Board of Appeal poised on the brink of a referral on description amendments (T 56/21)

http://ipkitten.blogspot.com/2023/07/board-of-appeal-poised-on-brink-of.html

Over the past couple of years, the EPO has gradually been tying itself in knots on the issues of claim interpretation and description amendment. Subject to the observations of the appellant, a Board of Appeal is now poised on the point of a referral to the Enlarged Board of Appeal (EBA) (EP 15700545.5). Thanks to Laurent Teyssèdre for first bringing this Kat’s attention to the case on his blog. Both the Board of Appeal (3.3.04) and the appellant (Roche) in the case are the same as in T 1989/18, the first Board of Appeal decision to find a lack of legal basis for the description amendment requirement (IPKat). 

The risks of amending the description

EPO ties itself in knots

The controversy over description amendments began with a significant tightening in the 2021 EPO Guidelines for Examination. The Guidelines currently require that, when amending or adapting the description in line with the claims, the applicant must either delete subject matter not covered by the claims or explicitly state in the description that such subject matter is not part of the invention (F-IV, 4.3). Notably, no other jurisdiction considers it necessary to force applicants to amend the description in line with the claims. 

Making substantial amendments to the description is a risky business. Amendments made to the description during prosecution may influence interpretation of the claims under the doctrine of equivalents in national court proceedings. Additionally, according to a recent Board of Appeal decision (T 450/20), the claims may be interpreted at opposition in view of the description of the patent as granted and not the description of the application as filed (IPKat) (see also T 471/20). 

Legal basis for the description amendment requirement?

Article 84 EPC and Article 69 EPC have both been cited as legal basis for the description amendment requirement. Article 84 EPC states that “the claims shall define the matter for which protection is sought and that they shall be clear and concise and be supported by the description“. Article 69 EPC states that “the extent of the protection conferred by a European patent or a European patent application shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims“.

It is argued by the proponents of description amendment that, given that the description shall be used to interpret the claims (Article 69 EPC), the claims can only clearly define the invention (Article 84 EPC) if they are not contradicted by the description. If there is a contradiction between the claims and the description, it is argued, a skilled person would be confused as to the scope of the claimed invention (see T 1024/18, IPKat). 

However, a number of Boards of Appeal have now found the description amendment requirement to lack legal basis (T 1989/18, IPKat). The Boards of Appeal in these decisions have all emphasised that it is the claims and not the description that define the scope protection. 

Running parallel to the growing controversy on description amendments, is the Boards of Appeal case law confirming that, in most circumstances, the description should not be consulted for claim interpretation. According to established case law, if the claims are clear, any contradictory statements in the description can (and should) be ignored (IPKat). These decisions include the infamous “catastrophic comma loss” cases, in which the loss of a single comma from the claims put the claims out of step with the description and led the patentees into the added matter trap (T 1473/19, T 1127/16). 

To this Kat, however, either the language in the description can influence how a skilled person would interpret the meaning of clear language in the claims or it can not (IPKat). At the moment the EPO is trying to have it both ways, with strict rulings against using the description to interpret the claims alongside over-the-top guidelines requiring strict adaptation of the description in line with the claim. 

Roche takes a stand against description amendments

The case at issue in the most recent case related to Roche’s application for a modified antibody constant region (Fc) (EP 15700545.5). The Examining Division (ED) issued a notice of allowance (71(3) communication) for the application. In the notice of allowance, the Examiner had taken it upon themselves to amend the description in line with the accepted claims. Particularly, in line with the Guidelines, the Examiner had deleted a number of pages describing mutations that were considered outside the scope of the allowed claim. The Examiner also deleted the “claim-like clauses” provided at the end of the description (claim-like clauses are often introduced into the description to provide explicit basis for later claim amendments). 

According to the Examiner, it was necessary to delete the offending passages because, if retained, they could lead to unclarity as to the actual scope of protection of the claims. Roche did not accept the Examiner’s description amendments, and appealed the subsequent decision of the ED to refuse the application on the basis that the unamended description led to a lack of clarity in the claims.  

Referral to the EBA? It is not for the Office to harmonise the extent of protection conferred by European patents (and applications) by bringing the description in agreement with the amended claims

The Board of Appeal in the appeal case (T 0065/21, 3.3.04) recently issued a communication indicating that it is considering a referral to the EBA on the issues of description amendments and claim interpretation. The Board of Appeal identified divergent case law on the issue of whether Article 84 EPC and/or Article 69 EPC provide legal basis for the description amendment requirement. 

The Board of Appeal in the case agreed that the current practice of the EPO based on the Guidelines “is difficult to reconcile with the case law on clarity requiring that the claims should be clear in themselves without having resort to the description for interpretation” (see IPKat: EPO tries to have its cake and eat it on claim interpretation (T 0169/20)). The Board of Appeal also had the following concern regarding the practise of using the description to interpret the claims: 

“Systemically interpreting the claims for the purpose of assessing the requirement of patentability […] considering the description runs the risk of reading additional limitations into the claims […] Broad claims could thus be granted based on their narrow interpretation considering the description. This might lead to diverging decisions and jeopardize legal certainty. Article 84 EPC requires the definition of the subject-matter for which protection is sought, to be clear and concise. The focus of examination should therefore be on the clarity and conciseness of all independent and dependent claims submitted for grant. Indeed, claims have effect on any person of the public (“erga omnes“) in that they define the subject-matter and thus the material boundaries of the exclusive rights […]. Legal certainty thus requires that claims are understood without having to resort to the description.” (para. 3.2.2)

The Board of Appeal continues:

“It is not for the Office to harmonise the extent of protection conferred by European patents (and applications) by bringing the description and/or the drawings of any application or patent in agreement with the amended claims held allowable.” (para. 3.2.3)

The Board of Appeal concludes that, should the appellant see the need for a referral, they may consider the following question:

“Is there a lack of clarity of a claim or a lack of support of a claim by the description within the meaning of Article 84 EPC if a part of the disclosure of the invention in the description and/or drawings of the application (e.g. an embodiment of the invention, an example or claim-like clause”) is not encompassed by the subject-matter for which protection is sought (“inconsistency in scope between the description and/or drawings and the claims”) and can an application consequently be refused based on Article 84 EPC if the applicant does not remove the inconsistency in scope between the description and/or drawings and the claims by way of amendment of the description (“adaption of the description”)?” 

The Board of Appeal has now given the appellant, Roche, three months to file its own observations. 

Final thoughts

It is unusual for patentees or applicants to take a stand against description amendments imposed by the EPO first instance departments. Arguing against description amendments takes time and expense that may not be justifiable once the claims have been deemed allowable. After all, a patent cannot be enforced until it is granted. During examination, the risks associated with description amendments may also be mitigated (albeit expensively) by filing a divisional application. At Opposition it is rare for a patent lacking value to the patentee to be opposed. If the claims survive opposition, the patentee is unlikely to have the appetite to continue the fight by taking a stand against description amendments. 

Roche has clearly decided that this is a fight it wishes to have, at least so far. The ball is now in Roche’s court and we await its response to the Board of Appeal. 

Further reading

Claim interpretation

Description amendments

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