Last year we reported that the European Patent Convention (EPC) had introduced stricter requirements around amending the description of a European patent application to ensure it conforms with the allowable scope of patent protection.
As a result of these changes, what was previously a relatively straightforward task to make minor amendments to the description of a European patent, now requires a much more considered approach. A key driver for these stricter requirements is that third parties can more easily understand the scope of the granted patent, i.e., to improve clarity around which features are covered by patent protection and which are not. The requirements can therefore incur more time and cost on the part of the applicant, even though the potential benefits are not usually in the applicant’s own interests.
It is perhaps unsurprising that there has been a large backlash from patent applicants since the introduction of these new “requirements”, arguing that they are too stringent and find no legal basis. Indeed, some applicants have even filed appeals against the need to amend the description, and European Patent Office (EPO) Boards of Appeal have recently issued two decisions that have sided with this position.
The decisions
In a first in a decision (T1989/18), of 16 December 2021, a Board of Appeal considered whether there was legal basis in the EPC for refusing a European patent application on the grounds that the description had not been amended to conform with the allowed claims.
In line with the European Guidelines for Examination, the European patent examiner had initially refused the application because the description still specified subject matter as being part of the invention, where this subject-matter was broader than the allowed independent claims.
The applicant argued that there was no legal basis in the EPC for the requirement that parts of the description no longer covered by the claims should be marked as non-related to the invention or deleted. The Board of Appeal agreed, after searching for and failing to find any legal basis in the EPC.
However, a number of contradictory Board of Appeal decisions followed, which perhaps made it surprising when a more recent decision (T1444/20), of 28 April 2022, again found in favour of there being no legal basis for the new requirements.
In this case, the Board of Appeal specifically considered whether it is necessary for "claim like clauses" to be deleted from the description, as is suggested by the European Guidelines for Examination. On consideration, the Board of Appeal decided that the only legal basis in the EPC for this requirement is if the claims were not clear as a result. However, the Board of Appeal found that because the allowed claims were clear, i.e. without reference to the description, and the claim-like clauses in the description were clearly not part of the claims themselves, those clauses did not affect the clarity of the claims, and thus did not need to be deleted.
What does this mean for applicants?
Although these decisions are in favour of applicants not having to amend the description so stringently, the larger number of contradictory decisions suggests that this is not necessarily a guaranteed “win” for applicants going forward.
Indeed, the decisions that support the stricter description requirements have been given a higher “distribution code” by the EPO, meaning they have to be considered by other Boards of Appeal, whilst the decisions against description requirements do not have to be considered so readily.
In the majority of cases, it would therefore seem most efficient to continue to comply with the stricter description requirements, to ensure the application proceeds to grant in the most cost-effective way, i.e., without needing to enter into arguments with the examiner or a Board of Appeal.
However, as discussed in our previous article, the claims of the granted patent are interpreted in the context of the description. In scenarios where an amendment to the description could significantly affect the scope of protection afforded by the granted patent, these recent decisions would seem to provide a good starting point for pushing back against the need to make those amendments at all.