For several years now the European Patent Office (EPO) has insisted upon the adaptation of the description to avoid inconsistencies with amended claims. However, various Boards of Appeal have taken different views on whether there is legal basis in the European Patent Convention (EPC) for such a requirement, and it has caused many headaches for both European and non-European Patent Attorneys. A Board of Appeal has, at last, referred questions on the matter to the Enlarged Board of Appeal (case G1/25) that will hopefully lead to some final clarity on the matter.
Questions referred
The Technical Board of Appeal in case T 697/22 has referred to the Enlarged Board of Appeal the following questions:
The answers to these questions by the EBA would be very helpful in resolving the issue of whether the EPC requires the description to be amended to conform to amended claims, and what the exact basis for such a requirement is.
Background to the issue of description amendments
The current requirements regarding amendments to the description were introduced to the EPO Guidelines in 2021.The Guidelines require that “any inconsistency between the description and the claims must be avoided if it casts doubt on the subject-matter for which protection is sought, thereby rendering the claim either unclear or unsupported under Art. 84, second sentence, or objectionable under Art. 84, first sentence.” This often involves the applicant being required to delete subject matter in the description which is not covered by the claims or to explicitly state in the description what is and is not covered by the scope of the claims.
There have been a number of decisions of Technical Boards of Appeal which have upheld the requirement in the Guidelines that the description be adapted to be in line with amendments which have been made to the claims and found legal basis in the EPC. However, as noted by the Board in T 697/22, the legal bases upon which these decisions relied varied and there was no consensus on one precise legal basis. Many cases cited Article 84 EPC alone as the legal basis, while others cited Article 84 EPC combined with other legal provisions of the EPC. T 1024/18, wherein the board considered Article 84 EPC to be the legal basis for the description amendment requirement, is itself cited in a number of following decisions where the requirement to amend the description was upheld.
However, there have also been contradicting decisions in recent years. In the recent example of T 56/21 (see our insight here), the Board found that there was no legal basis in the EPC for requiring that the description be adapted to match allowable claims of a more limited subject-matter.
The referral of T 697/22
The referring Board of Appeal in T 697/22 identified these as two clearly diverging lines of case law and, as a result, referred the questions above to the Enlarged Board of Appeal.
In T 697/22, claim 1 of an auxiliary request, which had been found allowable, was narrowed such that it was more limited than the claim as granted. However, the corresponding paragraphs of the description were not amended, and so remained broad. The opponent in T 697/22 objected that this meant that the amended, narrower claim was not supported by the description as required by Article 84 EPC.
The referring Board considered that the question of whether adapting the description to the amended claims to remove inconsistency between the two was necessary to comply with the requirements of the EPC would be decisive to the outcome of the case.
While case T 697/22 relates to opposition-appeal proceedings, the referring Board has also included the third question given that the same divergence of case law exists of examination and examination-appeal proceedings as for opposition and opposition-appeal proceedings. It will be interesting to see if the Enlarged Board of Appeal answers this question, since it is arguably beyond the scope of the opposition proceedings before the referring Board.
The referring Board also highlight that the fundamental character of the questions they have posed is reinforced by the order in G 1/24, which states that the “description and drawings shall always be consulted to interpret the claims when assessing patentability”. They consider that this decision means that the question of discrepancies between the description and amended claims is of even greater significance.
Hopefully, insight from the Enlarged Board of Appeal on these questions will provide much-needed final guidance as to the extent of amendments to the description needed to meet the requirements of the EPC.
Here is a link to the interlocutory decision with the referred questions.
