EPO axes conforming of description to claims
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.
T1989/18 relates to an application that was refused by the examining division. Although the examining division found the claims of the application novel and inventive, they refused the application under A. 84 EPC because they considered that the description had not been sufficiently conformed to the claims.
The applicant appealed this decision. At issue was whether the EPC requires the description to be amended to conform to the claims. The Board of Appeal in this case considered whether any of A. 69(1) EPC, A. 84 EPC, R. 42(1)(c) EPC and R. 48(1)(c) EPC provide legal basis for such a requirement.
The board dismissed A. 69(1) EPC as this relates to the scope of protection of a patent or patent application and does not relate to requirements a patent must meet to be granted.
It also dismissed R. 42(1)(c) EPC, which requires that the description enable the technical problem the invention solves to be understood, because there is no limitation on what else can be in the description in this rule.
Considering A. 84 EPC, the board stated that this article requires that the claims are clear in themselves and without reference to the description, in line with well-established case law.
This is based on the fact that the description is only mentioned in A. 84 EPC in the context of support for the claims; the clarity requirement is a standalone requirement. Hence, the board determined that if the claims are clear in themselves and supported by the description, their clarity is not affected if the description contains unclaimed subject-matter.
Regarding the support requirement in A. 84 EPC, the board stated that this only requires the subject matter of the claims to be taken from the description.
Finally, the board considered R. 48(1)(c) EPC. R. 48 EPC does explicitly set limitations as to what can be contained within a European Patent Application.
- 48(1)(a) EPC prohibits “statements or other matter contrary to "ordre public" or morality”; R. 48(1)(b) EPC prohibits “statements disparaging the products or processes of any third party or the merits or validity of the applications or patents”; whilst R. 48(1)(c) EPC prohibits “any statement or other matter obviously irrelevant or unnecessary under the circumstances”.
The Board noted that there is no definition of what subject matter is considered “obviously irrelevant or unnecessary”, nor is any legal consequence is set out for an application that contravenes R. 48(1)(c) EPC. This is in contrast to applications which contravene R. 48(1)(a) & (b) EPC: the offending subject matter is omitted from publication.
The board considered that, because R. 48(1) is set out in order of severity, beginning with matter contrary to ordre public and morality and finishing with merely irrelevant or unnecessary matter, it could not have been the legislators intention that the latter should incur a more serious sanction (refusal of the patent application) than the earlier (non-publication of the offending material), despite being less severe in nature.
From this reasoning, the board concluded that there is no basis in the EPC for requiring that the description is amended to conform to the claims, nor that an applicant can have their application refused for failing to do so. Hence, the board ordered that the decision under appeal be set aside and that the examining division grant a patent.
Generally, this is a well-reasoned and sensible decision from the board. It seems clear that A. 84 EPC should not require the description to be amended, for the reasons set out by the board. A. 69(1) EPC and R. 42(1)(c) EPC are also of little relevance to the issue in question. Finally, while R. 48(1)(c) EPC does appear potentially relevant, it would also seem that refusing an application under R. 48(1)(c) EPC would not be proportional to the severity of the offence.
However, many commentators have noted that T1989/18 appears to be in conflict with earlier decisions of the Boards of Appeal which have supported the requirement for the applicant to amend the description to conform to the claims. If this is the case, is a referral to the Enlarged Board of Appeal required?
One case commonly cited is T1808/06. Indeed, this case is cited in the guidelines as providing support for the requirement that the applicant must delete or explicitly disclaim subject matter that falls outside the scope of the claims.
In this decision, the board state that in order for the claims to be supported by the description, inconsistencies between the claims and the description which could render the scope of the claims unclear must be avoided. However, there are several problems with this statement.
Firstly, no reasoning is provided for the board’s assertion. A. 84 EPC does not explicitly require that inconsistencies between the claims and the description which could render the scope of the claims unclear must be avoided, and the board does not provide any reasoning as to why it therefore does in fact impart such a requirement.
Secondly, the board’s statement conflates the requirement that the claims must be clear with the requirement that the claims must be supported by the description. In this decision, the board said that if the description contains matter which could render the scope of the claims unclear then the claims are not supported. However, these two requirements are independent: the claims must be clear and they must be supported by the description; not: the claims must be clear in order to be supported by the description.
Thirdly, the decision links clarity with the description. However, in A. 84 EPC the description is only referred to in regards to the support requirement. There is no basis in A. 84 EPC for linking clarity with the description. Because of this distinction, it is established practice of the EPO that the description cannot be used to render unclear claims clear. The corollary of this is that it cannot render clear claims unclear.
The decision of T1808/06, therefore, does not really consider the question of whether the EPC provides basis for requiring the description to be amended to conform to the claims. Rather, this decision is concerned with to what extent must the description be amended to conform to the claims, assuming that it must be. This is also true for many of the other cases cited as conflicting with T1989/18.
Therefore, whilst the conclusion of T1989/18 may conflict with what has been stated by Boards of Appeal in previous decisions, there is no conflicting reasoning. A referral to the Enlarged Board may not be needed as T1989/18 may be seen as a legitimate development of the case law.
Whilst this is considered a good decision, the EPO notably gave it a distribution code of “D”, meaning that this decision was not distributed to the other Boards of Appeal. Cynical observers may believe this to be the EPO trying to sweep this decision under the rug.
Regardless, the guidelines do currently state that amending the description to remove unclaimed embodiments is a requirement, and, whilst not legal basis, the examiners at the EPO tend to stick strictly to the guidelines. It may, therefore, be difficult to argue against such requirements on the basis of this decision, at least without going to appeal.
On the other hand, as noted in an EPO announcement of 12 November 2021, in the next version of the guidelines (due in force March 2022), the issue of amendments to the description is to be revisited.
This will be based, in part, on a workshop held by the EPO. According to the announcement, “The lively exchange resulted in a revised draft text for the 2022 edition of the Guidelines for Examination. Accordingly, the relevant sections in the guidelines will reflect users' requirements with a view to legal certainty in the post-grant stage of their European patents while considering the legal provisions and established case law of the Boards of Appeal.”
It will be interesting to see if, and how, the decision in T1989/18 is addressed. After all, it will almost certainly be cited by applicants who want to avoid amending the description in the way required by the current guidelines.
Andy Attfield is an associate at Reddie & Grose. He can be contacted at: andy.attfield@reddie.co.uk
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