What next for description revisions at the European Patent Office?

The European Patent Office (EPO) typically require patent descriptions to be revised to agree with the claims of the patent application. In March 2021 the EPO Guidelines were revised to add that embodiments in the description which are no longer covered by the independent claims must be deleted or prominently stated as not covered by the claims according to case T1808/06. The requirement for deletion was questioned by some stakeholders because in some jurisdictions, it might be argued that competitors are free to work embodiments which have been deleted. Recent case T1989/18 found no legal basis for description revisions and the 2022 draft EPO Guidelines have revised the sections on description revisions. We consider the implications for applicants.

Implications for applicants

It seems likely that some applicants will argue based on T1989/18 that description revisions are not needed where the claims are clear and where there is understanding of the technical problem and its solution. The EPO will continue to follow the Guidelines so that applicants will need to adapt the description to agree with revised claims including by deleting or prominently marking embodiments not covered by the claims. Statements such as, “The invention is defined by the claims” will continue to be required by Examiners.

Applicants will do well to

• study the example in the 2022 draft Guidelines about a vehicle with a motor which is either electric or combustion. The combustion embodiment has to be deleted or prominently marked unless “it can be inferred that the combustion engine is used in combination with the electric motor”.
• note the 2022 draft Guidelines “For borderline cases where there is doubt as to whether an embodiment is consistent with the claims, benefit of the doubt is given to the applicant”.
• note the 2022 draft Guidelines “it is not an inconsistency when an embodiment comprises further features which are not claimed as dependent claims as long as the combination of the features in the embodiment is encompassed by the subject-matter of an independent claim. It is not an inconsistency when an embodiment fails to explicitly mention one or more features of an independent claim as long as they are present by reference to another embodiment or implicit.”

2022 EPO Guidelines

The 2022 EPO Guidelines have recently been published in draft form on the EPO website and will come into force on 1 March. Part F, IV 18 no longer mentions the case T1808/06. However, it does say “there must not be inconsistency between the claims and the description” and “The applicant must remove any inconsistencies by amending the description either by deleting the inconsistent embodiments or marking them as not falling within the subject-matter for which protection is sought”. Therefore the current situation is very similar to that reported in our 2020 article

https://www.cms-lawnow.com/ealerts/2020/10/new-epo-guidelines-expected-regarding-amending-a-description-whats-all-the-fuss-about#li

What was the decision of the examining division leading to T1989/18?

The examining division refused the European patent application on the grounds that it was not clear and so did not comply with the requirements of Article 84 EPC. Although the examining division found all claims to be allowable, they objected that certain parts of the description related to subject-matter which was broader than the subject-matter of independent claim 17 and so there was a lack of clarity of the scope of protection.

Deletion of the statement “The invention is defined by the claims”.

In case T1989/18 the statement “The invention is defined by the claims” was indicated by the Board as introducing ambiguity and so was deleted. This type of statement is currently used by many applicants and so the question of whether to continue using it arises. The draft 2022 version of the EPO Guidelines indicates in Part F Chapter II-4 4.2 “If claims are amended, the “field of the invention” and “summary of the invention” may also need to be amended to correspond to the claims. If appropriate, it is possible to use statements like “the invention is set out in the appended set of claims”.”

What was the decision of the Board of Appeal?

The Board of Appeal found the decision of the examining division to be erroneous. The Board remitted the case to the Examining Division with an order to grant a patent.

Search for legal basis for description revision requirements

The Board of Appeal searched for legal basis for description revision requirements but found none as explained below.

Reasoning – Article 84 EPC

The Board explains that Article 84 EPC requires that the claims are clear in themselves. The claims should be clear when being read by the skilled person who has knowledge of the prior art but who does not have knowledge derived from the description. The Board cite decision T 454/89.

The Board explains that Article 84 EPC only mentions the description in the context of the requirement that it must support the claims; it is inadmissible to claim any subject-matter which is not in the description. However, the description cannot be relied on to address a clarity issue and nor can the description give rise to a clarity issue if the subject-matter in the claim is clear. Therefore, the Board determine that “if the claims are clear in themselves and they are supported by the description, their clarity is not affected if the description contains subject-matter which is not claimed”.

The Board further mention Article 69 EPC. They state that it is not relevant to the assessment of clarity because it “is only concerned with the extent of protection conferred as one of the effects of an application or patent (chapter III of the EPC) whenever that extent is to be determined by whoever is competent to do so… Even if it were possible, for the purpose of Article 84 EPC, to interpret the claims in the light of the description and drawings as provided for in Article 69 EPC in order to establish whether the conditions governing clarity have been satisfied, the Board fails to see how that approach could lead to a lack of clarity of the claims (as opposed to a lack of clarity of the description)”.

Reasoning – Rule 42(1)(c) EPC

Rule 42(1)(c) requires that the description discloses how the invention can be understood as the solution to a technical problem. In recent case T1989/18 the Board conclude that, in the absence of a unity objection, Rule 42(1)(c) cannot be the legal basis “for requiring the applicant… to bring the description in line with claims intended for grant, and to remove passages of the description that disclose embodiments which are not claimed.”

Because the passages objected to do not impair understanding of the technical problem and its solution, the requirements of Rule 42(1)(c) are met.

Reasoning – Rule 48(1)(c) EPC

As per Rule 48(1)(c), a European patent application shall not contain any statement or other matter obviously irrelevant or unnecessary. However, the Board find no guidance on what could amount to “obviously irrelevant or unnecessary” statements or matter.

The Board point out that a number of decisions have relied on Rule 48(1)(c) EPC as the potential legal basis for requiring the description to be adapted to the subject-matter as claimed and cite T 544/88, T 329/89, T 1903/06, T 853/91 and T 443/11. However, the Board’s opinion is that the purpose of Rule 48(1)(c) cannot be to make sure that a patent specification relates only to what protection is sought because:

• Rule 48 EPC does not pertain to patent specifications; the provision is concerned not with the contents of granted patents but with patent applications.
• At the Munich diplomatic conference it was generally accepted that an application should not be refused even if the application as filed contained matter contrary to “ordre public” or morality. The Board find it “difficult to conceive that the legislator intended to impose more severe sanctions on less offensive matter”.

Rule 48 EPC therefore cannot serve as a legal basis for the refusal.