Description Amendments - Finally a Referral?

We have been waiting a long time for a Board of Appeal to finally refer questions to the Enlarged Board on the long-running controversy of whether, or to what extent, amendments to the description are required for European patents and patent applications. Given recent developments, we may now be getting near the point where this actually happens.

In brief, the issue of description amendments is, as far as the EPO is concerned, a settled matter. In their view it is necessary for the description to be in line with the claims to avoid any inconsistencies. According to the current version of the Guidelines for Examination, F-IV, 4.3, "The applicant must remove any inconsistencies by amending the description either by deleting the inconsistent embodiments or marking appropriately so that it is clear that they do not fall within the subject-matter for which protection is sought". In many cases, this leads to extra time and trouble being expended when attempting to get an application allowed. Many have also objected that the supposed justification for this requirement simply is not there in the EPC. Article 84, which is used by the EPO in support, simply requires the claims to be "clear and concise and be supported by the description". If the description provides support for the claimed invention, does it even matter if it also includes support for things that are not part of the claimed invention? There are also cases where it may not be clear where the line should be drawn between what is described in the application as a whole as embodiments and what is actually within the scope of the claimed invention. Forcing applicants, and their attorneys, to make a decision during prosecution that can affect how the invention may be interpreted post-grant (since courts invariably insist that the description is always used to interpret the claims) may be considered unfair, if not actually unjust. 

Those of us who have been keeping a close eye on this thought that we were going to get a referral last from the appeal case of T 56/21. In the end, however, the Board decided that a referral was not needed because in their view Article 84 did not provide any justification for amendments to the description at all. I wrote last year about this lengthy decision here. The EPO, however, has been taking no notice at all of the decision (which is, of course, only binding on the case in question) and maintains that their practice is justified. The Guidelines therefore remain unchanged. 

However, in another appeal case, T 697/22, there has been some movement on the matter. Following oral proceedings held in December 2024, the Board indicated that they were minded to refer questions to the Enlarged Board. A communication has recently issued with some proposed questions, which the Board has asked the parties involved to comment on before they make a decision on a referral. Unlike in T 56/21, the Board found that there was divergent case law on the subject of description amendments and a referral may be needed to resolve the question of whether these were in fact required. The proposed questions are the following:

1. If the claims of a European patent are amended during opposition proceedings or opposition-appeal proceedings, and the amendments introduce 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 such that the inconsistency is removed? 

2. If the first question is unconditionally answered in the affirmative, which requirement of the EPC necessitates such an adaptation? 

3. If the first question cannot be unconditionally answered in the affirmative, what are the conditions under which adaptation of the description is necessary to comply with the requirements of the EPC? 

4. Would the answer to these questions change if an inconsistency existed between the claims and the description of a European patent application?

The parties have been given until 26 May 2025 to provide comments, following which the Board will decide whether a referral is to be made, and if so what the final form of the questions should be. 

For now, all we can do is wait and see what happens. It is, however, interesting to note that the draft questions avoid mentioning Article 84 EPC at all. This is clearly deliberate, since question 2 asks whether there is any provision in the EPC that requires the description to be adapted to the claims. If T 56/21 is to be followed, there is in fact no such provision. The Enlarged Board, however, may find differently.