The EPO makes it clear that the description MUST be amended

Earlier this year we reported, with much excitement, on the EPO Technical Board of Appeal decision T 1989/18, where it was determined that there is no legal basis in the EPC for the EPO to request that the description of a patent application be amended to be consistent with the claims it intends to grant.  This decision went against the current trend at the EPO often requiring numerous amendments to the description such that the entire description is consistent with the claims to be granted.

Unsurprisingly, a recent decision of the Technical Board of Appeal, decision T 1024/18 (which can be read in full here https://www.epo.org/law-practice/case-law-appeals/pdf/t181024eu1.pdf) has now found that Article 84 EPC does provide legal basis for the EPO to insist on these description amendments.  An application may now be refused, even if the claims are allowable, if the description is not amended to be consistent.

In brief, T 1024/18 involved an appeal against the decision of the Opposition Division to reject the opposition.  In response to the appeal, the respondent (patent proprietor) filed three auxiliary requests.  The Board issued a summons to oral proceedings and a provisional opinion in which it found that the subject matter of claim 1 of the first and third auxiliary requests added matter, however, claim 1 of the second auxiliary request appeared to be inventive.  The respondent indicated that they would not be attending the oral proceedings, in response to which the Board issued a further communication indicating that the respondent should file amendments to adapt the description to be consistent with the claims of the second auxiliary request, which the respondent did not.

The oral proceedings went ahead without the respondent, where the Board found, as indicated in its provisional opinion, that the subject matter of claim 1 of the first and third auxiliary requests added matter, however, claim 1 of the second auxiliary request was inventive.  However, the Board then found that the second auxiliary request was not allowable because the description had not been amended to be consistent with the claims and thus the requirements of Article 84 EPC had not been met.  The Board also decided, having regard to the principle of procedural economy, not to remit the case to the opposition division so that the respondent could adapt the description because the respondent had already been given an opportunity to file amended description pages.

Regarding the requirements of Article 84 EPC, the Board explicitly disagreed with the findings of T 1989/18.  At paragraphs 3.1.6 to 3.1.9 of the decision, the Board stated that “In the recent decision T 1989/18 (see particularly Reasons 5) addressing a similar issue to the present case of support of the claims by the description, the Board in that case found that inconsistencies in the description could not affect clarity of the claims since, according to Article 84 EPC, these in themselves had to be clear. The present Board concurs that according to Article 84 EPC, claims must be clear in themselves. However, it is important to note that Article 84 EPC is not entitled "clarity of the claims", on which the Board in case T 1989/18 however put its emphasis, but simply "claims". Thus the provision relates to claims in general and actually covers three distinct requirements on claims, namely their clarity, their conciseness and their support by the description. According to the present Board, the criterion that the claims be "supported by the description" is not in any way subordinate to the requirement of "clarity" of the claims, but is a requirement of its own (as is conciseness of the claims). Merely providing a part of the description which gives support to the claims appears to be at odds with the wording "supported by the description". Only providing such a part would be rather more akin to the claims having some form of basis in the description or being supported by "part" of the description, whereas the wording of Article 84 EPC requires support by "the description". To put this into context, to provide only support for the claims in one single passage of the description while the rest of the description might give a different or even contradictory meaning to the claims, would in essence negate the general meaning of the words "support by the description" and in fact would allow it to be reduced to a de minimis requirement of e.g. repetition of the claim wording while allowing the entire remaining description to be left to explain an entirely different invention to the one claimed. Hence, the Board finds that the requirement in Article 84 EPC of the claims to be supported by the description includes the requirement that the description is consistent with the claims not only in some part but throughout.”

In addition, paragraph 3.1.10 of the decision states “Thus, when amendments are made to the claims (amendment to the granted claims in the present case), the description must be made consistent therewith in the sense that a reader is not presented with any information conflicting with the wording of the claims. Embodiments of the invention which are not consistent with the claims must therefore be deleted or must be clearly identifiable to the reader, for example by rewording of relevant passages to indicate that such passages are not, or are no longer, part of the invention.”

This decision indicates that the EPO is only going to become stricter in their application of the requirement of Article 84 EPC, insisting that the entire description be amended to be consistent with the allowed claims.  A requirement which can be

particularly difficult to comply with and are often onerous on the applicant and/or their attorney, when a specification has not been drafted to clearly differentiate between specific embodiments.

If you have questions regarding this article or any other European prosecution issues please contact Anna Bartholomew (annab@mathisen.co.uk).