I love you just the way you are: amendments to description not a requirement says this Board

Since 2021 the European Patent Office (EPO) has taken a stricter approach on the requirement for amending the description of a patent application in conformity with the allowed claims. The consequences of this stricter approach of the Examining Divisions who follow the Guidelines for Examination and the growing number of conflicting Board of Appeal decisions arising therefrom were already discussed in some of our earlier articles. 

In T56/21 a final decision of the Technical Board of Appeal 3.3.04 relating to EP3094648 was handed down on 4 October 2024. Although it was generally expected that the Board would make a referral to the Enlarged Board of Appeal in order to provide clarity on amendments necessary to bring the description in line with the allowed claims, the Board decided not to refer this case to the Enlarged Board of Appeal. Instead, they concluded that “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.”

To summarize, T56/21 originates from the refusal of a patent application by the Examining Division of the EPO. The refusal was based on the assertion that the description contained passages that extended beyond the scope of the allowable claims, rendering the application unclear and unsupported according to Art. 84 EPC. The Examining Division also referenced Rule 48(1)(c) EPC, suggesting that irrelevant or unnecessary matter in the description could justify refusal of the application. 

The Applicant (HOFFMAN-LA ROCHE) appealed the refusal, arguing that there was no legal basis in the EPC for requiring the description to be fully aligned with the claims. They contended that Article 84 EPC pertains specifically to the claims, not to the description, and that the discrepancies between claims and description should not automatically lead to a refusal of the application. 

The Board of Appeal now disagreed with the Examining Division’s interpretation, emphasizing that Article 84 and Rule 43 EPC set requirements for claims and do not mandate a complete adaptation of the description to match the claims. The following points are highlighted in the Board’s decision:

(a) Article 69 EPC and its Protocol are not concerned with the assessment of patentability in examination before the EPO but with the extent of protection in the context of national proceedings of a European patent following such examination. Article 69 EPC and its Protocol are hence not applicable in grant proceedings before the EPO.

(b) Article 84 EPC and Rule 43 EPC are not a corollary of Article 69 EPC even though claims are the main determinant of the extent of protection. Consequently, the requirements of Article 84 EPC and Rule 43 EPC are to be assessed separately and independently of considerations of extent of protection when examining a patent application.

(c) Article 84 and Rules 43 EPC set forth requirements for the claims. They do not provide a legal basis for a mandatory adaptation of the description to claims of more limited subject-matter. Within the limits of Article 123 EPC, an applicant may, however, amend the description on its own volition.

(d) Rule 48 EPC is concerned with the publication of an application and the avoidance of expressions which are contrary to public morality or public order, or certain disparaging or irrelevant statements. Rule 48 EPC does not provide for a ground for refusal based on the inclusion of merely "irrelevant or unnecessary" matter in the description intended for grant and even less for "discrepancies" between the subject-matter claimed and that disclosed in the description.

In T56/21, the Board clearly stated that requiring the description to match allowable claims does not enhance legal certainty regarding the extent of protection and may lead to unintended consequences in post-grant proceedings, and in particular that Article 84 and Rule 43 EPC do not provide a legal basis for the amendment of the description based on the allowed claims.

Whether this decision will lead to any amendments in the EPO Guidelines for Examination remains, however, still questionable. In its decision the Board clearly stated that “The appeal is also not concerned with the correctness of the Guidelines for Examination and, even less, with a possible need for their correction” and that “The Board’s decision has a binding effect only on the Examining Division that issued the decision under appeal”. Furthermore, there are a considerable number of earlier decisions on description amendments that appear to confirm the strict approach as currently stipulated by the Guidelines for Examination. 

It thus remains questionable whether T56/21 will have an effect on the general practice of amending the description of a patent applications before the EPO. In the meantime, we still advise a cautious case-by-case approach so that the application can proceed to grant while minimizing risks in possible post-grant proceedings before national courts or the UPC. 

Interesting to note is also the  referral to the Enlarged Board of Appeal (EBA) regarding claim interpretation and whether the description should be taken into account therefor which is currently pending as G1/24 (with a due date for amicus briefs by 15 November 2024). The public was in fact expecting a further referral to the EBA in the present T56/21 case and the present Decision may have an impact on the discussion in G1/24(see also our previous reports on description amendments: “Description Amendments: From a lenient approach to a heavy burden for applicants and their representatives” and “Potential Referral to Enlarged Board of Appeal on the Requirement of Description Amendments: Is there a legal basis?”).  It is of course  still possible that in another pending case such a referral will be made.

If you have any questions, we would be happy to help. Feel free to reach out to our European Patent Attorneys via email on info@dcp-ip.com.