http://ipkitten.blogspot.com/2022/02/changes-in-draft-2022-epo-guidelines.html
The EPO has released the draft Guidelines for Examination 2022. The new Guidelines will come into force on 1 March 2022. Alongside the release of the draft Guidelines, the EPO has launched a user consultation. There had been cautious hope that the new Guidelines would soften the stringent description amendment requirements that were introduced in 2021. However, it is now clear that the 2022 Guidelines will do little to ameliorate the requirements introduced in 2021.
Legal Background: Description amendments
There has been speculation that the latest version of the Guidelines would ameliorate the onerous requirements introduced into the 2021 Guidelines on amending of the description in line with the claims. The 2021 Guidelines explicitly state that “embodiments in the description which are no longer covered by the independent claims must be deleted…unless these embodiments can reasonably be considered to be useful for highlighting specific aspects of the amended claims. In such a case, the fact that an embodiment is not covered by the claims must be prominently stated (T 1808/06)” (F-VI-4.3, emphasis added).
| Draft version |
The requirement to amend the description of a European patent application in line with the scope of the claims is a peculiarity of European patent prosecution. Applicants understandably are loath to make substantial amendments to the description, either by deleting subject matter or introducing statements to the effect that certain subject matter does not fall under the scope of the claim. Both of these approaches carry risks. Deleting subject matter removes the possibility of relying on that subject matter for post-grant amendments during opposition. Introducing explicit statements that certain subject matter does not fall under the scope of the invention could potentially impact interpretation of the claims under the doctrine of equivalents. Given that the monopoly of a patent is defined by the claims (and that the description need only be referred to if there is ambiguity in the claims), then amending the description in line with the claims seems superfluous to requirements. After all, other jurisdictions don’t find description amendments necessary.
The legal basis for the description amendment requirement is disputed. The 2021 Guidelines for Examination cite T 1808/06 as basis for the description amendment requirement. However, in a recent decision (T 1989/18), published online shortly before Christmas, a Board of Appeal searched for and failed to find any legal basis for the description amendment requirement (IPKat).
In cases of contradictory or evolving Boards of Appeal case law, the EPO Guidelines are generally intransient to change. It took the Guidelines considerable time, for example, to update the requirements for selection from lists to remove the “purposive selection” criteria that had been resoundingly rejected by a number of Boards of Appeal (IPKat). Even the most optimistic observers thus did not expect the recent Boards of Appeal decisions on description amendments to have an impact on the 2022 Guidelines, especially given that the case law is clearly far from settled on the point. Nonetheless, there had been rumours that the EPO was planning some form of amelioration of the requirement. The EPO themselves issued a press release in November stating that, following user feedback, in the next addition of the Guidelines the relevant sections on description amendments would “reflect users’ requirements with a view to legal certainty in the post-grant stage of their European patents“.
Limited changes in the draft 2022 Guidelines on description amendments
So what, if anything, has been changed in the 2022 Guidelines on description amendments? Section F-IV, 4.3 of the Guidelines, which refers to description amendments, has been reworded slightly. Some commentators have welcomed this rewording as a softening of the requirement. A welcome addition, for example, is that in borderline cases where there is doubt as to whether an embodiment is consistent with the claims, the benefit of the doubt should be given to the applicant.
However, to this Kat, aside from the addition that benefit of the doubt should be given to the applicant, the substance of the requirements remain unchanged. The EPO themselves only classify the updates as “minor amendments”. In fact, far from ameliorating the description amendment requirements, the 2022 draft Guidelines now explicitly forbid the use of generalised statements regarding what does and does not fall under the invention (a strategy that some applicants have used to reduce the burden of onerous amendments). In particular, the new Guidelines explicitly require applicants to specify the exact embodiments that are considered inconsistent with the claims, using wording such as ‘Embodiments X and Y are not encompassed by the wording of the claims but are considered as useful for understanding the invention”.
A similar requirement has been included with regards to mentions of unpatentable subject matter such as methods of treatment. The new Guidelines indicate that it is acceptable to include a statement that specific examples should be interpreted as references to compounds for use in methods of treatment, but that the statement should again refer to explicit examples. A blanket statement is not sufficient. The changes to the Guidelines on description amendments thus amount to nothing more than window dressing.
User consultation on the Guidelines
Alongside the release of the draft 2022 Guidelines, the EPO has launched a user consultation. The deadline for submitting a response to the consultation is 15 April 2022. The draft 2022 Guidelines as they currently stand have ensured that description amendments will remain a controversial topic, and the EPO can probably expect many submissions on this topic from users. Perhaps this will persuade the EPO to rethink their approach in time for 2023?
Further reading
- 2019 updates to the EPO Guidelines for Examination – the highlights
- Highlights from the new EPO guidelines for examination 2021: ViCo oral proceedings, description amendments and antibodies (14 Feb 2021)
- Board of Appeal finds no legal basis for the requirement to amend the description in line with the claims (T 1989/18) (26 Dec 20221)
- Can amending the description to summarize the prior art add matter to the patent application as filed? (T 0471/20) (5 Jan 2022)
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