Key points
Last year, my colleague Ross Chapman reported the latest on the ongoing description amendments saga at the EPO (link). This appeal case, T56/21, considered the requirement to amend the description to correspond with the claims before grant. At the time, it seemed likely that the Board would make a referral to the Enlarged Board of Appeal in order to provide clarity on (any) amendments necessary to bring the description and/or drawings into agreement with the allowable claims.
Now, almost a year later, the Board have decided not to refer this case to the Enlarged Board of Appeal, and instead concluded that:
“In examination of a patent application, 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.”
This decision will come as welcome news to patent attorneys and applicants across the globe after the last few years of uncertainty, and appears to provide a reasonable base to push back against Examiner requests to amend the description in line with the allowable claims.
More details
Previously, the Board considered a decision of the Examining Division to refuse a patent application based on a passage of the description that included claim-like clauses. In particular, the Examining Division found that these clauses referred to subject matter outside the scope of the claims which rendered the application unclear and so should be removed.
In appeal, the appellant maintained the same description passage and the Board indicated that a referral to the Enlarged Board of Appeal to consider this point of law was likely. The question to consider being whether Article 84 EPC provides legal basis for objecting to an inconsistency between what is disclosed as the invention in the description/drawings vs. in the claims (the inconsistency being that the description/drawings contains subject matter that is not claimed), and for requiring removal of the inconsistency by amending the description/drawings. The appellant agreed to the referral.
Now, the Board have decided not to make a referral to the Enlarged Board of Appeal and instead issued their decision that that there is no legal basis in the EPC requiring amendment of the description/drawings to correspond with the claims. The Board stated that there wasn’t a need to seek guidance on this issue since the requirements of Article 84 EPC for the purpose of examining European patent applications appeared unequivocal when considering the different elements of interpretation, guidance by the Enlarged Board of Appeal, and the practical implications.
The decision covers 90 pages and provides a detailed reasoning. However, to summarise:
- Article 69 EPC and its Protocol are not concerned with the assessment of patentability in examination and are therefore not applicable in grant proceedings before the EPO.
- The requirements of Article 84 EPC and Rule 43 EPC are to be assessed separately and independently of considerations of the extent of protection during examination.
- Article 84 and Rules 43 EPC do not provide a legal basis for a mandatory amendment of the description to claims of a more limited subject-matter.
- Rule 48 EPC does not provide for a ground for refusal based on the inclusion of merely ‘irrelevant or unnecessary’ matter in the description and even less so for ‘discrepancies’ between the claimed subject-matter and the description.
As you may recall, earlier decisions by this Board on this point have been largely ignored, and have not lead to any changes in the EPO Guidelines for Examination. Indeed, those other decisions have been challenged by other Boards of Appeal, and so have been largely ignored by the Examining Divisions of the EPO. The Board even states explicitly in point 5 “The appeal is also not concerned with the correctness of the Guidelines for Examination and, even less, with a possible need for their correction”, and in point 6 “the Board’s decision has a binding effect only on the examining division that issued the decision under appeal”. This, of course, simply acknowledges the inconsistency of approach between the two instances without making any positive steps to address it.
As such, we do not anticipate any change in practice, at least in the near future, despite the clear view of this particular Board (with which we largely agree). On the other hand, the decision is well argued and quite convincing, exploring the issue exhaustively, and so we are hopeful it will be given due consideration by other Boards. Time will tell.
Further advice can be obtained from the author of this bulletin, or from your usual advisor here at Boult.
