Recently, the EPO board of appeal issued a decision in T0056/21 confirming that there is no legal basis for making amendments to the description in order to bring it into line with the allowed set of claims.
Background
This issue began when the EPO issued new Guidelines in 2021, tightening the requirements for description amendments. According to those guidelines, the applicant must amend the description when a claim set is deemed allowed to either delete the subject matter not covered by the allowable claims, or explicitly state that such subject matter is not part of the invention.
The main idea behind this requirement was to avoid inconsistencies between the description and the claims, which could cast doubt on the subject-matter for which protection is sought. However, this process is not only time-consuming and hence costly, but there are also potential risks of irretrievably adding matter and limiting protection due to its influence on the interpretation of claims under the doctrine of equivalents.
This issue has previously reached the appeal stage several times and contradictory judgements have been handed down by different boards of appeal. Some boards of appeal have considered the requirement of description amendment to be mandatory under the EPC, finding basis in Articles 69(1) and 84 as well as Rules 42(1)(c) and 48(1)(c) EPC. However, in this case, the board of appeal have refused to consider these provisions as legal basis for the description amendment requirement.
The boards of appeal are only required to comply with the European Patent Convention, and hence the Guidelines have not been considered to be relevant in this case.
Latest decision
Article 69 EPC relates to the extent of protection conferred by a European patent. According to this decision, Article 69 EPC is neither about claim construction so as to understand the individual features of a claim during examination and determine its subject-matter, nor about resolving ambiguities in the claims. Instead, Article 69 is to help interpret the claims to determine the boundaries of protection available after grant. Therefore, the board of appeal indicated that Article 69 has no bearing on the assessment of patentability in examination before the EPO. Hence, it was concluded that Article 69 EPC does not provide legal basis for description amendment.
Article 84 EPC requires the claims to define the matter for which protection is sought, and the claims to be clear, concise and be supported by the description. Thus, Article 84 is related to the claims and not the description. The board held that this provision requires that the claims do not include subject-matter not found in the description, but that does not mean that the description should not have additional subject matter which does not appear in the claims. It concluded that having additional embodiments in the description which are not defined in the claims do not lead to any inconsistency between the claims and description, and do not give rise to a lack of clarity. Hence, Article 84 EPC also does not provide legal basis for description amendment.
Rule 42 EPC is related to the content of the description which requires the invention to be disclosed such that its advantageous effects can be understood with reference to the prior art. However, the board of appeal concluded that Rule 42(1)(c) EPC cannot be a legal basis for establishing a general requirement for an adaptation of the description to the claims.
Rule 48 EPC requires that a European patent application must not contain any statement or other matter obviously irrelevant or unnecessary under the circumstances. The board held that this provision is not about purported discrepancies between the description and the claims intended for grant, but is instead about omission of offending, disparaging, or irrelevant statements in a patent application. Moreover, the board concluded that since Rule 48 EPC does not provide a ground for refusal based on the inclusion of merely “irrelevant or unnecessary” matter in the description, it cannot provide legal basis for amending the description to bring it into line with the allowable claims.
Summary
The topic of description amendment is likely to remain controversial, since the board of appeal has refused to refer this issue to the Enlarged board of appeal. Depending on how the description is amended, it could have legal implications when it comes to enforcing the patent after grant. If you would like to discuss this matter in more detail, please do not hesitate to get in touch with your usual contacts at CSY or via mail@csy-ip.com.