Description amendments: from a lenient approach to a heavy burden for applicants and their representatives
The requirement for amending the description in conformity with the allowed claims before the EPO is unique in the global patent prosecution context. For many years, European patent attorneys have applied -and most EPO examiners have allowed- a lenient approach in complying with this requirement. The adaptation of the description was kept to a minimum in order to reduce the risk for a more narrow interpretation of claim scope by national courts later on as well as not to introduce added subject-matter.
Since 2021 the EPO has taken a stricter approach as formalised in the EPO Guidelines for Examination. The ’21 Guidelines contained extensive amendments to section F-IV, 4.3, thereby introducing Art. 84 EPC as legal basis for description amendments. Claims became more easily objectionable under Art. 84 EPC for not being properly supported by the description without more extensive amendments in correspondence with the claimed subject-matter. In line with this, Examining Divisions required deletion or more specific indications of those parts of the description which are “not covered by the claims”.
In the revised ’22 Guidelines, the EPO continued its commitment to description amendments and instructed “inconsistencies” between the description and the claims to be removed from the description or to be marked as not falling within the subject-matter for which protection is sought. Applicants were left in the dark however on what constitutes an “inconsistency”.
In the most recent Guidelines that came into force on April 1, 2023 some more practical examples were introduced, which appear to define “inconsistent” more as “technically contradictory” as opposed to a mere inconsistency of language or feature combinations. Also the option of “marking inconsistencies as not falling within the subject-matter for which protection is sought” has been slightly tempered to say “marking appropriately so that it is clear that they do not fall within the subject-matter for which protection is sought”, appearing to allow applicants slightly more flexibility in performing the amendments. Helpful in this respect is the new paragraph in the ’23 Guidelines stating: “As long as the resulting text of the description does not present conflicting information to the reader, an inconsistent embodiment may also be remedied by ensuring that it is not referred to as being "according to the invention" throughout the description and by complementing the reference to it with an explicit statement to the effect that it is retained due to being useful for understanding the invention (e.g. "embodiment useful for understanding the invention", "comparative example from background art".
Despite this -limited- softening of the EPO’s approach, description amendments have placed a heavy burden on applicants and their representatives.
Together with the development of the Guidelines, an increasing number of Board of Appeal decisions related to description amendments emerged. Since the ‘21 Guidelines entered into force, at least seven of the Board of Appeal decisions issued so far support the strict approach concerning adaptation of the description (T 1399/17, T 1024/18, T 0121/20, T 2766/17, T 2293/18, T 1516/20, T 3097/19) as compared to 4 conflicting decisions expressing an opposite view (T 1989/18, T 1444/20, T 2194/19, T 1426/21).
As in the recent Guidelines, a number of supporting decisions rely on Art. 84 EPC as legal basis for justifying the requirement to adapt the description. Of note is T 1024/18, which interpreted the “supported by the description” requirement of Art. 84 EPC as the description being consistent with the claims “not only in some part but throughout”. This criterion was supported in later Board of Appeal decisions T 0121/20 and T 1516/20 (both issued by the same Board), as well as T 2766/17 and T 1516/20.
T 1989/18, issued in December 2021, was the first decision that gave some hope that the EPO would reverse its strict approach. In that decision, the Board of Appeal held that there was no legal basis in the EPC to require that the description be amended for conformity with the claims. Decision T 1444/20 that issued in April 2022 supported the general principle of T 1989/18 that description amendments are unnecessary if the claims are clear in and of themselves. It is noted however that the facts of each case differed in that T 1444/20 focused on the deletion of claim-like clauses or redundant subject-matter, whereas T 1989/18 related to the deletion of contradictory subject-matter from the description. The deletion of claim-like clauses was also challenged in T 1426/21. In that decision that issued in May 2023, the Board endorsed the approach taken in T 1444/20. Deletion of claim-like clauses in the description, which were clearly not part of the claims themselves, and which did not render the claims unclear because they were consistent, and not in contradiction, with the claims, was considered not warranted. In T 2194/19 issued on 24 October 2022, the Board of Appeal challenged the requirement that all embodiments of the description had to be covered by the claims. In the Board’s view the requirement for removing “inconsistencies” from the description is justified only if those parts make the claims unclear, but cannot be justified when the language of the claims is clear in itself. In addition, the Board considered that the burden is on the Examining Division to proof why an embodiment it requires the application to remove would make the claims unclear.
While the majority of decisions on description amendments appear to confirm the strict approach as currently stipulated by the Guidelines, a growing number of conflicting Board of Appeal decisions emerged the last year. This increasingly divergent case law increases the likelihood that a referral to the Enlarged Board of Appeal (EBA) will be necessary to settle the issue. In the meantime, we advise a cautious case by case approach so that the application can proceed to grant while not jeopardizing post-grant proceedings before national courts or the UPC.
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