Boards of Appeal Diverge in Requiring Changes to Descriptions

Author: Harry O'Brien
IP News

A requirement of the EPO Guidelines for Examination (H-V, 2.7 and F-IV, 4.3(iii)) is that the description of a patent must be in conformity with the claims. During prosecution of an application, it is usual practice for the applicant to request that changes to the description only be made once the examiner has agreed to an allowed set of claims. At this juncture, it has been known that whilst some examiners can be more relaxed about the above requirement, others can be stricter, requiring substantial changes such as deletion of embodiments not specifically embraced by the claims.

Understandably, applicants are not always willing to make these substantial changes (although few applicants will risk refusal of an application for this reason). In particular, national courts will use the description to construe claims in infringement proceedings, so deletion of embodiments is not desirable. Also, it is seen as unfair for applicants to be burdened with the associated time cost to put the changes into place.

These requirements were strengthened with the implementation of the 2021 Guidelines for Examination. However, the Guidelines are not legally binding, serving instead as a guide to the practice and procedure followed at the EPO. Whether there is indeed legal basis for requiring changes to the description was recently the subject of two diverging decisions from the Boards of Appeal.

The first Board of Appeal decision (T 1989/18), published in December 2021, centred on an application refused by the examiner for the sole reason that the description had not been amended in line with the allowed claims; the examiner having required significant changes as the description set out subject matter that was broader than the claimed subject matter. On appeal, the applicant argued that there was no legal basis in the European Patent Convention for deletion of parts of the description not embraced by the claims.

Considering the case, the Board of Appeal agreed with the applicant, finding no basis in Article 84 EPC, which states:

“The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description.”

The Board concluded that this meant claims should be supported only to the extent that claims can only define subject matter that is present in the description. No legal basis for requiring that the description must be in conformity with the claims was found elsewhere in the EPC, nor in the Implementing Regulations. The appealed decision was thus set aside.

However, a second Board of Appeal decision (T 1024/18) followed shortly after and concerned a granted patent, the claims of which had been amended during appeal proceedings. The patentee failed to file an amended description in line with the new claims, so the Board revoked the patent. Contrary to T 1989/18, the Board found that there was indeed legal basis in Article 84 EPC to require the description to be amended, concluding that providing support for the claims in e.g., a single passage only, whilst the rest of the description could describe a different or even contrary meaning, would go against the phrase “supported by the description”.

Even in the face of the decision of T 1989/18, it appears the EPO intends to keep to the status quo, with the 2022 Guidelines for Examination maintaining the stricter requirement of the 2021 Guidelines. However, applicants now perhaps at least have some case law to fall back on when substantial changes are requested. However, with opposing case law in place, there is a chance that this issue could one day require a decision being made by the Enlarged Board of Appeal to settle the matter.

For the time being, applicants can approach amendment of the descriptions of their applications in several ways. Recently, examiners have appeared to be more willing to make changes themselves, rather than issuing a further examination report requiring action from the applicant. This can be a cost-effective measure, although carries a risk that the examiner will make unwanted changes, and therefore all changes need to be carefully checked before the text for grant is approved. Alternatively, applicants can opt to make changes to the description early during prosecution, giving them more control over the content of the specification.

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