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Description Amendments at the EPO – the plot thickens

Posted: September 13, 2022

The story started on 1 March 2021 when the EPO updated their Guidelines for Examination to significantly tighten the requirement to provide clarity between the claims and the description before grant. The new Guidelines for Examination were clear; the applicant must amend the description in line with the allowed claims and failing to do so in the correct manner can result in a summons to oral proceedings. Now, 15 months later, the reality is much different.

The EPO has, for many years, required applicants to amend the description to bring it in line with the allowed claims. Applicants and representatives often make light touch amendments to the description, being all too aware of the repercussive effects in post-grant infringement or validity proceedings caused by deleting sections of the description or stating embodiments do not fall within the scope of the claims. So why is the EPO now suddenly requiring extensive description changes? The answer lies in the national courts. As case law became more directed towards requirements of “equivalents”, the EPO became under pressure from multiple national courts to more strictly amend the description in line with the claims to help with claim interpretation in national infringement and validity proceedings.

Unsurprisingly, applicants and representatives fought back. T1989/18, published in December 2021, came as a welcome relief to many applicants. The Board of Appeal set aside a decision of the examining division to refuse a patent application for an alleged lack of clarity due to the description being broader than the allowed claims. The Board of Appeal held that there was no legal basis to refuse an application because the description has not been adapted. However, one Board of Appeal decision does not mean the battle is won.

After T1989/19 was published, the EPO pushed back with a flurry of decisions (T1024/18, T2766/17, T2293/18 and T0121/20) contradicting T1989/19’s findings. In these cases, the Board of Appeal decided that there was legal basis to refuse an application for a lack of clarity if the description was not consistent with the allowed claims. In particular, the Board of Appeal concluded that the clarity requirement for the claims to be supported by the description include the need for the description to be consistent with the claims throughout.

Following on from this, the EPO released their Guidelines for Examination for 2022, in which the requirements to amend the description remained largely unchanged. The EPO appeared to soften their approach, stating that for borderline cases where there is doubt as to whether an embodiment is consistent with the claims, the benefit of the doubt is given to the applicant. However, the EPO remains firm in their approach that extensive description amendments are here to stay.

Just when all hope appears lost for EPO users, T1444/20 was published in late April 2022. T1444/20 focuses on whether it is necessary for “claim-like clauses” to be deleted from the description. The Board of Appeal agreed with the applicant and found that the presence of claim-like clauses in the description, which were clearly not part of the claims themselves, could not affect the clarity of the claims.

So what happens now? We have a growing number of recent conflicting Board of Appeal decisions with no clear stance on whether extensive description amendments are a requirement under the EPC. It appears examiners are developing their own approach to amending the description. For this reason, we advise continuing with a light touch approach when amending the description to test the examiner’s stance. If it is clear an examiner requires more significant changes to the description, we can decide the extent of those changes on a case-by-case basis. It is likely that a referral to the Enlarged Board of Appeal on the issue will soon be required. One thing is clear; this story is far from over.