The EPO’s Enlarged Board of Appeal is considering legal questions regarding whether and to what extent the description of a patent application must be amended to remove inconsistencies with amended claims. The President of the EPO has submitted comments on this case (G1/25).
The three questions appear below, along with a summary of the President’s answers:
Yes.
Article 84 alone, and also supported by Article 69 and Rules 42 & 48.
No, all requirements of Article 84 must be met before a patent can be granted.
Background to the issue of description amendments
The EPO Guidelines for Examination 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 Article 84, second sentence, or objectionable under Article 84, first sentence. Consequently, EPO examiners often require either deletion of subject matter from the description no longer falling within the scope of the claims or the addition of text to identify any subject matter no longer falling within the scope of the claims.
The EPO’s Boards of Appeal have mostly upheld this requirement in the Guidelines, although with only limited consensus on the precise legal basis in the European Patent Convention for the requirement. Some decisions relied on Article 84 EPC alone (that sets out the requirement for clarity of the claims and for support by the description), while others cited Article 84 EPC combined with other legal provisions of the EPC. However, there have also been a limited number of decisions that found no legal basis in the EPC for the description amendments required by the Guidelines.
Influence of the Unified Patent Court
The EPO has expressed that it wants to ensure harmonisation with the decisions of the Unified Patent Court, for example in the decision of G1/24. The Unified Patent Court issued Decisions in Agfa v Gucci and N.J. Diffusion v Gisela Mayer which indicated that, when amendment of the claims leads to an embodiment being excluded from the scope of protection, the excluded embodiment should be deleted before grant. This supports the Guidelines position that amendments to the description must be made in light of amendments to the claims to remove inconsistencies.
The EPO President’s comments
In summary, the President upholds the current practice of the EPO. The President argues that Article 84 EPC provides the legal basis for requiring adaptation of the description in case of inconsistencies with the claims. Moreover, the President believes that this requirement must be complied with before a patent can be granted. In opposition proceedings, according to the President, inconsistencies in the description must be removed if they arise as a result of an amendment to the claims.
The comments answered the three questions in a logical order, rather than the order in which they were posed.
Question 2 – legal basis for requiring description amendments
The President argued that Article 84 alone provides the legal basis for requiring description amendments to remove inconsistencies with amended claims.
The second sentence of Article 84 says the claims “shall be clear and concise and be supported by the description”. The President interprets these as three independent requirements and notes the reversibility of the final requirement, namely that the description must support the claims. It is then argues that the description must be amended in light of claim amendments to remove inconsistencies to ensure this requirement to support the claims to be met.
In a further nod to harmonisation, the President referred to the Unified Patent Court cases mentioned above, namely Agfa v Gucci and N.J. Diffusion v Gisela Mayer, and noted the comment that non-claimed embodiments should have been deleted from the description before grant.
The President also commented on the other provisions sometimes cited as supporting the requirement to make description amendments. The conclusion was that these provisions alone did not provide the legal basis but did support Article 84’s requirement.
It was noted that the requirement for claim interpretation in post-grant proceedings set out in Article 69 does not directly apply to EPO proceedings. This article requires the description to be consulted when interpreting the claims. The President suggested that the correct implementation of Article 84 is required to enable Article 69 to work properly.
Rule 48’s requirement that a “patent application must not contain irrelevant or unnecessary matter” was said to complement Article 84, i.e. embodiments outside the scope of the claims may be irrelevant.
Rule 42’s requirement that the “description must disclose the invention as claimed” was also said to complement Article 84.
Question 3 – description amendments during examination
The President then concluded that description amendments to remove inconsistencies with amended claims are required during examination proceedings.
In fact, the President went as far as to say that an application must meet all requirements of the EPC including all the requirements of Article 84 if a patent is to be granted.
The President also considered claim-like clauses that may be present in the description. The President noted that while it was acceptable for such clauses to be present on filing, the clauses should be deleted before grant.
Two particular cases were noted where it was easy to justify deletion of clauses. Where clauses do not fall within the scope of the claims, they also fail to meet the requirements of Article 84 to support the claims. Where clauses merely repeat the subject matter of the claims, they can be deemed unnecessary within the meaning of Rule 48.
There is a further case where clauses are used to present optional features not included in the dependent claims. The President believes such clauses should be deleted and, if cover for such subject matter is required, it should be presented as additional dependent claims: the subject matter would then be subject to the provisions regarding claims including, of course, the provision regarding additional claims fees.
Question 1 – description amendments during opposition
The President then indicated that the answers to questions 2 and 3 would apply the same for both examination and opposition proceedings. Hence, description amendments to remove inconsistencies with amended claims are also required during opposition proceedings.
Article 84 is not a ground of opposition. However, the decision in G3/14 made it clear that any claim amendment made during opposition proceedings must be examined for compliance with Article 84. The President believes that this must apply to all requirements of Article 84. including the requirement to amend the description to remove inconsistencies with amended claims.
The form of description amendments
An issue that did not seem to receive much, if any, attention in the President’s comments was the form of the amendment required. Should amendments remove inconsistent subject matter from the description, or is it enough to provide a clear indication that the subject matter does not fall within the scope of the claims?
There may well be a preference for the deletion of inconsistent parts of the description as per the suggestion of the Unified Patent Court. However, it is hoped that the EPO will recognise that it is sometimes more appropriate to add a statement that certain features do not fall within the scope of the claims.
For example, some patents describe a first embodiment in detail and then the following embodiments describe only additional features to avoid repetition. In such cases, deletion of the first embodiment would also remove the description of many of the features of the further embodiments. Saying that the embodiment is outside of the claims seems far preferable to trying to move the subject matter into a description of a later embodiment. The latter would present a clear risk of adding subject matter.
Takeaway
The President supports the current position of the EPO to require description amendments to remove inconsistencies with amended claims.
If the Enlarged Board of Appeal agree, it should maintain the high quality of patents granted by the EPO. Consistency between the description and claims should be assured. As such, the life of courts when interpreting claims in accordance with Article 69 and its Protocol should be made easier.
However, the President’s conclusions go against those of the majority of people who have filed comments on G1/25. Most comments have been filed by professional representatives and their associations, either from private practice or in-house departments. Generally, the comments do not agree that the description requires amendment to remove inconsistencies with amended claims.
Reasons against the requirement include the disproportionate efforts and costs to applicants and patentees in making the amendments and the risk of introducing added matter. Many submissions consider the requirement as unnecessary and suggest courts are capable of resolving any inconsistencies. Some submissions note that most other patent offices have no such requirement.
Whether the Enlarged Board of Appeal will give much weight to these contrary views remains to be seen. The EPO places many obligations on applicants and patentees when putting applications into order for grant and opposed patents into order for maintenance. The Enlarged Board of Appeal may well view amendment of the description as just another requirement, and expect the applicants/patentees to bear the risks and expense in the same way they do for the other requirements.
For further details, please contact Nigel Tucker or your usual Boult advisor.
