All material subject to strictly enforced copyright laws. © 2022 Managing IP is part of the Euromoney Institutional Investor PLC group.
Sponsored content

EPO requirements for description amendments challenged

Sponsored by


The European Patent Office (EPO)’s requirement for the description of a patent to confirm the claims at the final stage of grant or opposition proceedings is coming under attack, as Jakob Pade Frederiksen of Inspicos explains

A peculiarity of EPO practice is that the description is usually required to be brought into conformity with the claims at the final stage of grant or opposition proceedings.

According to the EPO Guidelines, part F-IV 4.3: “Any inconsistency between the description and the claims must be avoided if it could throw doubt on the subject-matter for which protection is sought.”

If the description includes embodiments not covered by the scope of the claims, amendment of the description is required by deleting those embodiments or marking them as not falling within the scope of the claims.

The Guidelines refer to Article 84 EPC, which stipulates that the claims shall be clear and concise and be supported by the description, as the legal basis for the requirement.

Rules 42(1)(c) and 48(1)(c) EPC have in some contexts been cited as a legal basis for requirements for description amendments; according to these provisions the description shall disclose the invention as claimed in such terms that the technical problem and its solution can be understood, and the description shall not contain any statement or other matter obviously irrelevant or unnecessary.

In two recent decisions, two chemical Boards of Appeal of the EPO have questioned to what extent a sound legal basis exists for these description requirements.

Recent decisions raise doubts

In T 1989/18 of 21 December 2021, it was held that, if the claims are clear in themselves and supported by the description, their clarity is not affected if the description contains subject-matter that is not claimed.

A subsequent decision, T 1444/20 of 28 April 2022, held that there is no requirement for the applicant to delete claim-like clauses or redundant subject-matter from the claims.

However, a number of other recent decisions, including decisions T 121/20, T 1024/18, T 2766/17 and T 2293/18 (all of which have emerged from non-chemical cases), maintain that adaptation of the description to the claims is a requirement under the provisions of the EPC.

Many patent practitioners hope that the current seemingly contradictory lines of case law will eventually provide a basis for an Enlarged Board of Appeal referral that could make a clean sweep.

more from across site and ros bottom lb

More from across our site

ITC counsel explain why companies will continue to bring trade secret complaints to the venue and talk about how to tackle challenges
Google and Sonos patent war continues; CNIPA finishes first administrative patent trials; Oppo halts German sales after Nokia wins; Chugai settles Fresenius suit; Taylor Swift claims she never heard Playas Gon’ Play; AI can’t be inventor, says Federal Circuit
Brands and retailers should educate their marketing departments and get help from their sales teams so private label products don’t become a major problem
The UK government wants to stop local tech going to China, but tech transfer offices often have few options
Hubertus Schacht of the Munich Regional Court shares his thoughts on German SEP trends and their influence on the UPC
Trademark counsel applaud the EUIPO’s new filing system but reveal it has come with teething issues
The executive vice president of partnerships and acquisitions at the NPE explains how his company’s deal with Intel came to be
South Korean lawyers welcome the trademark guidelines but say the appellate board, courts, and other IP offices may not necessarily agree with the KIPO
Lawyers for Craig Wright will seek approval for expert evidence to help the England and Wales High Court understand how autism affects his character
IP counsel say rude judges can dent their confidence but that the effect on clients should not be underestimated
We use cookies to provide a personalized site experience.
By continuing to use & browse the site you agree to our Privacy Policy.
I agree