EPO requirements for description amendments challenged

The European Patent Office (EPO)’s requirement for the description of a patent to confirm the claims at the final stage of grant or opposition proceedings is coming under attack, as Jakob Pade Frederiksen of Inspicos explains

A peculiarity of EPO practice is that the description is usually required to be brought into conformity with the claims at the final stage of grant or opposition proceedings.

According to the EPO Guidelines, part F-IV 4.3: “Any inconsistency between the description and the claims must be avoided if it could throw doubt on the subject-matter for which protection is sought.”

If the description includes embodiments not covered by the scope of the claims, amendment of the description is required by deleting those embodiments or marking them as not falling within the scope of the claims.

The Guidelines refer to Article 84 EPC, which stipulates that the claims shall be clear and concise and be supported by the description, as the legal basis for the requirement.

Rules 42(1)(c) and 48(1)(c) EPC have in some contexts been cited as a legal basis for requirements for description amendments; according to these provisions the description shall disclose the invention as claimed in such terms that the technical problem and its solution can be understood, and the description shall not contain any statement or other matter obviously irrelevant or unnecessary.

In two recent decisions, two chemical Boards of Appeal of the EPO have questioned to what extent a sound legal basis exists for these description requirements.

Recent decisions raise doubts

In T 1989/18 of 21 December 2021, it was held that, if the claims are clear in themselves and supported by the description, their clarity is not affected if the description contains subject-matter that is not claimed.

A subsequent decision, T 1444/20 of 28 April 2022, held that there is no requirement for the applicant to delete claim-like clauses or redundant subject-matter from the claims.

However, a number of other recent decisions, including decisions T 121/20, T 1024/18, T 2766/17 and T 2293/18 (all of which have emerged from non-chemical cases), maintain that adaptation of the description to the claims is a requirement under the provisions of the EPC.

Many patent practitioners hope that the current seemingly contradictory lines of case law will eventually provide a basis for an Enlarged Board of Appeal referral that could make a clean sweep.