Managing IP is part of the Delinian Group, Delinian Limited, 8 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement
Sponsored content

EPO requirements for description amendments challenged

Sponsored by

inspicos-400px.png
copenhagen-1721511.jpg

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

The country saw sweeping IP reform in 2020, but IMPI still needs to implement regulations governing the changes
Sources welcome the aims of the new UK Patents Court Guide, but some are unsure it will help juniors level up
US biosimilar cases will likely settle and patent thickets could be a bugbear for companies, say three in-house counsel and three private practice lawyers
The claim, filed this week against the University of California’s governing board, follows action by Accord Healthcare in October
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
EU lawyers say they should be allowed to cite bad faith at a much earlier stage in trademark disputes to avoid falling victim to squatters and ‘legal’ fakes
Amendments to the Patents Court Guide are a welcome step, but we must ensure everyone is on side
Counsel expect ripple effects from last year’s seminal decisions on patent term extensions and patentability of computer-related inventions, and much more
The Patent Trial and Appeal Board found that claims in a Novartis patent were obvious over the prior art
Rights owners say a copyright exception that would allow text and data mining for AI training would sell out the creative industries