Another European Patent Office (EPO) Boards of Appeal decision has been issued on 4th October stating that there is no legal basis to require amendment of a patent application description to bring it into conformity with the allowed claims. We take a look at what it means for European patent applicants.
In T 0056/21 (Adaptation of the description/HOFFMANN-LA ROCHE), the EPO Board of Appeal has held that there is no legal basis to require adaptation of the description to conform with the allowed set of claims in a European patent application. The decision summary states that: “In examination of a patent application, neither Article 84 nor Rules 42, 43 and 48 EPC provide a legal basis for requiring that the description be adapted to match allowable claims of more limited subject-matter”.
European patent applications are regularly required to amend the description in this way and patent attorneys are universally opposed to it, for several reasons. Most important of which is that the content of a patent application amended in this way can adversely affect the scope of related patents in other jurisdictions. This is because the EPO requires that any embodiment that is not, in its opinion, covered by the allowed claims is specifically identified as not being an embodiment of the invention – not something you really want on public record in the event of future patent litigation in, for example, the US.
In this particular case, the EPO Examining Division objected that the description contained “SPECIFIC EMBODIMENTS”, which contained claim-like clauses”. Claim-like clauses usually consist of an earlier set of claims, for example, from a priority founding application or a parent application of the application in question. Patent attorneys include them so that the entire content of the priority founding or parent application is contained within the application being examined, in case amendment back to earlier claims becomes necessary or the applicant wants to file a divisional application to a different set of claims.
The examining division held that these “claim-like” clauses made the application unclear as to the actual scope of protection as defined by the claims, contrary to the requirements of Art. 84 EPC and these claim-like clauses had to be removed according to the EPO Guidelines.
The Board of Appeal disagreed, stating that there is no legal basis to require the application to be amended in this way.
As more of these decisions keep appearing, European Patent Attorneys keep hoping that the EPO will see the error of its way and remove the requirement from the Guidelines for Examination for amendment of the description to conform with allowed claims. Unfortunately however, the Board of Appeal in this case also stated that it is “not concerned with the correctness of the Guidelines for Examination and, even less, with a possible need for their correction.”
The Board also stated that “To the extent that the Board’s interpretation of the European Patent Convention differs from an interpretation that may follow from the Guidelines for Examination, the Board’s reasons for the divergence should be readily understood [the reasons for the decision]. However, such reasons do not oblige the President of the Office to “correct” the Guidelines for Examination under Article 10(2)(a) EPC. Indeed, the Board’s decision has a binding effect only on the examining division that issued the decision under appeal (Article 111(2) EPC).”
So, once again, we await a decision from the Enlarged Board of Appeal to, hopefully, get rid of this ridiculous requirement that the EPO brought in when it amended the Guidelines for Examination.
You can read the full decision here: https://www.epo.org/en/boards-of-appeal/decisions/t210056eu1