[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.