No legal basis found for bringing patent descriptions in line with claims
Does the EPC hold any legal basis for the need to amend the description to comply with amended claims?
Amending a patent description to bring it into line with an amended set of claims before grant is a well-known requirement of European patent practice. In recent years, the European Patent Office (EPO) Guidelines for Examination have tightened down on this requirement, stating that embodiments/statements in the description which no longer fall within scope of amended claims pre-grant must either be deleted or explicitly disclaimed. This has often meant that applicants have had to make substantial amendments to patent descriptions pre-grant.
We recently reported on a surprising decision of the EPO Boards of Appeal (BoA) (T 1989/18), which saw the Board conclude the opposite – i.e. that no legal basis could be found to refuse a patent application simply for not bringing the description into line with the claims.
Decision T 1024/18 now brings yet another turn of events and sees European Patent EP 2609899 revoked for failure to amend a patent description into line with an allowable set of amended claims.
T 1024/18 concerned an appeal by an opponent to the BoA against a decision of the Opposition Division of the EPO to maintain patent EP 2609899 as granted.
The BoA issued a summons to oral proceedings and delivered their provisional opinion, which found the claims of the patentee’s main request non-allowable, but considered those of a second auxiliary request to meet the requirements of the European Patent Convention (EPC).
The patent proprietor refused to attend oral proceedings and in spite of advisory comments from the BoA, failed to file an amended description that was in line with the claims of the second auxiliary request.
Oral proceedings took place in the patent proprietor’s absence.
During oral proceedings, the BoA maintained their view that claims of auxiliary request 2 were allowable. However, as the sole description that was on file had not been amended into line with this allowable set of claims, the Board addressed the question of whether the EPC necessitated that an amended description be filed.
The Board raised the requirement of Article 84 EPC – “the claims shall be clear and concise and supported by the description”, and interpreted the latter part of the provision to mean that claims must be supported by the whole of the description, and not just a portion of it. They stated that this interpretation was supported by long established case law of the Boards of Appeal (e.g. T 0977/94, T 0300/04 and T 1808/06) and that under it, there should be no inconsistencies between the claims and the description – i.e. a reader should not be presented with any information in the description that is at odds with the claims.
Such an interpretation differs considerably from that held by the Board in earlier decision, T 1989/18, in which the Board’s opinion was that if claimed subject matter could be found in the description, the claims were supported, and the presence of broader subject matter in the description did not affect this.
The present Board addressed the differing view held in T 1989/18 – they claimed that the previous Board merely focused on the “clarity” requirement of Article 84 EPC. However, “clarity” and “support” are distinct requirements – neither of which is subordinate to the other and both of which must be met.
The present Board reaffirmed that the description must be brought into line with an amended set of claims, and embodiments that are not consistent with the amended claim set must be deleted or explicitly disclaimed.
Since the applicant had not submitted an amended description which was consistent with the claims of auxiliary request 2, the Board deemed this request not allowable based on the claims lacking support by the description.
This decision appears to bring description amendments back to the established norm – requiring amendments to the description to conform with any amended claims.
It appears only time will tell if previous decision, T 1989/18, was a one-off, or if the future holds yet more twists and turns. At least for the time being, however, it seems the stringent requirements remain of having to either delete or disclaim subject matter from patent descriptions which is inconsistent with an allowable set of claims.
If you have any questions about this decision, please get in touch to speak to one of our attorneys.