Referral on description amendments moves one step closer (T 56/21)

http://ipkitten.blogspot.com/2023/11/referral-on-description-amendments.html

We have moved one step closer to a referral to the Enlarged Board of Appeal on description amendments. As previously reported, in appeal case T 56/21 the Board of Appeal invited the applicant (Roche) to request a referral to the EBA on the question of compulsory adaptation of the description in line with the claims. The applicant has subsequently submitted their request for a referral. We now await final confirmation from the Board of Appeal.

Amending the description: Why do we care?

Amending the description

The controversy over description amendments began with a substantial tightening in the 2021 EPO Guidelines for Examination. The Guidelines currently require that, when amending or adapting the description in line with the claims, 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). The EPO position is that the description “shall be used to interpret the claims” (Article 69 EPC) and so the claims can only clearly define the invention (Article 84 EPC) if they are not contradicted by the description. If there is a contradiction between the claims and the description, it is argued, the scope of the invention will be unclear.

However, amending the description is a risky business for patentees and applicants. To begin with, description amendments may add matter and lead to the inescapable added matter trap post-grant (IPKat). Additionally, amendments to the description may adversely impact claim interpretation post-grant in both invalidity and infringement proceedings (IPKat). 

The EPO is the only major patent office that requires strict adaptation of the description in line with the claims. The EPO’s approach to adaptation of the description is also curious in view of its general approach to claim interpretation. Unlike the UK courts, there is considerable Board of Appeal case law supporting an approach to claim interpretation that does not require reference to the description (IPKat). Particularly, the Boards of Appeal can be perfectly happy to ignore contradictory language in the description for the purposes of claim construction. According to a number of recent Board of Appeal decisions, if the language of the claims is clear per se, then the description can be ignored. However, if the description is to be ignored in cases of contradictory meanings between the description and the claims, why then is it necessary to amend the description? (IPKat). 

A hint as to why EPO is so bullish on the issue of adaptation of the description was provided at the recent CIPA Congress 2023. At CIPA Congress this year, Steve Rowan (EPO Vice-President) spoke about the EPO’s current focus on patent quality. Mr Rowan emphasised that it is down to both the patent office and applicants to ensure the continued quality of granted European patents. This included, for example, ensuring conformity between the claims and the description of granted EP patents. 

Roche shoulders the burden

Despite the disharmony on the issue among the Boards of Appeal it has never been clear that we would get a referral on description amendments. The risks of amending the description before grant of a patent can be mitigated (albeit expensively) by filing a divisional application, so as to at least keep an application pending should the granted patent fall down for  added matter. The down-stream consequences of description amendments on claim interpretation may also only become clear years after grant. The Board of Appeal in the case in question noted that a referral to the EBA would delay grant, and therefore left it to the applicant to decide.  

The applicant, Roche, has now submitted their response requesting the referral. Roche also suggests some clarifying amendments to the question proposed by the Board of Appeal. Roche’s proposed questions are as follows: 

1. Is there a lack of clarity of the claims or a lack of support of the claims by the description within the meaning of Article 84 EPC if a part of the disclosure of the invention in the description and/or drawings in the specification (e.g. an embodiment of the invention, an example or a claim-like clause) is not encompassed by the subject-matter for which protection is sought as defined in the claims (“inconsistency in scope between the description and/or drawings and the claims”)? 

2. If the answer to question 1 is “yes”, can an application consequently be refused based on Article 84 EPC if the applicant does not remove the inconsistency in scope between the description and/or drawings and the claims by way of amendment of the description (“adaptation of the description”). 

Roche also submits that the referral should relate to adaptation of the description in all forms of proceedings, i.e. including opposition proceedings. 

In support of their referral request, Roche identifies conflicting case law on the issue of description amendments. T 1989/18 (IPKat, Board 3.3.04, same applicant and Board as T 56/21), T1444/20 (IPKat, Board 3.3.01) and T 2194/19 (IPKat, Board 3.5.03) all found a lack of legal basis for the requirement for the description to be amended in line with the claims. T 3097/19 (IPKat, Board 3.5.06) on the other hand, disagreed with these decisions and found that the requirement for the description to be amended in line with the claims does have legal basis. 

Roche also argued that it was difficult to reconcile the practice of the EPO with the case law on clarity requiring the claims to be clear in themselves without the need to refer to the description for interpretation (IPKat). Finally, Roche further attached a resolution from FICPI (the International Federation of Intellectual Property Attorneys), which outlines the danger and burden to applicants of the EPO’s description amendment requirement. 

Final thoughts

The mere fact of a referral to the EBA does not of course mean that we would then necessarily receive clarity on the issue of description amendments. The EBA does have a habit of rephrasing the questions referred to it in order to avoid issues of general application beyond the facts of the case at hand (G 1/21, IPKat) or of providing self-confessedly vague advice even when it does answer the question (G2/21, IPKat). Even if the EBA were to give a clear answer on description amendments, the answer it gives may not be to everyone’s liking. The EBA may find in favour of the requirement, or even reason itself into adopting an stricter approach that would then have to be applied by the Boards of Appeal. A case of being careful what you wish for?

Further reading

Claim interpretation

Description amendments

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