In a recent communication dated 21st July 2023, an EPO Technical Board of Appeal considering appeal number T 56/21 has suggested that a question be referred to the EPO Enlarged Board of Appeal on whether there is any legal basis for the requirement to amend the description for conformity with the claims. We expect this case to be watched closely, since the outcome could affect nearly every pending application at the EPO.

Background

For many years in EPO practice, it has been necessary to amend the description to demark or delete statements which do not fall within the scope of the allowed claims. This is commonly where an application covers multiple inventions, or is filed with broad claims and allowed with narrow claims.

In recent years, this long-established practice has come under scrutiny, firstly from patent attorneys who have found examiners to have become stricter after a revision of the EPO Guidelines in 2021, and secondly by EPO Boards of Appeal who have queried the legal basis for requiring any amendments under Article 84 EPC, e.g. in decision T 1989/18.

Likely referral

Appeal number T 56/21 lies from an Examining Division’s decision to refuse a pending application under Article 84 EPC, on the basis that the description had not been amended for conformity with the allowed claims.

The applicant filed an appeal, and in a recent communication the Board has suggested that the following question be referred to the Enlarged Board of Appeal:

“Is there a lack of clarity of a claim or a lack of support of a claim by the description within the meaning of Article 84 EPC if a part of the disclosure of the invention in the description and/or drawings of an application (e.g. an embodiment of the invention, an example or a claim-like clause) is not encompassed by the subject-matter for which protection is sought (“inconsistency in scope between the description and/or drawings and the claims”) and can an application consequently be refused based on Article 84 EPC if the applicant does not remove the inconsistency in scope between the description and/or drawings and the claims by way of amendment of the description (“adaptation of the description”)?”

It is not yet certain that any question will be referred: at this stage the Board is simply suggesting a referral, and has given the applicant until October 2023 to file observations on whether a referral is warranted, noting the likely delay to grant of the application concerned[1]. However, the applicant may choose to accept the delay and agree to a referral, e.g. if the application is a “test case”.

If the above question is referred, it may affect almost all pending applications at the EPO which are nearing grant, for example, if applicants may see an opportunity to seek a stay in examination pending the outcome of the referral, rather than amending the description.

Comments from the Board

The Board’s 21-page communication provides legal background and the Board’s views, laying the groundwork for a referral. A full appraisal is beyond the scope of this short newsflash, but in summary, the Board acknowledges the EPO’s longstanding convention for requiring description amendments in the interests of legal certainty[2], and acceptance of this convention by the Boards, but notes diverging recent case law. The Board seems sceptical of any legal basis for requiring applicants to amend the description for conformity with the claims, particularly under Article 84 EPC.

In particular, the Board seems to reject Article 84 EPC – the typical provision under which description amendments are mandated[3] – noting that that Article 84 EPC sets out requirements for the claims[4], and not the description. After exploration of the legislative history of the EPC, the Board queries whether Article 84 EPC was ever intended to require an amended description[5].

The Board also seems to reject Article 69 EPC (the provision defining the extent of protection under European practice), noting that this provision sets out considerations for national courts in infringement proceedings, post-grant, rather conditions for a patent to be granted. The Board opines that it is not the EPO’s role to harmonise the extent of protection conferred by patents in the EPC states by mandating description amendments[6].

Next steps

The prospect of a referral to the Enlarged Board may bring welcome certainty to this area, and indeed many applicants may welcome the end of the requirement to amend the description for conformity with the claims. The exercise can be taxing, and deleting embodiments which are not claimed can provoke concerns in relation to Doctrine of Equivalents arguments (as discussed in our recent article here).

Footnotes

[1] T 56/21, communication of 21st July 2023, 1.5.

[2] T 56/21, communication of 21st July 2023, 2.4.1(f).

[3] T 56/21, communication of 21st July 2023, 1.1.

[4] T 56/21, communication of 21st July 2023, 2.2.

[5] T 56/21, communication of 21st July 2023, 2.3.

[6] T 56/21, communication of 21st July 2023, 3.2.3.