04.11.2024
It is typically a requirement at the EPO to amend the description for conformity with the allowable claims before grant of a patent; however, there have been a number of diverging decisions on the matter. The latest decision finds that there is no legal basis for enforcing this requirement, which might suggest that it will no longer be necessary to adapt the description.
However, there are other decisions which support the requirement to adapt the description. In view of this, and because the Board of Appeal in this case opted not to involve the highest authority at the EPO in order to clarify the situation, it is unclear as to whether or not the requirement to adapt the description will remain.
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Once the EPO indicates that the claims meet the requirements of the EPC, it typically requests that applicants amend the description for conformity with the allowable claims before granting the application. This usually involves deleting embodiments that fall outside the scope of the claims or explicitly stating that they do not form part of the claimed invention. This long-established practice is generally considered necessary when an application has been drafted to cover multiple inventions, or when the claims have been narrowed during examination. However, the requirement to adapt the description for conformity with the claims does not exist in many other jurisdictions.
In Europe, there has been a long-running debate over whether the EPC provides legal basis for this requirement. In particular, multiple revisions to the EPO Guidelines and various divergent case law from the EPO Boards of Appeal have contributed to this ongoing discussion. Some decisions (e.g. T 1024/18, T 2293/18, T 1808/06, T 2766/17 and T 3097/19) have held that the description must be brought into conformity with the allowable claims in order to comply with Article 84 EPC, which requires that the claims be clear and supported by the description. Conversely, other decisions have reached the opposite conclusion. For example, in T 1989/18 (involving the same Appellant and Board of Appeal as in T 56/21), the Board decided that if the claims are clear in themselves and supported by the description, their clarity is not affected if the description contains subject matter which is not claimed and therefore Article 84 EPC does not serve as a legal basis for a refusal in such instances.
The issue of adapting the description for conformity with the claims is significant for various reasons, not least because it often leads to increased costs for applicants. In addition, description amendments can have a direct impact on the scope of protection conferred by a granted patent, as Article 69(1) EPC states that the description and drawings shall be used to interpret the claims, which determine the scope of protection. Furthermore, some national courts apply the “doctrine of equivalents” which extends protection beyond the literal wording of the claims. Amending the description could impact the application of this doctrine.
Therefore, given the diverging decisions and the significance of the issue, it was hoped that the Board in T 56/21 would refer to the EPO Enlarged Board of Appeal (EBA) the question of whether there is any legal basis under the EPC for requiring the description to be adapted for conformity with the claims in order to provide much-needed clarity on the matter.
The Appeal stemmed from the Applicant (F. Hoffmann-La Roche AG) objecting to the deletion of claim-like clauses in the description which extended beyond the scope of the claims, leading to the Examining Division refusing the application due to non-compliance with Article 84 EPC.
In July 2023, the Board in this case (namely Technical Board of Appeal 3.3.04) queried the legal basis for objections under Article 84 EPC resulting from a lack of consistency between the description and the claims. As a result, they proposed to refer the following question to the EBA:
"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 inventio nr 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 ("adaptation of the description")?”
Roche subsequently agreed to the referral, leading many to believe that such a referral would be made in due course.
It was therefore surprising that, in the recent decision, the Board concluded that a referral to the EBA was unnecessary and proceeded to decide the case without such a referral.
The Board set forth their detailed reasoning in the decision and concluded the following:
The Board also provided the following overall summary:
“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.”
Regarding the lack of a referral to the EBA, the Board presented the following reasoning:
As a result, the Board did not proceed with the referral. Instead, they set aside the decision under appeal and remitted the case to the Examining Division with an order to grant a patent that included the claim-like clauses which extend beyond the subject matter of the allowable claims.
The lack of a referral to the EBA will disappoint many applicants and patent attorneys who sought legal certainty on the issue of adapting the description for conformity with the allowable claims. While Technical Board of Appeal 3.3.04 did not consider this practice a requirement under the EPC, it is evident that other Boards hold different views. As a result, divergent decisions on this matter are likely to continue until the EBA provides clarification. The Board’s decision not to proceed with the referral in this case feels like a missed opportunity to settle the issue.
Nonetheless, this decision provides further support for applicants seeking to oppose the EPO's requests to align the description with the allowable claims. However, based on previous experience, it is unlikely that the Examining Division will consistently accept the arguments made in T 56/21. Therefore, applicants wishing to resist adapting the description must carefully weigh the benefits of maintaining the original description against the potential risk of delaying grant of the patent.
On a related note, it will be interesting to see whether this decision has any impact on the outcome of G 1/24, where the EBA is considering the role of the description and drawings when interpreting claims in relation to patentability at the EPO. Alternatively, it is possible that G 1/24 may undermine some of the reasoning provided in this decision.
For further advice on this topic, please contact one of Keltie’s patent attorneys, who would be happy to assist.
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