EPO: “EPO practice confirmed on adaptation of description”

http://ipkitten.blogspot.com/2022/07/epo-epo-practice-confirmed-on.html

Earlier this year, IPKat reported on the EPO’s advertised workshop on description amendments (IPKat). The stated aim of the workshop, which took place at the end of June, was to provide users with “clarity” on description amendments in view of some recent conflicting decisions on the topic from the Boards of Appeal. The EPO has now reported that the workshop of experts “confirmed” EPO practice on description amendments. No mention is made of any dissenting opinion. 

New approach to
description amendments

By way of a brief recap, 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). This requirement requires applicants to either delete subject matter not covered by the claims or to explicitly state that such subject matter is not part of the invention.

The EPO is alone among the major patent offices in having such a requirement. Opponents of the EPO’s description amendment requirement argue that it lacks legal basis in the EPC and is overly burdensome 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. 

There have been a number of recent Board of Appeal decisions on the legality of the description amendment requirement, as summarised below. 

Legal basis for the description amendment requirement: 

No legal basis for the description amendment requirement: 

From the EPO’s point of view, the workshop on description amendments was a roaring success. According to a recent EPO press release:

“[the workshop] confirmed the EPO practice whereby the description in a patent application must be made consistent with its amended claims (in accordance with Article 84 EPC) to ensure legal certainty and avoid the public being presented with information that conflicts with the wording of the claims…the findings from this workshop will be used to revise the relevant sections of the Guidelines, for example, to provide a better definition of what should be considered inconsistent, conflicting or contradictory or to insert illustrative examples” (emphasis added)
Rather surprisingly given the current controversy, there is no mention from the EPO of any contrary opinion. Was the workshop’s decision unanimous? Were dissenting voices invited to speak? There are no details of who the experts were other than that they were a collection of “user representatives, members of the Boards of Appeal and national judges as well as experienced EPO examiners and lawyers”. 
This Kat would be keen to hear from any readers who attended the workshop whether the EPO’s summary reflects their own experience. Did the EPO put an overly positive spin on events (IPKat)? Regardless of how harmonious or not the opinion on description amendments really is, the EPO does not have an intention of ameliorating the requirement in future updates to the Guidelines. Any change will have to come from the Boards of Appeal. 
Further reading

Board of Appeal finds no legal basis for the requirement to amend the description in line with the claims (T1989/18) (26 Dec 2021)

Can amending the description to summarize the prior art add matter to the patent application as filed? (T 0471/20) (5 Jan 2022)

Changes in the draft 2022 EPO Guidelines for Examination on description amendments: Substantial changes or window-dressing? (7 Feb 2022)

EPO Board of Appeal toes the party-line on description amendments (T 1024/18) (4 April 2022)

EPO workshop to provide users with “more certainty” on description amendments (25 May 2022)

Content reproduced from The IPKat as permitted under the Creative Commons Licence (UK).