A new entry in the ongoing argument regarding description amendment at the EPO from October 2024 may finally put the matter to rest.
Decision T56/21 addresses whether Article 84 of the European Patent Convention (EPC) provides a legal basis for objecting to parts of the description which do not correspond to the subject matter of the claims, a question which became a matter of contention in March 2021.
Background
Beginning with an update to the Guidelines for Examination in March 2021, the EPO engaged in a significant change in approach to inconsistencies between the description and claims that might occur during prosecution. The Guidelines now required the description to be amended to address such inconsistencies, often requiring significant and extensive amendments to indicate (and at worst, remove) embodiments and subject matter not recited by the claims.
Many attorneys having to deal with these new amendment requirements, viewed these amendments as time consuming and risky in addition to being unnecessary. Regardless, the EPO argued that the amendments were necessary because they provide legal certainty for third parties by solidly clarifying which embodiments of the description were within the scope of protection, as well as that the amendment themselves were necessary to comply with the EPC.
Thus began a large and ongoing debate within the European patent profession, represented in a number of conflicting decisions issued by the EPO. This case law comes to a potential conclusion with 86-page decision T56/21 in which the Board of Appeal has decided not to refer questions to the Enlarged Board of Appeal and has concluded there is no legal basis for requiring description amendments during Examination.
The Decision
The Board of Appeal have concluded that “neither Article 84, nor Rules 42, 43 and 48 EPC provide a legal basis for requiring that the description be adapted to match allowable claims of more limited subject matter”.
Specifically, the Board conclude that:
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Article 69 EPC and its protocol are not concerned with assessment of patentability in examination but rather with the extent of protection in the context of national proceedings following examination and are thus not applicable in grant proceedings;
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Article 84 EPC and Rule 43 EPC are not a corollary of Article 69 EPC despite claims being the main determinant of the extent of protection. Article 84 EPC and Rule 43 EPC are to be assessed separately and independently of considerations of extent of protection during examination;
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Article 84 EPC and Rule 43 EPC set forth requirements for the claims and do not provide a legal basis for a mandatory adaptation of the description to claims of more limited subject matter;
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Rule 48 EPC is concerned with the publication of an application (specifically in the avoidance of publishing expressions contrary to public morality or order, or disparaging or irrelevant statements) and thus does not provide a ground for refusal based on “irrelevant or unnecessary” matter in the description intended for grant.
Further, although the Board had initially envisaged referring the question of legal basis of adaptation of the description to the Enlarged Board of Appeal, it was ultimately decided that such a referral was unnecessary for the following reasons:
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The interpretation of Article 84 EPC leaves no room for requiring, in examination, that the description be adapted to match the allowable claims; the purpose of Article 84 EPC for the purpose of examining European patent applications is considered, in the words of the judgement “unequivocal”;
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The reasons for the practice requiring the description to be adapted to allowable claims was not persuading; more uniform determination and better predictability of the extent of protection of the granted patent can only be achieved if the granted claims are clear in themselves;
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The lack of a provision in this regard is intentional; a requirement to adapt the description to amended claims would disregard choices made by legislators of the revisions to the EPC in 2000 and would encroach on the competence of the national courts;
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The function of claims and of the description of has been viewed differently already by Boards of Appeal in their earliest decisions; no referral is mandatory.
Conclusions
This decision takes a firm stance regarding description amendments, deciding categorically that there is no legal basis for such a requirement. However, it remains to be seen whether this decision will lead to any actual change in practice going forward.
The decision is extensive and detailed, and provides sound reasoning for its conclusions, so we can remain hopeful that it will be given consideration and perhaps lead to a change in the more distant future, if not the near-future.