Description amendments at the EPO - the beginning of the end?

[This is a lightly edited version of a recent article I wrote for the Barker Brettell website.]

Practice at the EPO currently requires that, before an application is granted, the description must be brought into line with the allowed claims. Doing this can be time-consuming and may involve making difficult choices about what amendments are required and how they should be made. EPO examiners, who are required to follow the Guidelines for Examination, can be strict in applying this requirement, typically allowing no room for ambiguity between what is defined in the claims and what is described in the rest of the application. If, for example, something in the application is described as an "embodiment", current practice will tend to require this to be within the scope of the claims. Otherwise, the description of the embodiment may need to be deleted or mentioned as being not according to the invention. The nature of drafting patent applications, however, means that often there may be some doubt about what is described as an embodiment being within the claims, especially if the claims have been amended to obtain allowance.

There have been strong disagreements about the legal basis for the requirement of conforming the description to the claims. The current Guidelines for Examination states: "Any inconsistency between the description and claims must be avoided if it  could throw doubt on the subject-matter for which protection is sought" (F-IV 4.3). Justification for this is claimed to be from Article 84 EPC, which states that the claims of an application "shall be clear and concise and be supported by the description". Many, however, have questioned whether this requirement for support justifies a requirement for conformity. I have been firmly in the camp of Article 84 providing no justification for amending the description but, having raised this with senior people at the EPO, the prevailing view has been for a long time that "supported by the description" is taken to mean "in conformity with the description". The justification for this always seems to be that the public needs to be kept safe from dangerous Angora cats that manage to squeeze through examination with narrowly interpreted claims, which then suddenly become broader after grant. This is, however, a matter for national courts to decide and should not be for the EPO to determine pre-grant. 

A common feature in patent drafting is to include a section in the description in which a number of claim-like clauses are set out, the intention of which is to provide basis for amendments that might be made later, including after grant. Such clauses are specifically identified for deletion in the Guidelines, based on the reasoning that leaving them in the application would "lead to unclarity [sic] on the subject-matter for which protection is sought" (F-IV 4.4). This specific practice has now been put to the test by an applicant (F. Hoffman-La Roche) who, during examination, objected to deleting a set of claim-like clauses in an otherwise allowable application. The application was then refused for the sole reason that Article 84 EPC was not complied with. The applicant appealed this decision, which has now resulted in a recently published decision T 56/21 on the question of whether such amendments are actually required. 

In their appeal, the applicant argued that the Guidelines were not correct in stating that amendments to the description to conform to the claims were required, indicating that there was no legal basis for this. The Board of Appeal, however, took the view that it was not their job to criticise the Guidelines but instead to consider whether there was any justification for the practice from the law itself. The Board stated:

"The question to be addressed is that of whether Article 84 EPC provides a legal basis for objecting to an inconsistency between what is disclosed as the invention in the description (and/or drawings, if any) and the subject-matter of the claims, the inconsistency being that the description (or any drawing) contains subject-matter which is not claimed, and for requiring removal of this inconsistency by way of amendment of the description (hereinafter: "adaptation of the description"). If so, an application could be refused if the applicant did not amend the description accordingly, or did not agree to an amendment of the description proposed by an examining division" (point 2 of the Reasons for the Decision, emphasis in the original).

The question to be addressed was therefore a broader one than whether claim-like clauses would need to be deleted, and instead related to whether the description should need to be amended at all if there were any inconsistencies with the claims. The Board also referred to Article 69 EPC, which had been used as a further justification for removing any inconsistencies. This provision, which defines the extent of protection of a European patent or application, was considered by the Board to be separate from the assessment of patentability and intended to be used by national courts in infringement proceedings rather than for assessing patentability. The question was therefore limited only to whether Article 84 EPC provided any justification for removing inconsistencies between the description and claims. The purpose of Article 84 EPC, in the Board's view, was to ensure that there was a clear definition of the subject-matter in the claims in terms of technical features of the invention to allow examination for patentability. Claims should be clear from their wording alone, so clarity of the claims of an application should, in the Board's view, be key in examination. If the description were to be used to interpret the meaning of the claims this could, the Board suggested, lead to broad claims being granted based on a narrower interpretation from the description, which would lead to diverging decisions after grant.

On the key question of description amendments, the Board considered that the ordinary meaning of the words of Article 84 EPC ("The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description") did not support a requirement to bring the description into agreement with the claims by deleting or disclaiming subject-matter in the description which is not claimed. Some previous decisions from the Boards of Appeal had decided questions of whether a claimed invention was supported by the description, but these related to whether broad claims should be brought into line with the disclosure by limiting the claims. Other decisions related to bringing the description into conformity with the claims but, in the Board's view, these misconstrued the relationship between Articles 84 and 69 EPC as well as the relationship between the claims and the description. Given that the two provisions should be applied independently in separate situations, with Article 84 before grant and Article 69 after, the Board concluded that there was no rationale for adapting the description to match the subject-matter claims. Matching the description to unclear claims would fail to provide legal certainty, while adapting the description to clear claims would likewise fail to improve legal certainty. The attempts by the EPO and some previous Boards of Appeal may have been aimed at reducing variability in the extent of protection of granted patents, but in the Board's view this encroached on the competence of the national courts and legislators.

In conclusion, the Board decided that Article 84 EPC did not provide a legal basis for a mandatory adaptation of the description to claims of a more limited subject-matter. While the Board had initially envisaged referring a question to the Enlarged Board, in the end they considered that there was no need for this because the requirements of Article 84 EPC for the purpose of examination were unequivocal. The wording left no room for requiring, in examination, that the description be adapted to allowable claims to match their subject-matter. The Board was also not persuaded by the EPO's reasons for requiring the description to be adapted to allowable claims, which were to provide a more uniform determination and better predictability of the extent of protection of granted patents. The Board considered that this could only be achieved if the granted claims were clear in themselves. Adapting the content of the description to match the subject-matter of allowable claims would reduce the reservoir of technical information that could be used in national courts to determine the protection conferred by the granted patent. The Board therefore allowed the appeal and ordered the Examining Division to grant a patent on the basis of the specification with the claim-like clauses intact. The case was remitted to the Examining Division, which has now issued a Rule 71(3) communication with the claim-like clauses intact. 

While the reasoning behind this decision is complex and lengthy, the conclusion is clear: there is no legal basis for requiring applicants to amend the description during examination to match allowed claims. The decision flatly contradicts current practice at the EPO, as defined by the current Guidelines for Examination. What happens next is up to the EPO, unless a further Technical Board decides the issue the other way and finally refers questions to the Enlarged Board. I expect arguments between interested parties and the EPO to continue over at least the next few months, in particular when it comes to the EPO deciding on how the Guidelines are to be amended next year. 

For those wishing to keep a close eye on what happens, I would recommend attending the UNION-IP Winter Roundtable on 28 February 2025, where the issue will be discussed in more detail. 

Some Thoughts on G 1/24

A few months ago I attended an online seminar hosted by the EPO in which the question of interpretation of claim features was discussed. What was interesting about this was the clear difference between how the EPO Boards of Appeal interpret claim features compared to national courts. The difference was about whether the description of a patent should be used to interpret how broad a particular claim feature should be. If the views of an English judge, a Dutch judge and a member of the Enlarged Board of Appeal are anything to go by, the view from the EPO is that a broad claim feature should not be given a narrower interpretation based on what the description states, while national courts will tend to interpret a broad claim feature narrowly based on the description. 

Grok's idea of an Angora cat
(see Jacob LJ's comments here)

This difference in interpretation, while on the face of it perhaps surprising, make some sense when considering that the EPO Boards of Appeal can only determine questions of validity, while national courts determine infringement as well, although this does not fully explain it. If a broadly interpreted claim before the Boards of Appeal is found to be invalid, e.g. for lacking novelty or inventive step, it doesn't make any difference if a particular feature in the description provides a narrow interpretation that could make it valid unless that feature is put in the claim. This is similar to practice before the Examining Division or Opposition Division, where an explanation of what a claim feature means will usually result in that needing to be included in the claim wording. 

If the same claim is put before a national court, the judge will usually be assessing the claim features for infringement as well as for validity, so if the feature is instead interpreted narrowly this may still result in effectively the same outcome, i.e. the claim is only valid if interpreted narrowly as if the narrow interpretation were included in the claim itself. Infringement can then be assessed based on the narrow interpretation, which may result in a claim that is valid but not infringed. The question is whether this difference in interpretation matters. Should interpretation of claims be aligned between the EPO and national courts, or is a difference something that can be allowed to continue given that their roles are different? 

The seminar I mentioned only covered the question of interpretation of broad claim features, but it's also worth considering what would happen if a claim feature is instead interpreted narrowly on the face of the claim language alone but could (or perhaps should) be given a broader interpretation based on the description. The EPO's current way of dealing with this difficulty is to require applicants to ensure that the language of the description is in conformity with that of the claims, using Article 84 EPC as a (possibly flawed) justification for this. This approach is much contested, with applicants often finding it difficult to comply with EPO practice without introducing problematic amendments, which may themselves fall foul of other provisions such as added matter under Article 123(2) EPC. The Boards of Appeal have also disagreed over the past few years on whether such amendments are even required, with the latest contribution in T 56/21 coming down firmly on the side of no amendments being necessary at all. Practice at the EPO has nevertheless been evolving towards a more strict view of making the description be entirely consistent with the claims. The practice itself is, however, not always strictly enforced and there will be many granted patents that contain inconsistencies between what the claims state compared with what is stated in the description. 

The issue of claim interpretation is now one that is sufficiently important for questions to be raised to the Enlarged Board of Appeal, which was done in decision T 439/22. The issue in the decision under appeal relates to whether the term "gathered sheet" in claim 1 of the opposed patent should be interpreted narrowly according to how the skilled person would view it or if it should be given a broader meaning based on what the description stated. The Opposition Division rejected the opposition based on the term having a narrow meaning, while the opponent argued that it should be interpreted more broadly, which would result in it encompassing the prior art. The patent in question therefore stood or fell based on whether the description should be used to impart a broader meaning to an otherwise clear claim feature.

The questions now being raised to the Enlarged Board are the following:

1. Is Article 69(1), second sentence EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC to be applied to the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC?

2. May the description and figures be consulted when interpreting the claims to assess patentability and, if so, may this be done generally or only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation?

3. May a definition or similar information on a term used in the claims which is explicitly given in the description be disregarded when interpreting the claims to assess patentability and, if so, under what conditions?

On question 1, the issue of whether Article 69 EPC should be used by the EPO at all, or if this is just a guide for national courts, may be key to resolving any inconsistency in approach. Since courts across Europe, and now including the UPC, need to be aligned as far as possible with how they interpret granted patents for infringement as well as validity, even though Article 69 EPC is primarily concerned with interpretation for infringement, interpretation for validity at the EPO should ideally be in line with this. In general therefore, the principles in Article 69 may be relevant to patentability, but should not be a primary concern during examination when assessing patentability of an invention under Articles 52 to 57 EPC. As it turns out, T 56/21 has already decided on this specific point and concluded that Article 69 EPC should not be relevant when considering patentability during examination. Instead, Article 84 EPC should be the key requirement during examination, while Article 69 EPC should only be of concern when considering infringement. Following this approach, the answer to question 1 should be a clear no, because Article 84 should instead apply during examination. Personally I would have considered an answer that was more like a yes but with the proviso that Article 69 should not be a primary concern during examination (which appears to be what happens in practice anyway).

Question 2, which does relate to Article 84 rather than Article 69, may be answered by way of a hypothetical example. If, for example, a claim has wording that on the face of it would appear to be clear to the skilled person but the supporting description provides a broadening interpretation by way of a range of examples intended to be covered by the claim wording, it does not seems to me to be correct to take only the narrow wording of the claim and ignore the broader interpretation from the description because this would enable the applicant/proprietor to argue for a narrow interpretation to obtain grant or maintenance of the patent, following which they could argue for a broader interpretation for infringement (known as the 'Angora cat' problem). File wrapper estoppel would not be an appropriate counter to this, because this is not uniformly applied across Europe. The converse, however, should not be a problem because, if a term in a claim is broad and would clearly be understood as such by the skilled person but the description imparts an unambiguously narrower interpretation on the term, granting such a claim would not adversely affect third parties because any infringement issue is for the national (or UPC) courts to decide, i.e. whether such courts interpret the term for infringement broadly or narrowly. The answer to question 2 should therefore be that the description and figures should always be consulted when interpreting features in claims to assess patentability, particularly if these impart a broader scope to any features than would be apparent to the skilled person from the claim wording alone. Article 84 could be used to resolve this, because a narrow claim term that is given a broader meaning in the description could be seen as unclear due to the narrow meaning not being supported, which would require an amendment to be made either to the claims or to the description. 

On question 3, the answer could be found by considering what purpose the definition provides. Article 84 is often used to require that unclear terms in a claim for which there is a clarifying feature in the description need to be amended before grant to make them clear because the general view during examination is that the claim wording needs to be clear by itself. The claim wording may therefore need to be amended during examination to incorporate a definition from the description if it would be unclear otherwise. However, if the claim features are clear in themselves, a definition explicitly given in the description for a particular term used in the claims can only result in a narrower definition of the term so, following from the answer to question 2, can be disregarded for assessing patentability if the term, interpreted more broadly without the definition, is still patentable. If the claims are not patentable without the explicit definition, the definition (or something else) should be incorporated into the claims. The answer should therefore be that such a definition could be disregarded if the claim is clear by itself and still patentable, otherwise the definition may need to be incorporated into the claim. How this is done will depend on whether the situation is for an application undergoing examination, in which case a clarity objection can be raised and an amendment made as a result, or if the situation is for a patent during opposition, in which case clarity cannot be raised on the claims as granted. Instead, during opposition the claims should be interpreted in a way that can make sense to the skilled person and patentability assessed based on that, preferably without imparting a narrow definition from the description because this would again raise the Angora cat problem. If it turns out that the patent is invalid based on this assessment, it will then be up to the patentee to decide what amendments may be needed to make it patentable. 

The above are only a preliminary few thoughts from me on the questions, which could quite reasonably be answered differently. My mind is not yet set on the matter, so it would be interesting to see if anyone has any thoughts to contribute. 

J 1/24: Can an application be pending after grant?

Do I actually need to be here?

According to Rule 36 EPC, a divisional application may be filed relating to any pending earlier European patent application. This used to mean that a divisional could only be filed until just before an earlier application was granted, refused or finally deemed withdrawn. There was a long running argument in the early 2000s about the effect of filing an appeal if an application was refused, which would usually happen at the end of oral proceedings before the Examining Division. Since some applicants wanted to make sure they didn't lose the opportunity to have another go, it used to be common to file a divisional application just before oral proceedings in case the application was refused because, once the application was refused, it would then no longer be pending. An alternative would be to file an appeal against the decision to refuse, which would have the effect of suspending the refusal while the appeal was pending. Preparing and filing an appeal just to get a divisional filed was, however, an expensive way to go about it.

The question then was whether it was actually necessary to file an appeal, or if a notice of appeal and then grounds of appeal would need to be filed for any divisional filed after the date of refusal to be valid. This resulted in conflicting decisions, with the Board in J 28/03 finding that the suspensive effect of an appeal depended on the outcome of the appeal, meaning that the status of a divisional could remain uncertain for years. This was finally resolved by a referral being made to the Enlarged Board in J 2/08, which asked whether a refused application could be considered pending within the meaning of Rule 36(1) EPC until expiry of the time for filing a notice of appeal, even if no appeal was actually filed. The Enlarged Board decided in G 1/09 that the answer to this was yes. Nervous applicants could thereafter go to Examining Division oral proceedings without fearing that their opportunity to file a divisional would be lost in the event the application got refused. 

So much for applications that were refused, but what about applications that are granted? A decision to grant a patent is issued by the EPO once the grant procedure is completed, i.e. claims translations are filed, renewals are up to date and the grant fee and any excess claims fees are paid. The decision states a future date on which the application will be granted and, as from that date, the application is no longer pending. The current understanding is that any divisional has to be filed at the latest by the day before the date of grant. But what happens if the applicant files a notice of appeal against the decision to grant? Is this even a valid thing to do, and if so does this suspend the effect of the decision to grant, allowing more time for a divisional application to be filed? 

Implausible though it appears, this actually happened in the case of European application 19209269.0, for which a decision to grant issued on 18 February 2021, indicating that the application would be granted on 17 March 2021. The applicant filed a notice of appeal on 16 April 2021, requesting that the decision to grant be set aside, which was followed by grounds of appeal filed on 18 June 2021, arguing that, due to a change in practice by the EPO regarding Article 84, the applicant was adversely affected by amendments made to the description before grant. In the interim, however, the EPO issued a communication indicating that the original decision to grant maintained its effect and remained valid, but (rather confusingly) that the date of publication of the mention of grant on 17 March 2021 would be deleted. The applicant had by then filed a divisional application which, if the original date of grant was maintained, would have been invalidly filed. 

The situation then developed further when, on 7 April 2022, the applicant withdrew its appeal and, on 18 May 2022, the EPO Receiving Section issued a notice of loss of rights on the divisional application, stating that it could not be proceeded with, referring to the decision of J 28/03 (see above).  The applicant then requested a decision, arguing that the application had been validly filed as a divisional. The decision, which was based on the reasoning from J 28/03, stated that the divisional had not been validly filed because the parent had already been granted and every further action was dependent on the outcome of the appeal proceedings. The suspensive effect of the appeal only interrupted the procedure until the appeal was withdrawn. The applicant then appealed this decision, which has now led to issuance of the Legal Board of Appeal decision in J 1/24. 

The question for the Board in this case was whether the parent application was still pending according to Rule 36 EPC when the divisional application was filed. Although there was no definition in the EPC about what constituted a pending application, it was established that decisions of the EPO "do not become final until expiry of the period for seeking ordinary means of legal redress" (reasons, point 7). This was decided in G 1/09 in relation to the period for filing a divisional application during the period for filing a notice of appeal following refusal of an application, although the Enlarged Board also indicated (in obiter comments) that the pending status of an application ceased on the day before mention of its grant was published. In this case, the Board found the principle in J 28/03 that the status of the parent application depended on the outcome of the appeal unconvincing, and instead found that an appeal did have suspensive effect regardless of whether this was against refusal or grant. This was supported by the reasoning in G 1/09 that an application that has been refused is still pending for the purpose of Rule 36 EPC during the period for filing a notice of appeal. The same conclusion should therefore apply to a decision to grant. Given that the date of grant was in this case deleted after the notice of appeal was filed, the parent application was still pending when the divisional application was filed, meaning that the divisional was validly filed regardless of the eventual outcome of the appeal. 

This new decision does not appear to fully resolve the issue of whether a divisional application can be filed after the date of grant in the same way as G 1/09 because it seems to rely on the date of grant being deleted as a result of a notice of appeal being filed. Therefore, unlike in the case of a decision to refuse an application, it appears that a notice of appeal still has to be filed for the application to be pending when a divisional is filed. It does, however, appear to give applicants a new possibility in the rare event of an applicant changing their mind on whether to file a divisional after it has already become too late. Will it be used in practice? I suspect rarely, but it's one to keep in the back pocket for those rare occasions when something does not go as planned.