http://ipkitten.blogspot.com/2021/12/breaking-board-of-appeal-finds-no-legal.html
A quirk of European patent prosecution is the requirement for the description to be amended in line with allowed claims. This requirement is provided for by the EPO Guidelines for Examination (F-IV-4.4). Despite having unclear legal basis, the description amendment requirement was controversially made even more stringent in the 2021 Guidelines (IPKat). Now, in a remarkable decision from the Boards of Appeal (T 1989/18), published on the 22nd December, a Board of Appeal searched for and unambiguously failed to find any legal basis in the EPC for the requirement that the description must be brought in line with the claims.
Legal Background: Description amendments
In order to comply with the requirement stipulated by the EPO Guidelines for Examination, that the description should be brought in line with the claims, it used to be standard practice for applicants to merely replace “invention” with “disclosure” thorough-out the description. The aim of the applicant will always be to minimize description amendments as much as possible, given the potential for the description to be used to interpret the claims post-grant (e.g. in a doctrine of equivalents analysis).
| Amending the description |
Controversially, however, the EPO Guidelines for Examination for 2021 newly required applicants to make much more significant changes to the description. Particularly, the 2021 Guidelines state that the description should be amended to delete embodiments which are no longer covered by the claims, or to explicitly state that the offending subject matter is not part of the invention (F-IV-4.4) (IPKat).
Importantly, the legal basis for description amendments has always been sketchy. Importantly, the Guidelines, as the name suggests, are a guide to the current case law and practise of the EPO and are not legally binding (IPKat). Anecdotally, not all of the Examiners have enforced strict compliance with the new Guidelines. On the contrary, some Examiners have taken a fairly laid-back approach, and have been happy to accept only minimal amendments to the description. Conversely, other Examiners have been insisting on very strict compliance with the new Guidelines. In most cases, however, Examiners have been more-or-less reasonable in their approach, requiring more amendments to the description than might previously have been required, but not insisting on a strict adherence to the letter of the Guidelines.
Nonetheless, the requirement to amend the description in line with the claims remains the bugbear of patent attorneys concerned with how amendments may be viewed as limiting the scope of the claims in national courts, and who have been frustrated by the divergent approach taken by Examiners.
Case background: Refusal of an application on the grounds of an unclear description
The Board of Appeal decision in T 1989/18 considered whether there was legal basis for refusing an application on the grounds that the description had not been amended in line with the allowed claims. After accepting the claims as allowable, the Examiner refused the application (EP2794651) for the sole reason that the description did not comply with the requirements of Article 84 EPC, i.e. that the claims should be clear and concise and supported by the description.
The Examiner argued that the description identified embodiments as being part of the invention which were not part of the invention as defined by the claims. Particularly, the Examiner’s main objection was that the description specified subject matter as being part of the invention, where this subject-matter was broader than the independent claims. The Examiner suggested some more substantial amendments to the description, but these were not accepted by the applicant. Notably, the Examining Division decision dates back to 2018, i.e. before the even more stringent guidelines on description amendments were introduced.
On appeal, the applicant maintained as their Main Request a description having only minimal amendments. The applicant argued that there was no legal basis in the EPC for the requirement that parts of the description no longer covered by the claims should be marked as non-related to the invention or deleted. As such, the applicant argued, “the adaption of the description is superimposed by the Examining Division on the Applicant as an additional, non-EPC-based hurdle before a decision to grant will be issued“. The applicant also pointed out the non-uniform way in which the Guidelines were applied by different Examiners.
No legal basis in Article 84 EPC or Article 69 EPC
The Board of Appeal in T 1989/18 considered whether any legal basis could be found for the refusal of the application on the grounds that the description included subject-matter that was broader than the claimed invention.
The Examiner had refused the application on the basis of Article 84 EPC. Article 84 EPC states that “[t]he claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description“. The Board of Appeal pointed out that Article 84 EPC thus requires the claims to be clear in-and-of-themselves, i.e. without reference to the description (as discussed in detail in T 1127/16, IPKat). Article 84 EPC requires the claims to be supported by the description, but only to the extent that the claims should not include subject matter that does not have basis in the description. As such, additional subject matter in the description that does not appear in the claims is not prohibited.
The Board of Appeal also rejected Article 69 EPC as providing legal basis for the requirement for description amendments. Article 69 EPC states that the extent of the protection provided by a patent is determined by the claims, but that the description shall be used to interpret the claims. Article 69 EPC is used as the legal basis for permitting an analysis under the doctrine of equivalents in the national courts (IPkat). The Board of Appeal considered Article 69 EPC irrelevant to the matter of description amendments, given that it is not concerned with the definition of the subject-matter sought to be protected by a claim, but instead just deals with how the claims should be interpreted (r. 6-7).
No legal basis in Rule 42(1)(c) EPC
The Board of Appeal also considered whether Rule 42(1)(c) EPC could serve as legal basis for description amendments. Rule 42(1)(c) EPC requires that the description shall disclose the invention, as claimed, in such terms that the technical problem and its solution can be understood. In the absence of a unity objection, the Board of Appeal could not see how this provision could be used to justify a requirement to amend the description in line with the claims. In the case in question, the Board of Appeal particularly failed to see how the offending passages impaired the understanding of the technical problem and its solution as set forth in the summary of the invention (r. 8).
No legal basis in Rule 48(1)(c) EPC
The Board of Appeal finally considered whether Rule 48(1)(c) EPC could provide the legal basis for description amendments. Rule 48(1)(c) EPC states that a patent application should not contain “any statement or other matter obviously irrelevant or unnecessary under the circumstances“. The Board of Appeal noted the lack of legal guidance as to what constituted “matter obviously irrelevant or unnecessary”.
Rule 48 has previously been cited as potential legal basis for the requirement to amend the description (e.g. T 1903/06, r. 2). However, the Board of Appeal present case disagreed with this approach for a number of reasons. First, Rule 48(1)(c) EPC only relates to patent applications, not granted patents (r. 11). Second, 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” or morality”‘, these sub provisions are not understood as providing sufficient reason to refuse grant of a patent. Thus, it would seem perverse to use Rule 48 EPC as allowing refusal of a patent just because the description contained “unnecessary” subject matter.
No legal basis, full stop.
The Board of Appeal therefore rejected all of the proposed provisions of the EPC that might be thought to provide legal basis for the requirement in the Guidelines that the description should be brought in line with the claims. The appealed decision was thus found to be erroneous and was set aside.
Final thoughts
Despite the stringent and onerous nature of the current Guidelines on amending the description in line with the claims, there is a paucity of case law justifying the requirement. A lack of Boards of Appeal case law is of course understandable, given that it is generally not worth an applicant pursuing the matter all the way to appeal when their claims have already been deemed allowable. T 1989/18 appears to change this. To this Kat, the decision of the Boards of Appeal in T 1989/18 is an unequivocal rejection of the requirement that the description must be brought in line with the allowed claims. Adjunct to T 1989/18, we are also awaiting confirmation of rumours that the EPO is rethinking the more strict requirements on description amendments introduced in the 2021 guidelines, and that these may be ameliorated in 2022 guidelines.
Despite the obvious relevance of T 1989/18 to almost every allowed patent application, the decision has only been given a D distribution (i.e. no distribution to the other Boards). The decision was also published at a time when many attorneys will be enjoying a holiday break as opposed to reading the latest Boards of Appeal case law. Nonetheless, and regardless of whether the guidelines are changed in 2022, applicants now have clear Boards of Appeal case law to cite should an Examiner demand unnecessary amendments to the description of an otherwise allowable application.
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