Enlarged Board of Appeal set to have say on current description amendments requirements.

It has long been a requirement during patent prosecution in front of the European Patent Office (EPO) that the description of a European patent application should be amended to conform to an allowable set of claims. Historically, this practice required applicants to replace terms such as ‘invention’ or ‘embodiment’ with neutral language, such as ‘disclosure’, and only in instances in which it was very clear the relevant passage was not encompassed by the claims.

Since 2021, however, the EPO Examination Guidelines have set out more onerous requirements; requiring statements relating to subject matter not encompassed by the claims to be either deleted or clearly marked as not forming part of the invention. Moreover, any general statements and claim-like clauses now require deletion or amendment to avoid claim-like language in the description. In our experience, Examiners at the EPO have often sought to apply this guidance rigorously.

However, the EPO Examination Guidelines are not legally binding and the legal basis for the current Guidelines is a point of contention in the EPO case law. Indeed, a number of cases have offered diverging opinions when deciding whether description amendments are required under the EPC.

We recently reported on the on-going appeal case of T 56/21, which has arisen from an Examining Division’s decision to refuse a European patent application on the grounds the description was not adapted to be brought into conformity with an allowable set of claims.

Our earlier analysis of the case of T 56/21 can be found here: Seeking Clarity: The Controversy Surrounding Article 84 EPC and Description Adaption (secerna.co.uk)

The Board’s Position

In view of the divergent case law on the issue, the Board in Appeal No. T 56/21 have suggested referring to the Enlarged Board of Appeal (EBoA) the question of whether Article 84 EPC provides legal basis for the EPO’s current practice of requiring applicants to adapt the description to conform to allowable claims.

The Board has suggested that the following question could be referred:

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 (“adaption of the description”)?

In view of the delay to grant that such a referral would cause, the Board invited the Appellant (Patent Applicant) to provide their observations on the suggested referral.

The Appellant’s Position

The Appellant has now provided their observations and has indicated their support for the Board’s proposal to make a referral to the EBoA. It thus appears the stage is set for the EBoA to provide a binding decision on the EPO’s current practice regarding description amendments in the near future.

Interestingly, the Appellant has also provided some comments regarding the scope of the referral to the EBoA and even suggested some amendments to the question proposed by the Board.

Most notably, the Appellant has suggested amending the proposed question so that it is not limited to ex parte proceedings, but instead also encompasses dealing with description amendments made during opposition proceedings. On this point, the Appellant has commented that although clarity is not a ground for revocation during opposition proceedings, a previous EBoA Decision (G3/14) might, depending on the outcome of any prospective referral, provide basis for an Article 84 EPC objection to be raised in opposition if the description is not amended for conformity with any amended claims filed during proceedings.

Additionally, because Examiners do not typically consider dependent claims when assessing consistency between the description and the claims, but instead refer to the claims as a whole (i.e., by reference to the combined scope of the independent claims), the Appellant has suggested further amending the question to refer simply to “the claims”.

Thus, the Appellant has suggested the following question be referred to the EBoA:

Is there a lack of clarity of a claim the claims or a lack of support of a claim the claims 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 the specification (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 as defined in the claims (“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 (“adaption of the description”)?

Third Party Observations

In addition to the Appellant’s reply, two submissions of Third-Party Observations (TPOs) were filed anonymously on 24 November 2023.

These observations do not make any specific comments regarding the case under appeal, but instead draw the Board’s attention to a number of documents containing comments published in the official journals of the UK Chartered Institute of Patent Attorneys (“CIPA”) and the European Patent Institute (“epi”) which reflect certain views on the EPO’s practice and case law regarding adaptation of the description.

Specifically, the cited documents primarily appear to highlight the lack of consensus among Boards of Appeal regarding the legal basis for requiring description amendments, and also highlight the practical implications and consequences faced by applicants and their representatives in view of the EPO’s current practice.

Quite how the present Board may factor these TPOs into their decision, or how the Appellant may respond to them, is not immediately clear.

At the very least, the TPOs draw attention to the contentious nature of description amendments within the European patent profession and suggest any referral will be watched very closely by both EPO practitioners and the parties they represent.

Implications of a Referral

Should a referral to the EBoA be made and held admissible, it may well be one or two years until a decision is handed down by the EBoA. As this decision would impact almost every patent application approaching grant, it will be interesting to see if the EPO allows for stays of pending applications that may be affected by the decision. It is however difficult to envisage the EPO universally allowing such stays, as this would inevitably create a substantial backlog of pending applications which the EPO will understandably wish to avoid. It is perhaps more likely the EPO will widely continue in line with their current practice on description adaptation until a decision is handed down by the EBoA on the matter.

Secerna will provide further updates on this topic once the Board has decided on whether and in what form a question is to be referred to the EBoA regarding description adaptation in Europe.

If you have any questions about this or any other IP matters, please do not hesitate to contact us at docketing@secerna.co.uk.