Sean Hutchinson

June 2022

Background

It has long been the EPO’s practice to require an Applicant of a European patent application to amend the description to bring this into conformity with the claims once these are allowed by the Examiner. Articles 84 EPC, Rule 42(1)(c) EPC, and Rule 48(1)(c) EPC were thought to be the legal basis for this requirement.

As mentioned in our article of February 2022, decision T 1989/18 cast doubt on whether these provisions truly provide legal basis for such a requirement. That decision was quickly suppressed by decision T 1024/18, as we explained in our later article of April 2022, as well as decisions T 2766/17, T 2293/18, and T 121/20.

Latest developments

Following decisions T 1024/18, T 2766/17, T 2293/18, and T 121/20, it seemed the issue of whether the EPC requires Applicants to bring the description into conformity with the allowed claims had been settled.

However, decision T 1444/20 has recently been issued, and supports the conclusion in T 1989/18 that there is no legal basis in the EPC for such a requirement.

In particular, this new decision has found that Article 84 EPC cannot provide basis for the description amendment requirement unless the content of the description casts doubt on the clarity of the claims, Rule 42(1)(c) EPC cannot provide such basis unless an objection of a lack of unity is raised under Article 82 EPC, and Rule 48(1)(c) EPC cannot provide such basis as “the wording and history of this provision suggest that this was not its intended purpose”.

It is notable that the Boards of Appeal in T 1989/18 and T 1444/20 both involved in the same legal member, which may shed some light on why these Boards have reached the same conclusion, contrary to the findings of other recent cases concerning the description amendment requirement.

The response of the EPO

Of particular interest is the manner in which the EPO has handled these recent developments in the case law. Notably, three of the four above-mentioned decisions supporting the requirement for the Applicant to bring the description into conformity with the allowed claims were given distribution code “C”, which means these were distributed to the Chairs of the other Boards of Appeal following their issuance. In contrast, the two decisions alleging a lack of legal basis for this requirement were both given the lower distribution code “D”, which means these would not have been distributed at all.

It would therefore appear the EPO is keen to maintain its description amendment requirement despite the recent findings of T 1989/18 and T 1444/20.

On 20 May 2022, the EPO issued a press release indicating that it understood the need for greater certainty regarding the requirement to amend the description to bring this into conformity with the allowed claims. In that press release, the EPO advised it would be holding an online workshop to discuss the issue in more detail on 23 June 2022, and the description of that workshop explains it will consider the issue “against the backdrop of the recent case law of the Boards of Appeal”.

Conclusion

It is clear from the way the EPO has distributed the decisions alleging a lack of legal basis for the requirement for the description to be brought into conformity with the allowed claims that the EPO is reluctant to change its current practice.

However, it cannot go unnoticed that there are now two decisions in the case law that have reached this conclusion, rather than T 1989/18 remaining a voice in the wilderness.

Accordingly, it is starting to look increasingly likely that, unless the EPO is able to put the matter to rest at its online workshop at the end of June this year, a referral on the issue to the Enlarged Board of Appeal will be required to settle the description amendment debate once and for all.