EPO axes conforming of description to claims

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.