UK patent applications have dipped at the EPO, but is it all bad news?
07-04-2022
EPO opposition statistics: a five-year review
24-12-2021
EPO’s G1 /21 videoconf hearing postponed
01-06-2021
14-02-2022
JPstock / Shutterstock.com
An EPO decision that applicants no longer need to amend their description to be consistent with the claims will be welcomed by applicants and attorneys alike, says Andy Attfield of Reddie & Grose.
In December last year, the Boards of Appeal at the European Patent Office (EPO) considered the issue of legal basis in the European Patent Convention (EPC) for the requirement to conform the description to the claims of a European patent application (T1989/18).
Examiners at the EPO often require applicants to amend the description to “conform it to the claims”. To do this, embodiments discussed in the description that are no longer covered by the claims, for example due to narrowing amendments during prosecution, must either be deleted from the description or prominently disclaimed, in accordance with the current Guidelines for Examination.
Amending the description in this manner is often time consuming and costly for the applicant. Furthermore, deleting or disclaiming subject matter from the description may have undesirable consequences in subsequent national court proceedings.
The rest of this article is locked for subscribers only. Please login to continue reading.
If you don't have a login, you will need to purchase a subscription to gain access to this article, including all our online content. Please use this link and follow the steps.
For multi-user price options, or to check if your company has an existing subscription to us that we can add you to for FREE, please email Atif Choudhury at achoudhury@worldipreview.com
Reddie & Grose, EPO, Boards of Appeal, patent application, validity, claim, subject matter