Referral to the EPO Enlarged Board on description amendments
Over the past few years, the issue of whether the description of a European patent or application should be amended for consistency with any amendments made to the claims has been something of a hot topic. The European Patent Office (EPO) position has remained that the description should be entirely consistent with the claims, which results in examiners requiring sometimes extensive amendments to be made before an application can be granted or, during opposition proceedings, a patent can be maintained as amended. Patent applicants and attorneys have complained that such amendments are not necessary and add to the burden of getting an application granted by the EPO. Practice at the EPO has, however, remained unchanged despite some recent decisions from the Boards of Appeal finding against current practice. The issue is now finally coming to a head with a referral being made to the Enlarged Board of Appeal to decide on the question of whether such amendments are actually needed.
The case in question, T 697/22, relates to a patent that was opposed and then maintained in amended form by the Opposition Division. Both parties appealed and, following appeal proceedings, the Board decided that the claims on file according to an auxiliary request were allowable. Due to the amendments made to the claims, however, there existed an inconsistency with parts of the description that described certain claimed features as being optional. Based on what was then on file, the Board had to decide whether this inconsistency was in contravention of the requirement of Article 84 EPC that the claims must “be clear and concise and be supported by the description”. The Board therefore needed to decide whether this inconsistency made the auxiliary request allowable or not.
The Board reviewed the existing case law of the Boards of Appeal and found that some decisions were in favour of aligning the description with the claims while others were not. This resulted in two lines of case law that were clearly diverging.
According to the first line of case law, adaptation of the description was required when amendments to claims introduced inconsistencies. The leading case on this was identified as T 1024/18, which stated: “According to long established case law of the Boards of Appeal, [Article 84] has been interpreted as requiring the entirety of the description to be consistent with any claims found to meet the requirements of the EPC.” This reasoning was followed by numerous other decisions. In all these decisions, the common underlying principle was that there was a legal basis requiring the description to be consistent with the amended claims. This typically involved the application of Article 84, in some cases in combination with other provisions or more generally to the European Patent Convention as a whole.
According to the second line of case law, which had developed more recently, there was no legal basis for refusing a patent application if there was an inconsistency between any amended claims and the description. This line of case law was started by T 1989/18, which was followed most recently and prominently by T 56/21 (summarised and commented by us here). According to this line of case law, any inconsistencies between the claims and the description were the applicant’s responsibility alone. T 1989/18 for example found that, if the claims were clear in themselves, their clarity was not affected by the description containing unclaimed subject matter, while the Boards in T 2194/19 and T 56/21 rejected Article 84 and any other provision as a basis for adaptation of the description.
The Board also referred to a recent UPC decision from Sweden (AGFA NV v Gucci Sweden AB), which found that, although the description should always be referred to when interpreting the claims (which is now also a requirement at the EPO following G 1/24, commented on by us here), an apparent inconsistency between the claims and the description was not an impediment to upholding a patent with a broader description than a more limited claim. A patent proprietor could not, however, rely on such an inconsistency to interpret a limited claim.
In order to resolve the outstanding issue, the Board decided that the following questions needed to be referred to the Enlarged Board:
- If the claims of a European patent are amended during opposition proceedings or opposition-appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description of the patent, is it necessary, to comply with the requirements of the EPC, to adapt the description to the amended claims so as to remove the inconsistency?
- If the first question is answered in the affirmative, which requirement(s) of the EPC necessitate(s) such an adaptation?
- Would the answer to questions 1 and 2 be different if the claims of a European patent application are amended during examination proceedings or examination-appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description of the patent application?
The Board found that an answer to question 1 was needed to determine whether the patent in question was allowable or not and was necessary to resolve the clear disagreement in the divergent lines of case law. An answer to question 2 was needed to determine, if there was such a requirement, what the legal basis was. Finally, an answer to question 3 was needed because the same issue would arise during examination proceedings.
In summary, we will now finally get the chance to find out if the EPO’s current practice in requiring applicants to amend the description is correct or not. This is, however, likely to take some time for the Enlarged Board to resolve. We would not expect a final decision to arrive until next year. In the meantime, for any further advice on how to manage issues relating to description amendments at the EPO, please contact your usual Barker Brettell attorney or the author of this article.
