO policy in 2023 stated that this practice should continue until there is a referral, so it seems that the Guidelines will unlikely be changed on the basis of T56/21. Pragmatic applicants may therefore continue amending the description to streamline the route to grant (T56/21 itself mentions the freedom to amend descriptions voluntarily).

During opposition, the Opposition Divisions – being made up of examiners – may follow the Guidelines in broadly the same way, perhaps with some exceptions. Some statements in T56/21 limit its applicability in opposition too.

During appeal proceedings, we may see more impact. For example, some Boards might now feel able to close appeal proceedings without remitting cases back to the lower instance for description amendments, which could reduce the length of formal opposition proceedings by 1-2 years.

Broader implications on claim interpretation?

The remarks in the T56/21 decision cover many aspects of claim interpretation beyond description amendments, a detailed review of which is beyond the scope of this article. For instance, the decision suggests that the description should not redefine the claims in opposition proceedings: “Claims would lose their proper functions if their subject‑matter could be redefined by way of giving a feature in a claim a meaning which conforms with the description but departs from how the feature is to be understood objectively […]”, and that infringement issues should essentially be put aside during examination – while Board acknowledges that national courts and the UPC may aim for a “uniform determination” of claim scope for patentability and infringement purposes (citing, for example, the UPC Court of Appeal in 10x Genomics v Nanostring), the decision holds that that the function of examination proceedings is not to enable this uniform determination. As emphasised by the Board: “It is therefore questionable whether the presumed purpose of a uniform determination of the subject‑matter of claims for the purpose of deciding on patentability and infringement can be achieved when examining a patent application”.

In any event, with Enlarged Board of Appeal decision G1/24 on the horizon, any impact of T56/21 on the law on claim interpretation may be short-lived (see report of referral G1/24 here and further briefing note on claim interpretation here). The Enlarged Board of Appeal is not bound by T56/21, and may overrule it, but either way, it will be interesting to see the Enlarged Board of Appeal’s views on T56/21. There may be more surprises on the way in this saga – will the Enlarged Board weigh in on the description amendment question in G1/24?