Description adaption at the European Patent Office (EPO) has been and continues to be a contentious issue for many European Patent attorneys and applicants. Since the Guidelines for Examination were updated in April 2023, European Patent Examiners have held a harder line on inconsistencies between the claims and description. For example, the Guidelines require, among other things, that the applicant remove any inconsistencies by amendment or by deleting inconsistent embodiments or marking them as not falling with the claim scope; and that general statements and claim-like clauses are deleted or amended to avoid claim-like language.

Recent Shift in EPO Examination Guidelines

Attorneys and applicants will have their own views on how much to adapt and every attorney will have spent a significant amount of time considering how much ‘as filed’ subject matter to amend, to delete and to keep in the granted patent (all against the backdrop of Article 123(2) EPC which prohibits subject matter extending beyond the content of the application as filed).  There is a balance to be struck and if the EPO disagrees, it will be apparent from the marked-up version of the text intended for grant (otherwise known as the Druckexemplar that accompanies the Rule 71(3) EPC Communication). It must then be decided if the Examiner’s amendments are acceptable for the application to proceed to grant. Sometimes, they are not.  

A Case of Disagreement: EP15700545.5 (EP3094648)

This is exactly what happened with European patent application EP15700545.5 (EP3094648). Allowable claims were agreed to the use of a specific mutation to increase binding of a dimeric polypeptide to protein A and an adapted description was filed by the Applicant, Roche Diagnostics, containing a number of ‘claim-like’ clause. However, when the Rule 71(3) EPC Communication was issued, the Examiner had deleted these clauses. The Applicant disagreed that the deletion was necessary arguing that the Guidelines do not constitute legally binding provisions and that deletion of the clauses in question would impair the Applicant’s ability to make post-grant amendments in view of Board of Appeal case law (T1149/97). An appealable decision on the state of the file was requested, the application was refused for non-compliance with Article 84 EPC and the decision was appealed as T0056/21.

The Board of Appeal's Question on Article 84 EPC

The Board of Appeal in T0056/21 have recently issued their first substantive communication on this case, and it starts with question: should this matter be referred to the Enlarged Board of Appeal?

The point of law is whether Article 84 EPC provides a legal basis for objecting to inconsistencies between the description and drawings and the claims and whether it requires removal of such inconsistencies by ‘adaption of the description’. Furthermore, it asks can an application be refused if the description is not adapted?

The Board’s question stems from its observation that recent case law has diverged on the interpretation of Article 84 EPC and that the Guidelines’ insistence on adaption may not be in line with the wording and purpose of Article 84 EPC which states that the claims shall (i) be clear and concise and (ii) be supported by the description.  Article 84 EPC places a requirement on the claims and not on the description or drawings but the Board has provided some preliminary comments on how this has evolved to encompass current EPO practice on adaption.

The Role of Article 69 EPC in Description Adaption

Considering clarity, the Board has noted that a significant body of EPO case law has found that Article 84 EPC places a requirement on the claims only, i.e., that they are clear in themselves without having to resort to the description for an interpretation. The Board also comments that EPO practice and the Guidelines, which have always required the removal of inconsistencies between claims and description on the basis of clarity, is difficult to reconcile with this.

Considering support, the Board comments that, initially, this had been taken to mean that the claimed subject matter had to be drawn from the description and that early case law added that the claims should correspond to, be consistent with and be commensurate with the description.

In some case, Article 69 EPC was then used to justify adaption of a description to claims of reduced scope on the basis that the extent of protection conferred by a patent is determined by the claims whilst using the description and drawings to interpret the claims. It is worth noting that the Board is wary of this justification commenting that, as far as the EPO is concerned, legal certainty requires that claims are understood without having to resort to the description and that [i]t is not for the Office to harmonise the extent of protection conferred by the 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.

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”)?

and has asked for the Applicant’s observations as such a referral would inevitably and significantly delay the grant of their patent.

Guidance from an enlarged Board of Appeal on this matter would be welcomed by attorneys, applicants, and examiners alike but we will have to wait and see if this is the application which provides us all with some much-needed clarity!

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

Read the latest developments surrounding this issue: Enlarged Board of Appeal to Address Description Amendment Rules (secerna.co.uk)