The EPO’s updated Guidelines for Examination for March 2021 introduces a significant change regarding amendments required to the description before a European Patent Application can be granted.
The EPO has for many years required that inconsistencies between the description and the claims be avoided, because these can lead to a lack of clarity and can cast doubt on the subject matter for which protection is sought. Particular inconsistencies may arise when the description and/or drawings contain subject matter that is not covered by the claims. This may occur, for example, where the claims have been amended (e.g. narrowed in scope) during prosecution or where the application includes multiple inventive concepts.
Until now, it has been possible in many cases to remove such inconsistencies by amending the word “invention” to “disclosure” and the word “embodiment” to “example”, where appropriate. Some Examiners have allowed applicants to avoid extensively amending the description based on the addition of generic statements to the description, such as “embodiments not falling under the scope of the appended claims are to be considered merely as examples suitable for understanding the invention”.
The amended Guidelines make it clear that such amendments are not sufficient to resolve inconsistencies and prescribe the way in which the description should be amended to address these inconsistencies. It is also stressed (Chapter H-V, 2.7) that a Summons to Oral Proceedings should be issued if the description is not adequately brought into conformity with the claims.
Embodiments Not Covered by the Independent Claims (Chapter F-IV, 4.3)
The amended Guidelines are explicit that embodiments in the description that are not covered by the independent claims must be deleted, unless they can reasonably be considered to be useful for highlighting specific aspects of the amended claims. If such subject matter is not deleted, then the fact that an embodiment is not covered by the claims must be “prominently stated”. This change in practice is supported by some existing case law of the EPO’s Boards of Appeal, such as T‑1808/06. This case law was not described in the previous version of the Guidelines and its principles have not previously been applied consistently by all Examining and Opposition Divisions.
The amended Guidelines do not define what is meant by “prominently stated”, but they do provide an example of an acceptable way of stating the fact that an embodiment is not covered by the claims. The example provided relates to claims that are amended to recite a vehicle employing electric motors, but one of the embodiments in the description and drawings employs a combustion engine instead. In this case, the embodiment relating to a combustion engine can be retained provided that it is described as an “embodiment not covered by the claimed invention”.
The amended Guidelines do not consider a common scenario, in which a Patent application describes a complex system (e.g. a telecommunications network) to provide the context surrounding an invention, but only includes claims directed to a small component (e.g. one server) of the system. In these cases (and other similar situations), the new Guidelines could introduce a significant burden on applicants, requiring the entirety of the system except for the claimed component to be marked prominently as being “not covered by the claimed invention”. This may require extensive revisions to applications.
Optional Language Preceding Features of the Independent Claims (Chapter F-IV, 4.3)
The amended Guidelines further emphasise that features required by the independent claims may not be described in the description as being optional. Patent descriptions often describe features using wording such as “preferably”, “may” or “optionally”. The amended Guidelines are clear that the description should be amended to eliminate this language whenever a feature of an independent claim is described, to avoid there being any contradiction between the claims and the description. Applicants must take care when making such amendments not to introduce new combinations of features that are not directly and unambiguously derivable from the application as originally filed. This simply codifies the existing common EPO practice.
Field and Summary of the Invention (Chapter F-II, 4.2)
The amended Guidelines note that if the claims are amended, the “field of the invention” and “summary of the invention” sections may also need to be amended.
For example, where the scope of an independent claim is narrowed, it may be necessary to amend the field of the invention or the summary of the invention to correspond with the narrower claim scope. It is permissible to use statements like “the invention is set out in the appended set of claims”, instead of repeating the claims in the summary section of the description.
Excluded Subject-Matter (Chapter F-IV, 4.3)
The amended Guidelines require that any subject matter that is excluded from patentability must be excised, reworded such that it does not fall under the exceptions to patentability, or prominently marked as not being according to the claimed invention.
Examples of subject matter that may need to be excised or marked as not claimed include: methods for treatment of the human or animal body by surgery or therapy; and diagnostic methods practised on the human or animal body. Certain types of subject matter may be more easily reworded than others to be in line with the amended Guidelines.
Claim-Like Clauses (Chapter F-IV, 4.4)
The amended Guidelines state that claim-like clauses in the description must be deleted or amended to avoid claim-like language prior to grant. These are frequently used to provide basis for claims for one or more Divisional applications within a single Patent application. It is also common to include the claims of a parent application as claim-like clauses in a Divisional application, in order to ensure that the claims of the parent application are part of the Divisional application as originally filed.
The amended Guidelines explain that such clauses should generally be amended or deleted, because they are usually either inconsistent with the claimed subject matter or only repeat the claimed subject‑matter and lead to unnecessary duplication. This is not a significant departure from existing EPO practice, but the new Guidelines expand on the EPO’s reasons for insisting on the deletion of claim-like clauses.
Consequences of the Amended Guidelines
In certain respects, the new Guidelines merely codify aspects of existing EPO practice. Nevertheless, the new Guidelines are more explicit about the way in which the description should be amended and place a greater burden on applicants to ensure that the descriptions of their applications are consistent with the claims. It seems likely that applicants will be required to make more extensive amendments to their applications than was previously the case.
The extent of protection provided by a European Patent is defined by the claims, but the description and drawings are used to interpret the claims (Article 69 EPC). The extent of protection for infringement purposes is not assessed or considered by the EPO and is only determined in national proceedings. Different jurisdictions apply principles under their own law when interpreting claims. Moreover, the extent to which equivalents are considered varies significantly between jurisdictions. Therefore, the wording used in the description can have significant, territory-dependent effects on the extent of protection provided by a European Patent.
Great care should be taken when amending the description to ensure that no unnecessary restrictions are implied on the scope of protection. In some cases, it may be preferable to prominently mark certain subject-matter as not being in accordance with the invention, whereas it may be worthwhile pushing back against an Examiner’s insistence to do this in other cases. In certain scenarios, excising subject-matter from the description may be best.
As the most appropriate strategy for amending the description will depend on the facts of each case, please contact your usual Boult Wade Tennant advisor if you would like any further information.