In a previous bulletin we reported on the EPO’s ever more onerous requirements for amending the description to conform with any amendments made to the claims of a patent application or patent. This topic is once again in the spotlight because, in appeal case T 56/21, the Board of Appeal has invited the appellant to comment on the possibility of a referral to the Enlarged Board of Appeal so as to deal with this matter once and for all.
As those reading may be aware, a referral to an Enlarged Board of Appeal may occur in a number of circumstances. Generally, under Article 112 EPC, the Enlarged Board will be called upon to give a decision if a point of law of fundamental importance arises or to ensure uniform application of the law where the Case Law of the Boards of Appeal has diverged on an issue.
The opening portion of the Board’s communication in T 56/21 contains a rather succinct summary of their rationale for the need for a referral to the Enlarged Board, namely the apparent discrepancy in decisions relating to this issue from different Boards of Appeal, along with a brief summary of the competing sources of law on this matter.
Indeed, the first line of the Board’s communication summarizes that “the pivotal issue is how to interpret the requirement of clarity and/or support of the claims by the description according to Article 84 EPC” . Whilst the Board is obviously referring to the case at hand, this is a question that is more widely applicable and is no doubt of great relevance to applicants, EPO Examiners, Board of Appeal members, and patent attorneys alike.
One of the key considerations in this matter is why the EPO’s requirement that the claims and description are in conformity exists in the first place. Taking a deep dive into the drafting of the EPC, and the commentary regarding this provision, the Board have come to the conclusion that “The requirement that the description and/or drawings of an application or a patent should be adapted to amended claims of restricted scope before grant or maintenance of a patent appears to have its origin in the policy consideration of striking a just balance between a fair and adequate scope of protection for the patent proprietor and a reasonable degree of certainty for third parties in determining the scope of protection as set forth in the Protocol on the Interpretation of Article 69 of the Convention 1973”. [1]
Where Article 69 EPC requires that “The extent of the protection conferred by a European patent or a European patent application shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims”. It has been thought that the EPO’s recent enforcement of more stringent requirements for amending the description, on the grounds of ensuring that the claims and description are consistent, may stem from a desire to ensure that any future interpretation of the claims by various national courts of EPC member states will be consistent with the EPO’s own interpretation. That is, the description should not allow a national court to interpret a claim in a markedly different way to how the EPO interpreted the claim when allowing the patent application for grant.
However, the Board’s communication in T56/21 said that “It is not for the Office to harmonise the extent of protection conferred by European patents (and applications) by bringing the description and/or the drawings of an application or patent in agreement with the amended claims held allowable”.[2]
Further, as set out in several portions of the Board’s communication[3], there are questions as to how any requirements for clarity and/or support of the claims by the description, according to Article 84 EPC, are to be handled during opposition proceedings. Namely, whether or not further description amendments may be necessary and whether such a requirement would be contrary to the fact that clarity and support are not grounds for opposition or revocation.
As such, the Board in T 56/20 have proposed that the following question could 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”)?’
Given the apparent willingness of the current appellant to push back against the need for amendments to the description, in this case and a number of other appeal cases, it seems likely that the appellant will allow this question to be referred to the Enlarged Board of Appeal. Should the Enlarged Board weigh in on this issue then, hopefully, we will get some guidance as to the extent of the amendments to bring the description and/or the drawings into agreement with the amended claims if the provisions of the EPC are to be met. As it is likely to be a year or more before we see any decision issue from the Enlarged Board, we still have many months ahead in which we will need to help guide our clients in treading the narrow path between the EPO’s requirements and their best interests.
[1] see section 2.4.1(f) of the Communication of the Board of Appeal issued on T 56/21
[2] see section 3.2.3 of the Communication of the Board of Appeal issued on T 56/21
[3] see sections 1.4 and 4 of the Communication of the Board of Appeal issued on T 56/21
