Don't Mess With My Description!

In a development widely welcomed by European patent attorneys, the Board of Appeal at the European Patent Office (EPO) issued a written decision in T0056/21 on 14th October 2024, concluding that there was no basis in the European Patent Convention or Implementing Regulations to require applicants to bring the description of the European patent application into agreement with the claims.

In recent years, patent examiners at the EPO have become increasingly insistent that the description must be amended to bring it into agreement with the claims. In many cases, examiners have been proposing amendments of their own volition, to arrive at text they intend to grant (subject to acceptance by the applicant). Often, to save time, rather than considering the minimum amendments which might be made, examiners have proposed deleting vast swathes of text from patent applications.

The deletion of large portions of the description is potentially problematic for several reasons. Firstly, it may be that some of the deleted portions contained statements that helped provide context for terminology used in the claims, which might modify the meaning of the claims by their deletion. At best, this means that the claims might no longer have the same coverage as previously, with implications for infringement and patentability (novelty and inventive step). At worst, it may be that the claims are now taken to mean something never disclosed in the application as filed, and are therefore considered to add subject-matter relative to the application as filed. This could result in the patent being considered invalid. Secondly, the content of the description may have implications for the amendments available to applicants post-grant in some jurisdictions, meaning that an applicant’s options for amendment to restore validity during post-grant proceedings might be restricted.

In view of these risks, many European patent attorneys recommend that such broad-brush deletion of large portions of the description is rejected, in favour of either no amendments at all, or a more considered set of amendments that avoided the description contradicting the claims, but nevertheless retained much of the content. Unfortunately, such an approach is often time-consuming and therefore may significantly increase costs for clients. It can be particularly difficult to convince cost-conscious clients to proceed in this way when the EPO is offering an apparently simple route to grant by just agreeing to the proposed amendments.

In the present case (EP15700545.5), the description included a number of “claim-like clauses” which referred to subject-matter outside the scope of the claims. Over a 90-page document (on the long side for Board of Appeal decisions), the Board calmly and clearly explored their role and competencies, before moving on to consider the function of the claims and description, and finally exploring (and discounting) each of the possible routes by which the European Patent Convention could be considered to require the description to be adapted to bring it into agreement with the claims. Commendably, the Board considered many previous decisions by the Boards, as well as the intention behind the relevant provisions of the European Patent Convention. The reader is encouraged to discover the pleasure of reading all 90 pages of the document for themselves. Suffice it to say that the Board very firmly concludes that there is no legal basis in the European Patent Convention or Implementing Regulations to require applicants to bring the description of the European patent application into agreement with the claims.

At one point in the proceedings that led to this point, it seemed likely that the Board of Appeal would refer questions about this matter to the Enlarged Board of Appeal (which would have been able to deliver a more binding decision). In the end, the Board decided a referral was not necessary because the law was already clear on the point of description amendments.

Whilst the decision is highly welcome, it remains to be seen whether the Examining Division will change their practice (and if so, how quickly), particularly since this is not a decision of the Enlarged Board of Appeal, and is contrary to the prevailing instructions given to examiners in the Guidelines for Examination. Although the decision is only binding on the particular Examining Division handling this case, the reasoning is well considered, and would apply equally to any other cases where the EPO are insisting upon amendments to bring the description into agreement with the claims.

Hopefully, those responsible for amending the Guidelines for Examination read this decision with the attention it deserves and remove this onerous requirement from future versions of the Guidelines for Examination at the earliest opportunity.

Please contact Chris Cottingham, or your usual attorney if you have any questions about this issue.