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


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

Klaus Grabinski told delegates at a UPC inauguration event that the proposed SEP regulation would limit access to justice
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
Sukanya Sarkar shares her thoughts on this year’s annual meeting in Singapore, where debates ranged from AI opportunities to improving law firm culture
The court’s ruling is a good reminder that US parties aren’t guaranteed attorney fees just because they win, say sources
With business confidence in a shaky state, Rachel Tan and Lisa Yong of Rouse discuss how in-house IP teams can manage their trademark portfolios through uncertain times
The Court of Appeal had stern words for Med-El’s representatives after they highlighted a deputy judge’s background as a solicitor
Funders and NPEs say asserting patent portfolios can minimise risk at the USPTO’s PTAB, where procedure remains a controversial topic
The US Supreme Court’s ruling wasn’t a surprise and reflects a trend that had already been bubbling away for a while, say tech and pharma counsel
Previous attempts at major transatlantic tie-ups have failed, so lawyers will keep their eyes firmly on Allen & Overy’s grand plans
INTA CEO Etienne Sanz de Acedo shares his plans if he were to win the EUIPO leadership race and says his application does not affect his INTA role