Sean Hutchinson

August 2022

Background

There has recently been an extensive debate surrounding the legal basis for the EPO’s practice of requiring an Applicant of a European patent application to amend the description of the application to bring this into conformity with the allowed claims.

This debate was started by decision T 1989/18, and later reinvigorated by T 1444/20, which both found that there is no legal basis in the EPC for such a requirement.

Latest developments

We reported in our article of June 2022 that the EPO had scheduled an online workshop to provide greater certainty regarding the description amendment requirement. That workshop has now been held and thus, on 7 July 2022, the EPO issued a press release confirming that workshop had, unsurprisingly, fully endorsed the EPO’s current practice.

As outlined in our earlier article, much of the debate surrounding the EPO’s description amendment requirement has centred around where in the EPC legal basis can be found for this requirement. The EPO’s press release indicates the EPO believes there is legal basis in Article 84 EPC, which requires the claims to “be supported by the description”. The EPO seems to believe this provision should be interpreted as meaning the description must be completely consistent with the claims, particularly in view of Article 69(1) EPC, which requires that “the description… shall be used to interpret the claims”.

To those who have been following the description amendment debate closely, none of the above will come as a surprise. However, of more interest is what the EPO’s press release did not say.

In particular, whilst the EPO has cited decisions T 1024/18, T 121/20, T 2293/18, T 2766/17 and T 1516/20 to support its interpretation of Article 84 EPC, no mention whatsoever is made of decisions T 1989/18 and T 1444/20, which concluded there is no legal basis in the EPC for the description amendment requirement. Additionally, no indication is given in the press release as to who presented at the EPO’s workshop, other than to say the presenters were “user representatives, members of the Boards of Appeal and national judges as well as experienced EPO examiners and lawyers”.

Conclusion

It is particularly notable that decisions T 1989/18 and T 1444/20 are not referred to at all in the EPO’s press release, and that no mention is made in that press release of any voices that spoke out against the alleged legal basis for the description amendment requirement.

In fact, the only suggestion of changes to the current practice given by the EPO in its press release is that the Guidelines for Examination will be updated “to provide a better definition of what should be considered inconsistent, conflicting or contradictory or to insert illustrative examples”.

It will therefore be unsurprising to many that the EPO seems to be standing firm by its longstanding description amendment requirement and appears reluctant to abandon this requirement anytime soon. Nonetheless, and presumably against the wishes of many at the EPO, T 1989/18 and T 1444/20 will not simply go away, and it seems reasonable to expect many Applicants to challenge the description amendment requirement, citing these decisions as their justification for doing so.

With the EPO having made its position clear in its press release, Applicants wanting to see the description amendment requirement dropped will understandably be wishing for a referral to the Enlarged Board of Appeal to change the EPO’s mind. Armed with dissenting decisions T 1989/18 and T 1444/20 at their disposal, it is perfectly possible those wishes will one day come true.