http://ipkitten.blogspot.com/2022/05/board-of-appeal-agrees-that-description.html
Following the excitement over T 1989/18, there has been a second Board of Appeal decision finding a lack of legal basis for the requirement to amend the description in line with the claims. The decision in T 1444/20 found that it was not necessary for the applicant to delete claim-like clauses and redundant subject matter from the description, given that the claims were clear without need for recourse to the description. The decision in T 1444/20 however, follows a flurry of Board of Appeal decisions that contradicted T 1989/18 and did find legal basis for the requirement to amend the description in Article 84 EPC. Where does this all leave applicants faced with onerous description amendment requests in Examination?
Background: Description amendments
The current EPO Guidelines for Examination require applicants to amend the description of a European patent application in line with the scope of the allowable claims (H-V, 2.7 and F-IV, 4.3(iii)). To the dismay of many EPO users, the description amendments required by the Guidelines have become rather draconian in recent years. According to the current Guidelines, applicants are now required either to delete subject matter no longer covered by the claims or explicitly state that the offending subject matter does not fall under the scope of the invention.
Article 84 EPC is often cited as legal support for the description amendment requirement. Article 84 EPC stipulates that the claims “shall be clear and concise and be supported by the description.”.
Conflicting Boards of Appeal decisions on description amendments
With all of the controversy surrounding the stricter description amendment requirements, the Board of Appeal decision in T 1989/18, which found no legal basis for the requirement, caused a considerable stir (IPKat). The EPO, however, is not obliged to change its practice just because of one Board of Appeal decision. The EPO has thus seemed content to ignore the decision in T 1989/18, and has continued with requiring applicants to conform to the current Guidelines. Notably, despite the obvious interest in T 1989/18, the decision was not even distributed to the rest of the Boards of Appeal chairmen, i.e. the decision was given a Distribution Code “D”. Rumours that the description amendment requirements might be ameliorated in the 2022 Guidelines following user pressure also proved overly optimistic (IPKat).
| Disagreement |
Any lingering hopes that T 1989/18 might spark a rethink by the EPO on the description amendments were further dashed when T 1989/18 was swiftly followed by a flurry of decisions contradicting its findings (T 1024/18, T 2766/17, T 2293/18 and T 0121/20) (IPKat). The Boards of Appeal in these cases toed the EPO party line and found legal basis for the description amendment requirement in Article 84 EPC (IPKat). Tellingly, unlike the decisions finding no legal basis for description amendments, T 1024/1, T 2766/17 and T 2293/18 were all distributed to the Chairmen of the other Boards of Appeal, i.e. the decision was given a Distribution Code “C”.
Were the decisions in T 1024/1, T 2766/17, T 2293/18 and T 0121/20 to be the final nails in the coffin of a description amendment rethink? On the contrary, a new decision, T 1444/20 has now provided T 1989/18 with much needed support, and has thereby stopped it sinking further into the soup of obscure and irrelevant Boards of Appeal case law.
Legal basis for the requirement to delete “claim like clauses”
The Board of Appeal in T 1444/20 considered whether it is necessary for “claim like clauses” to be deleted from the description. Claim-like clauses corresponding to the original PCT claims are often added to the description of European applications. The clauses are added to provide explicit basis for subject matter that has been deleted from the European claims in order to avoid expensive claim fees. The current version of the EPO Guidelines state that “claim-like clauses must also be deleted or amended to avoid claim-like language prior to grant since they otherwise may lead to unclarity on the subject-matter for which protection is sought” (F-IV.4.4).
The Board of Appeal in T 1444/20 found that the claims of the Main Request were clear in and of themselves, i.e. without reference to the description. As such, the Board of Appeal found that the presence of claim-like clauses in the description, which were clearly not part of the claims themselves, could not affect the clarity of the claims. The Board of Appeal found that deletion of the claim in the present case was thus not warranted. The Board of Appeal also noted the inconsistency in the Guidelines on this issue:
[The Guidelines] acknowledge, on the one hand, that claim-like clauses may (or may not) give rise to a lack of clarity, but require, on the other hand, that such claim-like clauses must always be removed. If claim-like clauses in the description do not result in a lack of clarity of the actual claims, Article 84 EPC cannot provide the justification for removing them.
Removal of “redundant” subject-matter
The Board of Appeal also considered whether it was necessary for the claim-like clauses to be deleted from the application because they related to subject matter that was inconsistent with the claims. The Examiner Division had stipulated that such redundant subject matter should be removed in view of Rule 42(1)(c) EPC and/or Rule 48(1)(c) EPC. The Board of Appeal assessed whether this stipulation was justified.
According to Rule 42(1)(c) EPC the description must disclose the invention as claimed in such terms that the technical problem and its solution can be understood. The Board of Appeal in T 1444/20 did not find that this provision translated into a requirement to remove passages of the description that disclose embodiments which are not claimed, particularly where the technical problem solved by the claims could be clearly understood.
Rule 48(1)(c) EPC stipulates that a European patent application should not contain obviously irrelevant or unnecessary subject matter. The Board of Appeal in T 1444/20 noted that a number Board of Appeal decisions have previously relied on this provision as legal basis for requiring the description to be adapted to the subject-matter as claimed. The Board of Appeal in T 1989/18, however, had rejected this reasoning (IPKat). Particularly, T 1989/18 found that whilst the other sub-provisions of Rule 48 EPC specify that more serious matter should not be included in a patent application, e.g. ‘”matter contrary to ‘ordre public'”, these sub provisions have not been understood as providing sufficient reason to refuse grant of a patent. Thus, the Board of Appeal reasoned, it would seem perverse to use Rule 48 EPC as justification for refusing grant of a patent just because the description contained “unnecessary” subject matter. The Board of Appeal in T 1444/20 explicitly agreed with the reasoning in T 1989/18 (r. 3.3).
Final thoughts
The decision in T 1444/20 relates to the deletion of redundant as opposed to contradictory subject matter from the description. T 1989/18 and T 1024/18 by contrast relate to the legal basis for deletion of contradictory subject matter. Nonetheless, T 1444/20 provides support for the general principle provided in T 1989/18 that description amendments are unnecessary if the claims are clear in and or themselves. Notably however, unlike 3 out of the 4 of the recent decisions finding legal basis for description amendments, T 1444/20 has been given the lowest “D” distribution code, meaning that it will not be distributed to other Boards of Appeal.
Nonetheless, we now have a growing number of recent conflicting Board of Appeal decisions on description amendments The current tally (summarised below*) stands as 4 for description amendments, 2 against. The release of T 1444/20 means that the decision in T 1989/18 can no longer be dismissed as an anomaly that EPO Examiners can legitimately ignore. In the face of a clear disagreement within the Boards of Appeal, and the obvious discontent from many EPO users, this Kat continues to be bemused as to why the EPO remains so wedded to the onerous description amendment requirements introduced in the 2021 Guidelines. The position of Examiners is not enviable, given that they will now face, on the one hand, the clear stipulation of the Guidelines requiring adaption of the description in line with the claims, and on the other hand, applicants armed with two recent Boards of Appeal decisions finding no legal basis for description amendments.
It is therefore becoming increasingly likely that a referral to the Enlarged Board of Appeal on the issue will be required. Quite aside from the merits of the arguments for and against description amendments, the existence of such clearly divergent case law from the Boards of Appeal does little for the EPO’s reputation, as anyone trying to explain the emerging mess to their US colleagues will appreciate.
Further reading
*Legal basis for description amendments: T 1024/18 (1 March 2022), T 2766/17 (17 March 2022), T 2293/18 (31 March 2022)
No legal basis for description amendments: T 1989/18 (16 Dec 2021), T 1444/20 (28 April 2022)
Board of Appeal finds no legal basis for the requirement to amend the description in line with the claims (T1989/18) (26 Dec 2021)
Can amending the description to summarize the prior art add matter to the patent application as filed? (T 0471/20) (5 Jan 2022)
EPO Board of Appeal toes the party-line on description amendments (T 1024/18) (4 April 2022)
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