In October 2020, CMS published an article ‘New EPO Guidelines expected regarding amending a description: what’s all the fuss about?’, which has been the catalyst for discussion in the profession about the potential impact of the expected Guidelines. Since then, the discussion has gathered momentum and the new practice now is being considered by a number of key professional IP-related groups, particularly in the life sciences area where much of the concern has originated. Since the description is used to interpret the claims, how the description is amended can have a significant impact on claim interpretation in post-grant opposition and national litigation proceedings, and so this change clearly has importance to Patentees.
Whereas, at the time of our earlier article, our review was based on information from the EPO Legal Division and a change in observed EPO Examiner practice, the EPO has now published a draft of the new Guidelines and so the previous expected changes can now be confirmed. As anticipated in our earlier article, ‘take-home’ messages are that:
The EPO requirement to amend the description to conform with allowed claims is changing significantly. The Guidelines will come into effect on 1 March 2021.
Key changes include the requirement to delete embodiments not covered by the claims or prominently state this subject-matter as not being part of the invention.
It is not sufficient to use generic statements such as "embodiments not falling under the scope of the appended claims are to be considered merely as examples suitable for understanding the invention" without indicating which parts of the description are no longer covered.
Merely changing the wording "invention" to "disclosure" and/or the wording "embodiment" to "example", "aspect" or similar is not sufficient to clearly state that this part of the description does not fall under the scope of the claimed invention. It has to be explicitly specified that this part of the description does not describe part of the claimed invention.
At present, there is no requirement for an Applicant to make positive statements in the description regarding the scope of the claim. The implications of such positive statements at a national level when interpreting the claim or when considering claim scope under any applicable Doctrine of Equivalence is not known and cannot be reliably predicted. It already is known that at least the UK, France and Germany have differing approaches to the Doctrine of Equivalence and so any new language added to the specification can be expected to have a potentially different impact in these territories. The ability to amend such positive statements at a national level in the light of later obtained expert evidence also is not known. The new Guidelines and practice therefore can be expected to bring new challenges and uncertainties to Applicants when prosecuting patent applications before the EPO.
Unclear basis for the Guidelines
There are still unanswered questions around why the Guidelines have been changed. In particular, the only EPO Board of Appeal decision newly referenced in the Guidelines (T1808/06) is a decision from 2008 i.e. 13 years ago. Moreover, whilst this decision appears to align with current EPO Guidelines and practice relating to amending the description, it is not clear how the changes mentioned above are occasioned by this decision.
Current EPO Guidelines state that any “inconsistency” between the description and the claims must be avoided if it may throw doubt on the extent of protection and therefore render the claim unclear or unsupported under Article 84 EPC. However, the Guidelines further state that, if examples and technical descriptions of apparatuses, products and/or methods in the description and/or drawings which are not covered by the claims are presented not as embodiments of the invention but as background art or examples useful for understanding the invention, the retention of these examples may be allowed. Thus, the Guidelines explicitly indicate that if subject-matter is not presented as an “embodiment”, then the subject-matter may be retained. Consistent with this, current practice thus allows changing the wording "invention" to “disclosure” and/or the wording "embodiment" to "example", “aspect” or similar in passages in the description in order to remove any perceived “inconsistencies” that might exist between the description and the claims so that the subject-matter may be retained.
The Appeal in T1808/06 lies from a decision of the Opposition Division. In the oral proceedings held on 14 February 2008 the text of the description and the figures of the patent specification were considered page by page in the light of the claims upheld in earlier decision T139/01 and an adapted version emerged in which a single paragraph remained as the only point in dispute between the parties. The passage in question referred to labels “of the present invention” and “embodiments of the present invention”. In the decision, the amended version of the description for the main request was found to contravene Article 123(2) EPC because, in the paragraph in question, deletion of later passages in the paragraph, without deleting the first sentence of the paragraph, was found to have an impact on the meaning of terms used in the first sentence. This change in meaning was found to contravene Article 123(2) EPC. The auxiliary request where the paragraph was completely deleted was found to be allowable. Notably, in relation to any disclosure in the description and/or drawing “inconsistent” with the amended subject-matter, the Board stated that references to “embodiments” no longer covered by amended claims must be deleted. Or, if these “embodiments” can reasonably be considered to be useful for highlighting specific aspects of the amended subject-matter, then the Board stated that an “embodiment” can be retained if the fact that an “embodiment” is not covered by the claims is “prominently stated”. There was no suggestion by the Board that any inconsistency would have arisen if the passages had not been presented as “embodiments of the present invention”. Further, there is no information on what is meant by “prominently stated” since, in T1808/06, the entire paragraph was deleted.
Looking more widely at decisions referring to T1808/06, in order to meet the requirement of Article 84 EPC that the claims have to be supported by the description, the Boards of Appeal have consistently found that adaptation of the description to amended claims must be performed carefully in order to avoid inconsistencies between the claims and the description/drawings which could render the scope of the claims unclear. In the context of avoiding inconsistencies in order to meet the requirement of Article 84 EPC, the Boards of Appeal have further found that:
“references to embodiments” which are not encompassed by the amended claims should normally be deleted;
embodiments that can reasonably be considered to be useful for highlighting specific aspects of the amended subject-matter can be retained if the fact that an embodiment is not covered by the claims is prominently stated.
There appears to have been no suggestion by the Boards of Appeal that an inconsistency could arise for passages that are not presented as “embodiments of the present invention”. Specifically, there appears to have been no indication from the Boards of Appeal that the current practice of changing the wording "invention" to “disclosure” and/or the wording "embodiment" to "example", “aspect” or similar is not sufficient to avoid any potential inconsistency.
Further, there appears to have been no specific guidance from the Boards of Appeal as to what is meant by “prominently stated” in T1808/06. Specifically, there appears to have been no indication from the Boards of Appeal that, in order to “prominently state” that parts of the description do not describe part of a claimed invention, this has to be “explicitly specified” by making positive statements in the description regarding the scope of a claim or that a generic statement cannot fulfil the requirement to “prominently state”.
The new Guidelines appear to suggest that amending the description will be tasked to the Applicant and that the Examining Division will issue a summons to attend an oral hearing if the new requirements are not complied with. To the extent that an Applicant resists complying with the new Guidelines, it is possible that the matter will need to be referred to the Board of Appeal in order to try to obtain further clarity on the basis for the change in practice and whether the EPO might be open to reconsidering this.
This is a rapidly developing area of EPO practice, which will likely affect a number of other areas of our practice, such as how we draft specifications or the types of arguments that centre around claim interpretation that might be worth pursuing during EPO Opposition or Appeal.
Applicants and Examining Divisions already are trying to reach a difficult balance when amending the description into conformity with allowed claims to protect the Applicant’s interests whilst taking into account the requirements of Article 84 EPC. The new Guidelines and practice can be expected to make the process more complex and more challenging. Based on our experience and also having spent time speaking to EPO Examiners since issue of their internal guidance, we have assembled a ‘toolbox’ of strategies for amending a description. There are, of course, pros and cons for each approach, but what is clear is that there can be high risks associated with adopting a one-size-fits-all approach to amending a description. Different considerations might apply on a case by case basis as to claim interpretation or even national considerations, should these be considered to be of particular relevance.
The patent attorneys at CMS are skilled in this area having led the way on instigating the profession-wide discussion of the new Guidelines and CMS also has a team of patent litigators in UK, France and Germany who are on hand to advise.