T56/21 – To amend or not to amend?

To amend or not to amend? That is the (still unanswered!) question!

The EPO Board of Appeal has issued it's long-awaited decision concerning the controversial subject of whether the description of a European patent application must be amended before grant to bring it into line with the allowed claims. What was widely anticipated to be an opportunity to clarify and perhaps change this requirement has however ended up in frustration.

The EPO is somewhat of an outlier among the world’s patent offices with its requirement that applicants must amend the description before grant to correspond to the allowed claims. More often than not, the claims originally filed are amended or restricted to take account of prior art found during examination. EPO practice, strengthened by a revision to the Examination Guidelines in 2021, requires applicants to delete subject matter considered to no longer be in accordance with the claims, or make it clear that such subject matter does not form part of the invention. The same requirement exists in opposition proceedings where patents upheld on the basis of amended claims will only be maintained on submission of a suitably amended description. Failure to provide an amended description, either in examination or in opposition, results in refusal or revocation.

For many years, questions have been raised over whether the EPO’s practice in this area is either necessary or correct. In general, European attorneys see it as a peculiarity or perhaps a ‘necessary evil’ but some non-European practitioners cannot understand why description amendments are needed when they are not in nearly all other jurisdictions, notably the US. There was thus some excitement when the Board of Appeal in case T56/21 indicated that they were keen to refer the question to the Enlarged Board of Appeal.

The Enlarged Board of Appeal (EBoA) is the EPO’s ultimate arbiter on matters of law. Technical Boards of Appeal, such as the one charged with T56/21, are able to refer questions to the EBoA where current law and practice may be ambiguous.  Decisions issued by the EBoA determine how all divisions of the EPO (examination, opposition, and appeal) must operate.

In case T56/21, the Examining division had indicated that the (amended) claims of the application were allowable and that a patent could be granted once the description was suitably amended. As is common, the examiner had suggested which amendments were considered to be necessary. The applicant rejected the suggested amendments without proposing any alternative and so in line with the established practice, the application was refused because the description was not in accordance with the allowed claims.

Historically, justification for amending the claims in line with the description has been based on the EPC requirement that the claims be clear, Article 84 EPC and/or on Article 69 EPC which relates to the extent that the description can be used to determine the scope of protection of a European patent. The Board in T56/21 found no legal basis in the EPC for either approach. They found no support in Article 84 which would require the description to be amended and reasoned that as Article 69 was only applicable to the scope of patent once granted, for example in an infringement action, it could have no bearing on the examination of a patent application before grant.

In its detailed decision, the Board also considered whether the EPO’s Examination Guidelines had any bearing on the matter. Again, the answer was no, it being observed that Boards of Appeal are bound only by the European Patent Convention itself. Rule 48 EPC was also dismissed as a possible basis as it requires only that the publication of expressions which are contrary to public morality or public order be prevented. Superfluous or irrelevant matter which may remain in patent applications was not considered to be within the ambit of Rule 48.

The factual and legal conclusions of the Board are perhaps not surprising. The obligation to amend the description has always been seen as more of a ‘policy’ than a legal requirement. What is more surprising is that the Board in T56/21 did not see fit to refer the matter to the EBoA. Initial indications were that T56/21 was going to be the case to finally put the matter to rest and EPO representatives were eagerly anticipating such a referral. Instead, the Board convinced themselves that the current state of the law was ‘unequivocal’. They could find no legal basis in the EPC which required the description to be amended and so concluded that there was nothing for the EBoA to rule on or clarify.

So, has T56/21 taken us forward at all? It would seem not. There is now a fully reasoned decision which applicants may choose to cite when wishing to avoid description amendments however, as T56/21 is not binding on other Boards of Appeal, there is every chance that a refusal to amend will continue to lead to applications being refused. It is likely that in time, some Boards will agree with T56/21 and others will not. We may then reach the point where the state of the case law becomes less ‘unequivocal’ such that the Enlarged Board of Appeal is asked to bring final clarity to this lonely corner of international patent practice.

All of our attorneys here at Mathisen Macara are qualified representatives before the European Patent Office and would be happy to answer any questions you may have about the matters raised in this article, or on any other aspects of European patent practice.