Potential referral to Enlarged Board of Appeal on the requirement of description amendments: Is there really a legal basis?

In our recent Newsletter of July ‘23 we reported on the stricter approach taken more recently by the EPO on amending the description to bring it in conformity with the claims that are held allowable and the increasingly divergent case law on the requirement for these description amendments. Now, the Board of Appeal in T0056/21 has proposed a referral to the Enlarged Board of Appeal on this issue.

In the case at hand, the Examining Division had amended themselves the description with the issuance of the Rule 71(3) EPC Communication (intention to grant a patent) for the application (EP 15700545.5). In line with the Guidelines for Examination before the EPO, claim-like statements in the description had been deleted. The Applicant (now Appellant), Roche Diagnostics, disapproved the text intended for grant objecting to the deletion of the claim-like clauses. The Examining Division  justified the amendments in that the unamended description could lead to unclarity as to the actual scope of protection of the claims. Subsequently, the application was refused for non-compliance with Art. 84 EPC, which decision was appealed.

In a recent communication dated July 21, 2023, the Board of Appeal identified divergent case law on the issue of whether Article 84 EPC and/or Article 69 EPC provide legal basis for the requirement of amending the description. It is notable that this Board is the same Board that presided over T1989/18, and issued the first Board of Appeal decision to find a lack of legal basis for requiring amendments to the description. The Board however now queries whether the current practice by the EPO as formalised in the Guidelines can be reconciled with the case law on clarity requiring that the claims should be clear in themselves without having resort to the description for interpretation, and whether Art. 84 EPC provides a legal basis for the required description amendments. The Board in its recent communication also seems to reject Article 69 EPC, the provision defining the extent of protection under European practice, as legal basis for this requirement. Proponents of description amendments argue that, given that the description shall be used to interpret the claims (Article 69 EPC), the description has to be brought in line with the amended claims. The Board however notes that that Article 69 EPC sets out considerations for national courts in infringement proceedings which are post-grant, and takes the view that it is not for the EPO to harmonise the extent of protection conferred by European patents by requiring description amendments restricting the description to the allowable claims. The Board concludes that, should the appellant see the need for a referral, they may consider the following question:

"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 the application (e.g. an embodiment of the invention, an example or 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")?"

The Board of Appeal has now given the appellant, Roche, three months to file its own observations and it thus remains to be seen whether Roche will decide to request a referral. Such a referral would inevitably result in further delays to the granting process of the case at hand, but would provide an opportunity to get some legal certainty on this controversial aspect of the patenting process, which moreover for large applications can imply a significant additional cost. We will follow the developments in this case with great interest and will keep you updated.

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.