http://ipkitten.blogspot.com/2022/11/board-of-appeal-case-law-against.html
It is almost a year since publication of T 1989/18 made waves in the European patent community with its finding that the requirement to amend the description in line with the claims lacked legal basis. Since T 1989/18 we have had a number of Board of Appeal decisions on both sides, finding either legal basis or a lack of legal basis for the description amendment requirement. Of these decisions, those finding legal basis for the requirement have been in the majority, also reflecting the clear view of EPO management. However, despite what the EPO might wish (IPKat), the issue is far from settled. A new Board of Appeal decision, T 2194/19 (24 October 2022) is now the latest to enter the debate on the side against the description amendment requirement. T 2194/19 adds further weight to the argument that the currently onerous description amendment requirements placed on applicants should be relaxed at the very least.
Description amendments refresh
The recent controversy over description amendments began with a significant tightening in the 2021 EPO Guidelines for Examination of the requirement for applicants to amend the description of a patent application in line with the allowed claims (IPKat). Before 2021, the simple replacement of “embodiment of the invention” with “embodiment of the disclose” was usually enough to satisfy the Examining Division that the description was in line with the claims. The Guidelines now expressly state that the applicant must either delete subject matter not covered by the claims or explicitly state in the description that such subject matter is not part of the invention (F-IV, 4.3).
| Board of Appeal decisions starting to add up |
Proponents of the requirement that the description should be amended in line with the claims point to Rule 42(1)(c) EPC, which states that the description should “disclose the invention, as claimed, in such terms that the technical problem, even if not expressly stated as such, and its solution can be understood”.
Opponents of the EPO’s description amendment requirement argue that it lacks legal basis in the EPC and is overly burdensome (in terms of time and cost) for applicants. Making substantial amendments to the description during prosecution also runs the risk of affecting the interpretation of the claims by the national courts.
Embodiments falling outside the scope of the claims (T 2194/19)
T 2194/19 is a short decision relating to an appeal of an Examining Division decision to refuse an application on the basis of inter alia, inconsistencies between the claims and the description. Particularly, the claims specified a particular memory size, whilst the description mentioned embodiments having a smaller memory size than that specified in the claims.
According to the current EPO Guidelines for Examination “[a]ny inconsistency between the description and the claims must be avoided if it could throw doubt on the subject-matter for which protection is sought and therefore render the claim unclear or unsupported” (F-IV, 4.3). The Guidelines go on to explicitly state that such an inconsistency may arise if an embodiment in the description “comprises a feature which is demonstrably incompatible with an independent claim”. The Examining Division decision to refuse the application on the grounds of inconsistencies between the claims and the description was therefore in line with the current Guidelines.
The Board of Appeal, however, disagreed with the Examining Division’s approach. The Board of Appeal particularly took direct issue with the reasoning that, for the claims to be supported by the description, all the embodiments included in the description should necessarily fall under the scope of the claims. The Board of Appeal found that such an approach could not be derived from the EPC or the case law of the Boards of Appeal. In cases where embodiments in the description may give rise to inconsistencies or contradictions between the claims and the underlying description, the Board of Appeal found that the onus is on the Examining Division to justify such an objection. “[T]he mere indication that the embodiment does not or no longer fall under the respective claim(s) is not sufficient in this regard“.
The Board of Appeal further found that Rule 42(1)(c) EPC cannot be the legal basis for establishing a general and broad requirement for an adaptation of the description to the claims. In the words of the Board of Appeal “It is simply not what this provision says.” For the Board of Appeal, the stipulation in Rule 42(1)(c) EPC that the description discloses the claimed invention in such terms that the technical problem and its solution can be understood “cannot be taken to mean that all the embodiments described in the description of a patent application have to fall within the scope of the claims.” By focusing on the pernickety question of whether certain embodiments mentioned in the description fall in or outside of the claim scope, the EPO has lost sight of what is the real question, namely whether the invention can be understood.
Notably, whilst the two previous decisions finding against the description amendment requirements were from Boards of Appeal with the same Legal member (Lukas Bühler), the new decision was from an entirely different Board.
Final Thoughts
In less than a year, we have had three decisions from the Boards of Appeal finding a lack of legal basis for the description amendment requirement as currently stipulated by the Guidelines (T 1989/18, T 1444/20, T 2194/19). This increasingly divergent case law increases the likelihood that a referral to the Enlarged Board of Appeal (EBA) will be necessary to settle the issue. It is a mystery to PatKat why the EPO remains so dogmatic on the question of description amendments, especially as the issue has only really been brought to a head following the introduction of the more stringent requirements in the 2021 Guidelines. Whatever the reason for the EPO’s position, the growing disagreement amongst the Boards of Appeal and the Guidelines creates unwelcome legal uncertainty for EPO users. The need for clarity is increasing.
Further reading
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