http://ipkitten.blogspot.com/2022/11/another-board-of-appeal-enters-fray-on.html
Board of Appeal decisions considering description amendments are now so frequent that PatKat can only just keep up. Hot on the heels of T 2194/19 (IPKat), comes yet another decision addressing the legal basis for the description amendment requirement (T 3097/19). The Board of Appeal in this latest decision explicitly disagreed with T 1989/18, and found legal basis for adaptation of the description in line with the claims in Article 84 EPC and Article 69 EPC. The growing number of contradictory decisions on description amendments intensifies the pressure for an EBA referral.
Description amendments catch-up
The recent controversy over description amendments began with a significant tightening in the 2021 EPO Guidelines for Examination. The Guidelines 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).
Supporters of the description amendment requirement point to Article 84 EPC and Article 69 EPC. Article 84 EPC states that “the claims shall define the matter for which protection is sought and that they shall be clear and concise and be supported by the description”. Article 69 EPC states that “the extent of the protection conferred by a European patent or a European patent application shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims”. It is argued by description amendment supporters that, if the description is to be used to interpret the claims, the claims can only clearly define the invention if they are not contradicted by the description.
| A clowder of decisions |
Opponents of the EPO’s description amendment requirement argue that the claims by themselves should clearly define the invention without reference to the description, given that it is the claims that define the matter for which protection is sought (Article 84 EPC). Furthermore, making substantial amendments to the description during prosecution also runs the risk of affecting the interpretation of the claims by the national courts.
The decision of the Board of Appeal T 1989/18, published shortly before Christmas 2021, was the first to set the ball rolling on recent Board of Appeal consideration of the description amendment requirement. In T 1989/18, the Board of Appeal considered Article 69 EPC irrelevant to the matter of description amendments, given that it is not concerned with the definition of the subject-matter for which protection is sought, but instead just deals with how the claims should be interpreted (IPKat).
The latest decision (T 3097/19
The decision in T 3097/19 related to an appeal of the Examining Division to refuse EP 12871077.9 for inter alia lack of inventive step (Article 56 EPC). The patent application related to methods of detecting search keywords in video streams. On appeal, the Board accepted the inventiveness of the applicant’s auxiliary request and moved on to consider the Examining Division decision to refuse the application because the description had not been adapted to align with the claims. Importantly, the Board of Appeal had no objections to the clarity of the claim language on its own (r. 25).
The Board of Appeal argued that the description was not aligned with the allowed claims in a number of ways. First, the description included a summary of the invention that did not include all of the claimed features. Second, some of the exemplified embodiments of the invention also do not contain all of the claimed features. The invention summary and embodiments were therefore broader than the invention as claimed. Finally, the description also included boilerplate language that the invention was not limited to the exemplified embodiments and that other embodiments could be obtained by making some unspecified changes to the embodiments that were provided. Because of these contradictions between the description and the claims, the Board of Appeal concluded that the scope of protection conferred by the claims was unclear (Article 84 EPC). The auxiliary request was thus refused.
Legal justification of the description amendment requirement
In T 3097/19, the Board of Appeal directly addressed the question of whether there was legal basis for the requiring amendment of the description in line with the claims. The Board of Appeal first construed the introductory clause of Article 84 EPC as requiring the scope of protection conferred by the claims to be “precisely determined” (G 2/88). The Board of Appeal also pointed to Article 69 EPC as providing that the invention for which a patent is granted is defined by the claims in the context of the description. As such, the Board of Appeal concluded:
“if a claim is directed to something which is different than that described to be the invention, then the application for grant is self-contradictory, and it can be questioned for which matter the protection is actually sought. For the scope of protection to be determined precisely, the definition provided by the claims of the matter for which protection is sought must therefore be consistent with the definition of the invention provided by its description“.
Final thoughts
In this latest decision therefore, the Board of Appeal expressly disagreed with the conclusions of T 1989/18 and T 1444/20 (and now T 2194/19), and agreed with T 1024/18 and T 2766/17 (r. 34). In order to sustain its position, the Board of Appeal also accepted that there was a tension between its position and the prior case law establishing that the claims should be clear in and of themselves, without reference to the description (e.g. T 454/89). Therefore, regardless of your position on the legal basis or otherwise of the description amendment requirement, there is now a clear disagreement between the Boards of Appeal on this issue and justification for an EBA referral.
Rather worryingly, the Board of Appeal also noted that the current Examination practise of postponing description amendments until the claims are deemed allowable, is also not in line with the requirement for the claims to be aligned with the claims. According to the Board, “strictly speaking” the description should always be amended so as to remain consistent with the claims (r. 26), even during examination. If we thought the current requirements were onerous, just imagine the mess that would be created by having to amend the description every time the claims were amended. We can only pray that the EPO doesn’t get any ideas from this observation…
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)
- EPO: “EPO practice confirmed on adaptation of description” (19 July 2022)
- Board of Appeal case law against the description amendment requirement starts to mount up (T 2194/19) (16 Nov 2022)
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