Alex Bajjon

February 2022

Background

In this case, the applicant appealed an Examining Division decision to refuse an application under Art. 84 EPC as the applicant did not, in the Examining Division’s view, sufficiently amend the description to conform with the allowed claims.

On appeal, the applicant argued that there was no basis for refusing an application simply because the description was not correctly adapted.

Basis for Refusal under Art. 84 EPC

The Board of Appeal started by assessing whether an application fails to meet the requirements of Art. 84 EPC when it contains embodiments that fall outside the scope of the claims. The Board first noted that Art. 84 EPC requires the claims to be clear and concise. Here, the term clear means understandable and unambiguous and it was considered that the claims must be clear by themselves, without using the description to resolve issues. On this basis, the content of the description could not have any impact on the clarity of the claims.

Secondly, the Board noted that Art. 84 EPC requires that the claims are supported by the description. This requires the subject matter of the claims to be taken from the description, but does not require that the description only describes claimed subject-matter.

Therefore, for the assessment of Art. 84 EPC, the Board concluded that 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. As a result, Art. 84 EPC could not serve as legal basis for refusing the application in question.

Other Possible Legal Basis

The Board also considered other possible sources of legal basis, including Art. 69, Rule 42(1)(c) and Rule 48(1)(c) EPC.

The Board concluded that Art. 69 was only relevant for assessing the extent of protection conferred by a patent and not whether the claims are clear.

It was noted that although Rule 42(1)(c) requires the description to disclose the invention as claimed, this rule did not provide legal basis for requiring the applicant to bring the description into line with claims intended for grant, and to remove passages of the description that disclose embodiments which are not claimed.

Finally, Rule 48(1)(c) is not concerned with the content of granted patents, but instead the content of applications. This rule provides the EPO the power to remove matter contrary to morality or public order, but the Board of Appeal found no reason to believe that this could be interpreted more broadly to require unclaimed embodiments to be removed from a patent application prior to grant.

To conclude, the Board of Appeal found no legal basis for refusing the application on the basis that the description was not in line with the claims and remitted the case to the Examining Division with an order to grant the patent.

Comment

This decision will be a welcome one to patent applicants following the increasingly strict practice of EPO Examiners concerning description amendments.

It is noted that the rationale for enforcing strict description amendments is to ensure that patents can be enforced consistently across Europe, due to different national courts using the description to different extents when determining the scope of protection of a European patent.

With the opening of the UPC expected over the next few months, a more consistent approach to patent enforcement may be on the horizon, possibly reducing the need for the description and claims to be fully consistent with each other.

The EPO have announced that the 2022 version of the Guidelines for Examination (to come into force in March this year) would have a revised section relating to description amendments, but its contents is currently unknown. It will be interesting to see whether this recent Board of Appeal decision has any impact on the contents of the 2022 Guidelines for Examination.