The Background
European patent Examiners at the European Patent Office (EPO) often impose a requirement that the description of a patent is in conformity with the claims prior to grant.
This may sound trivial, but in practice the steps required to meet this requirement after claim amendments can be time consuming. Furthermore, great care must be taken to ensure that parts of the description relevant for claim interpretation are not removed or reworded in a way that could cause issues in future. Although bringing the description into conformity with the claims is a historic requirement, an update to the EPO Guidelines for Examination in March 2021 expanded on this requirement, which seemingly increased the burden placed on applicants and attorneys.
By way of example, and with reference to Part F – Chapter IV – 4.3 (iii) of the 2021 version of the Guidelines for Examination in the EPO, there is a requirement that embodiments not covered by the independent claims are deleted, or a clear statement is made indicating that the embodiments are not covered.
Deletion of subject matter, particularly at a late procedural stage, is generally undesirable and would likely require careful deliberation to avoid omitting something important. The alternative of leaving the embodiment in but with an explicit statement that it is not covered by the claims is also problematic as it may influence claim interpretation in unexpected ways, particularly where equivalents are concerned.
EPO Board of Appeal Case T1989/18
A recent appeal assessed by the EPO Board of Appeal considered the legal basis for the requirement that the description is in conformity with the claims.
The applicant appealed a decision from the examining division to refuse their European patent application. The examining division found that the claims were allowable but the requirements of Article 84 EPC were not met because the description included subject matter that was broader that claim 17.
Article 84 EPC relates to clarity and is as follows:
“The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description.”
In assessing Article 84 EPC, the Board of Appeal concluded that its requirements were met and arrived at the following conclusion.
“In particular, if the claims are clear in themselves and supported by the description, their clarity is not affected if the description contains subject-matter which is not claimed.”
The Board of Appeal also considered Article 69 EPC, Rule 42(1)(c) EPC and Rule 48(1)(c) EPC, and ultimately concluded that none of these could serve as a legal basis for refusal of the application.
In summary, the Board of Appeal concluded that there was no legal basis for the requirement to have the description amended to be in line with the claims.
Conclusions
From this decision there can be some optimism of a step back in relation to the requirement that the description is in conformity with the claims.
The most recent version of the EPO Guidelines (for 2022) has recently been published on the EPO website and it is possible to view a “tracked changes” version of this document to see how it compares with the 2021 version. Notably, the paragraph relating to deleting embodiments, or clearly indicating that they are not covered by the claims has been removed. Unfortunately, this paragraph does appear to have been reintroduced with slightly different wording, suggesting that rather than simply removing the requirement, there has been an attempt to further clarify its meaning.
Despite this, it is encouraging that the following statement has been added:
“For borderline cases where there is doubt as to whether an embodiment is consistent with the claims, the benefit of the doubt is given to the applicant.”
Time will tell how this requirement evolves, but hopefully there will be a softening in the approach. Furthermore applicants and their representatives have some scope to use T1989/18 and the updated Guidelines to challenge the requirement that the description is in conformity with the claims, particularly in cases where such an exercise would be onerous or risky.
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