Sean Hutchinson

December 2022

The EPO’s longstanding requirement for applicants of European patent applications to amend the description to bring this into conformity with the allowed claims before the EPO will grant a patent on the application has been the subject of much scrutiny over the last year.

Decision T 1989/18 caused quite a stir in the European patent profession when Technical Board of Appeal 3.3.04 held that there is no legal basis for the EPO’s description amendment requirement in the EPC, and that the EPO therefore had no legal grounds for enforcing this requirement.

Despite the findings of T 1989/18 being quickly silenced by several subsequent decisions finding that there is, in fact, legal basis in the EPC for the EPO’s description amendment requirement, Technical Board of Appeal 3.3.01 then issued decision T 1444/20, which supported the earlier conclusion of T 1989/18 that there is no legal basis in the EPC for this requirement.

As we reported in our article of August 2022, the EPO responded to the above developments by holding an online workshop in June 2022 with the intention of providing an “insight into some of the legal and practical aspects to be considered in relation to the adaptation of the description to the claims before the EPO… against the backdrop of the recent case law of the Boards of Appeal”.

Given the EPO’s strict position concerning description amendments, it was unsurprising when a press release was issued by the EPO shortly after that workshop confirming there allegedly is basis in the EPC for the description amendment requirement.

Latest developments

Many at the EPO will undoubtedly have been hoping the 7 July 2022 press release would have been the end of the description amendment saga. However, a third Technical Board of Appeal, namely Board 3.5.03, has now issued a decision of its own (T 2194/19) concluding there is no legal basis in the EPC for the description amendment requirement. Therefore, it seems the debate over the legal basis (or lack thereof) for the EPO’s description amendment requirement is not going to go away quietly, presumably to the dismay of many at the EPO.

It is notable that the EPO’s press release indicated legal basis could be found in Article 84 EPC, which requires the claims to be “supported by the description”. In T 2194/19, Board 3.5.03 has taken a different view, indicating that neither Article 84 EPC nor Rule 42(1)(c) EPC requires all embodiments of the invention disclosed in the description to fall within the scope of the claims. Instead, Board 3.5.03 has concluded that Rule 42(1)(c) EPC does not provide any legal basis for “a general and broad requirement for an adaptation of the description to the claims”, and that Article 84 EPC can only provide the required legal basis in the event that there is a genuine inconsistency or contradiction between the claims and the description which renders the claims unclear.

No common legal member

Much has been made of the fact that decisions T 1989/18 and T 1444/20 were both issued by Boards of Appeal featuring the same legal member.

It is therefore notable that decision T 2194/19 was issued by a Board not including that legal member, and that decisions finding no legal basis for the EPO’s description amendment requirement are now being issued by an increasing number of sources.

Distribution codes

Those who have been following our earlier articles regarding these developments will know the EPO gave both of the previous decisions challenging its description amendment requirement its lowest distribution code (“D”), meaning the decision would not have been distributed to the other Boards of Appeal to read.

Accordingly, it should not come as a surprise that the EPO has also given decision T 2194/19 distribution code “D”, thereby officially recognising it as being of no particular significance.

It will also not come as a surprise that decision T 2194/19 has attracted much attention from those practicing in the European patent profession, despite the EPO’s apparent reluctance to publicise the findings thereof.

Timing

It is particularly interesting that T 2194/19 has been issued after the EPO’s press release on 7 July 2022, especially since T 2194/19 explicitly refutes the legal basis given by the EPO therein.

By directly contradicting the contents of the EPO’s press release so soon after it was published, it would appear the Board members in T 2194/19 feel particularly strongly about their conclusions.

Conclusions

We reported in our article of August 2022 that decisions T 1989/18 and T 1444/20 would enable European patent applicants to challenge Examiners insisting they amend the descriptions of their patent applications to bring these into conformity with the allowed claims.

T 2194/19 has only strengthened those applicants’ arsenal, and thus decisions finding the EPO has no legal grounds for enforcing its strict description amendment requirement are becoming ever more frequent.

It is therefore becoming increasingly likely that a referral to the Enlarged Board of Appeal will be needed to finally decide whether the EPC provides legal basis for the EPO’s description amendment requirement. Those of us practicing before the EPO therefore look forward to (hopefully) receiving some certainty on this matter in due course.