The claims of a patent application will typically require amending at least once before grant, frequently in the form of a limitation made to the scope of the claims. This often leads to parts of the description of the application as filed no longer falling within scope of the broadest amended claim before grant.
In Europe, it is a well-known requirement that the description be amended to bring it into line with the amended claim set before a patent can grant. Patent attorneys prefer to take a minimalist approach to this task; avoiding excessive description amendments which could potentially affect claim interpretation post-grant and minimising costs for the applicant. However, the European Patent Office’s (EPO) 2021 updated Guidelines for Examination have made this approach increasingly challenging by posing added requirements that embodiments/statements in the description no longer falling within scope of the claims must be deleted or explicitly disclaimed (Guidelines for Examination, Chapter F-IV, 4.3 and F-IV, 4.4).
The Guidelines state that one should expect Summons to Oral Proceedings if they do not comply with these requirements (Guidelines for Examination, Chapter H-V, 2.7). Whilst not legally binding in themselves, it is typically easier and less costly for applicants to comply with the Guidelines’ description amendment requirements than to challenge them through appeal.
In a landmark decision of the EPO Board of Appeal (T 1989/18), the Board tackled the question of whether the European Patent Convention (EPC) holds any legal basis for the need to amend the description for it to comply with amended claims pre-grant.
The EPO Examining Division found an amended claim set of the application in question, EP 12810245.6, to be allowable but held that amendments made by the applicant to the description were not.
The amendments made to the description suggested that the essential features of the claims were only optional. This meant that the description could be interpreted to cover embodiments/examples that didn’t fall within scope of the amended claims. According to the Guidelines for Examination, such broader statements in the description would either have had to be deleted or deliberately disclaimed as not being part of the invention.
The Examining Division proposed that the applicant make more extensive amendments for the description to meet the requirements of the EPC. The applicant declined and the Examining Division refused the application.
The applicant argued that the EPC did not require that parts of the description no longer covered by the amended claims be deleted or explicitly disclaimed and they appealed the decision to the Boards of Appeal.
The Boards of Appeal (BoA) considered whether the EPC included legal basis necessitating the removal of subject matter broader than the amended claims from the description.
The BoA began by investigating the basis cited by the Examining Division for refusal of the application, requiring that the claims be “supported by the description” (Article 84 EPC).
However, the BoA noted that the claimed subject matter could in fact be found in the description as filed. The claims were supported, and the presence of the broader subject matter in the description did not affect this. The BoA therefore concluded that the refusal could not be justified based on this alone.
The BoA went on to assess whether Article 69 EPC (governing interpretation of the claims using the description), Rule 42(1)(c) EPC (requiring that the description discloses an understandable problem and solution), and Rule 48(1)(c) EPC (ensuring that the patent application does not contain irrelevant or unnecessary statements) could be used as justification to force amendment of the description to conform to the claims. However, each Article and Rule was found lacking in authority.
Overall, the BoA decided that no legal basis existed to refuse the application simply for not bringing the description into line with the claims, and the decision of the Examining Division was set aside.
This case deals with a topic of relevance to the vast majority of patent applicants and signals a significant relaxation of the stringent 2021 guidelines surrounding pre-grant description amendments.
The decision will come as good news to many and has the potential to result in significant future time and cost savings for both patent applicants and the EPO. All that remains is for us to keep our eyes peeled for what changes, if any, this will bring to the awaited 2022 Guidelines for Examination. If you have any questions about this decision please get in touch to speak to one of our attorneys