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T1989/18 – EPO Board of Appeal rules there is no legal basis for the requirement to amend the description in conformity with the claims

Posted: December 30, 2021

A longstanding peculiarity of European patent practice is the requirement that the description of a patent application is amended to bring it into conformity with the claims as amended.

In March 2021, to the dismay of many applicants and practitioners, amendments to the EPO Guidelines for Examination entered into force, requiring much stricter conformity of the description with the claims.  For example, Guidelines F-IV, 4.3(iii) now specify “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”.

Against this backdrop, an extremely surprising decision has issued from the EPO Boards of Appeal in case number T1989/18.

The appeal spans from refusal of European patent application no. 12810245.6.  Although the examining division found the claims as amended to be allowable, it held that the amendments of the description adapted to those claims did not comply with the requirements of Article 84 EPC, in particular, because they related to subject-matter which was broader than the subject-matter of the allowed claims.

As noted in the decision, the applicant argued as follows:

“Adapting the description of a patent application to the set of claims on which an examining division intended to grant a patent was governed solely by the requirements of Article 69(1) EPC, Article 84 EPC and Rule 42 EPC”.

“The EPC did not require that parts of the description of an application which were no longer covered by the set of amended claims on which an examining division intended to grant a patent had to be marked as “nonrelated disclosure” or even had to be deleted when adapting the description to those claims”.

The appeal board considered Article 69(1) EPC, Article 84 EPC and Rule 42 EPC, and further Rule 48 EPC, as basis for the objections upheld by the examining division.  Rule 48 EPC was considered since “a number of decisions have relied on Rule 48(1)(c) EPC as a (potential) legal basis for requiring the description to be adapted to the subject-matter as claimed”.

The appeal board concluded that there is no basis in the European Patent Convention for the refusal of the application.  Accordingly, it must be that there is no legal basis for the requirement in the Guidelines that the description should be brought in line with amended claims.

The decision is of particular interest for a number of reasons:

• It is unusual for any applicant to pursue an appeal resisting description amendments when they have had acceptable claims allowed.
• The decision provides persuasive case law to cite in response to objections of lack of conformity of the description in any pending European patent application.
• The decision appears to clearly support a rumoured reversal of the changes to the Guidelines, wherein any reduction in requirements will reduce the burden and costs for applicants.