Adaption of the Description before the EPO – updates and practical proposals
Just before the Christmas break 2021 the EPO released a decision that could prove very interesting for European Patent Applications, and for those involved in European patent prosecution.
In decision T 1989/18 the Board of Appeal found that there was no legal basis for the requirement outlined in the EPO’s Guidelines for Examination that the description should be brought in line with the claims. In this particular case, the Board had to consider whether there was any stipulation/justification in the European Patent Convention for refusing an application on the grounds that the description had not been amended to be brought into line with the allowed claims, for example if the description contained subject matter broader than the claimed invention.
A requirement that the description be amended to be brought into conformity with the claims is outlined in the EPO’s Guidelines for Examination (F-IV-4.4), and is a common step in European patent prosecution. In fact, in 2021 the Guidelines were updated to specify a stricter requirement on this front than had been previously required. This caused some, although we personally find not all, Examining Divisions/Examiners to require more extensive description amendments than before. Typically, Applicants/Representatives will attempt to carry out sensible, but often minimal, description amendments. This approach is often adopted because the description may be used post-grant to interpret the scope of protection of the claims. Just for comparison, this is different to typical practice in the United States, where the description is usually left largely “as filed”.
As part of the decision in T1989/18, the Board indicated that they considered Article 84 EPC, Rule 42(1)(c) EPC, Rule 48(1)(c) EPC and Rule 48 EPC, but found that none of these provide legal basis for the requirement that the description be amended to conform with the claims. In this particular case, this led to the case being re-admitted to the Examining Division to grant the patent with a description the Examining Division had previously rejected as not being in conformity with the claims.
This decision seems to go contrary to previous decisions, for example T 1399/17 and T 1808/06, where adaptation of the description was required, the Boards citing the requirement in Art. 84 EPC that the claims shall “be supported by the description”. The recent decision T 1989/18 does not cite either of these decisions, nor give any reasons for deviation from them, seeming to just focus on the law itself.
This decision cracks open, although in our view does not kick down, the door for minimal description amendments to be carried out by Applicants/Representatives once an allowable claim set has been agreed upon. Whilst T decisions are considered to set a form of legal precedent, under the EPC there is no real principle of binding case law, and this decision will therefore not necessarily be considered binding on Examining Divisions or other Boards of Appeal, but it will provide good ammunition in any discussions with EPO Examiners regarding the requirement for extensive amendment of the description.
The Situation Today
It remains to be seen if this decision will be adopted by Examiners, Examining Divisions or other Boards of Appeal, or if it will be seen as a rogue decision. In the very least, there are now conflicting decisions on the matter. Given arguments about amendments of the description are not something Applicants usually push all the way to appeal, it may be some time before more decisions, or even a referral to the Enlarged Board of Appeal, occur.
Until recently, the popular rumour was that the stricter description amendment requirements added to the EPO’s Guidelines for Examination in 2021 would be softened again, or at least that further clarification would to be offered; and we found that Examining Divisions/Examiners continued to be somewhat inconsistent in their application of this particular section of the Guidelines, some requesting extensive amendment, others requiring minimal, perhaps because they expected the Guidelines to change again.
Perhaps surprisingly however, the recently published draft Guidelines for Examination 2022 (which will come into force from 1 March 2022) do little to reduce the stricter amendment requirements introduced in 2021. Specifically, although the section referring to description amendments has been slightly reworded, the substance of the requirements remain unchanged.
On a positive note, the new Guidelines now specify that where there is a doubt as to whether an embodiment is covered by the claims, the benefit of the doubt should be given to the applicant. On a less positive note however, the Guidelines also now explicitly forbid the use of generalised statements regarding what does and does not fall under the invention, and also require applicants to specify the exact embodiments that are inconsistent with the claims. In addition, a similar requirement has now been added requiring subject which is formally unpatentable under EPO law and practice (such as methods of medical treatment) to be clearly and explicitly labelled as not forming part of the invention.
Thus, the new Guidelines could be considered to have made little change to the onerous requirements relating to amendment of the description added in 2021. However, the EPO has also now launched a user consultation on this topic, so that the official approach may well change again in 2023!
It will therefore be interesting to see how Examiners apply the requirements in this area, and in the meantime we will continue to advise clients on the best way to avoid or to mitigate requirements to amend the description during day to day prosecution of their applications at the EPO.
The Importance of Amendments Made to the Description
As noted above, amendments made to the description before grant can become extremely relevant post-grant to establish the scope of the claims in infringement proceedings and/or as a source of further amendments in opposition or revocation proceedings. In the former case, this has become particularly important in the UK following the introduction of an effective doctrine of equivalents into infringement proceedings.
A further reason to limit the amendments made to the description, is that such amendments can be, and often are, taken into account when allegations of “added matter” or “extension of protection” are made in opposition or revocation proceedings. Specifically, before National Courts in most EPO member states, and during post-grant centralised EPO Opposition proceedings, the addition of new matter to the application as originally filed is prohibited, and if any previously made amendments are found to have added new matter they must be removed. However, any amendment broadening the scope of protection provided by the claims after grant is also prohibited, so if a previously made amendment is found to add matter to the application but to also limit the scope of the claims and to therefore not be removable, the only possible result may be the complete revocation of the patent (the “added matter trap”).
A further recent EPO Board of Appeal decision has brought this into even clearer focus.
Specifically, in T 471/20, the Board of Appeal confirmed that amendments made to the description that alter the meaning of the claims can be deemed to add matter to the application if the new meaning was not clear from the specification as filed. Furthermore, in the original opposition hearing, the removal of the amendment was also found to extend the scope of protection provided by the claims, and the patent was therefore revoked by the Opposition Board. In practice, this decision was overturned on appeal and the patent was restored, but this was on the specific grounds that the amendment previously found to add matter was part of the discussion of the prior art, which was considered to be a special case because the interpretation of the scope of the claims is specifically stated in the EPC not to be linked to the acknowledgement of the prior art in a specification. Nevertheless, this case clearly shows that amendment of the description during prosecution of an application can lead to serious problems after grant.
A further point of interest in T471/20 is that the amendment to the description that led to the allegation of added matter was made at the suggestion of the EPO Examiner handling the original application. This highlights the fact that amendments proposed by EPO Examiners do not have any special status, and are as vulnerable to allegations of added matter as amendments made by the applicant. Furthermore, as most EPO Examiners do not have experience of post grant proceedings, their suggestions for amendment are unlikely to be of as much practical value as amendments prepared by experienced patent attorneys based on discussions with the applicant.
This is of practical importance, because we have noticed an increasing tendency for EPO Examiners to themselves propose amendments to the description once they consider that the scope of the claims is acceptable, and sometimes to even propose significant amendments to the claims.
In particular, we have recently seen a rise in Examiners issuing notices stating that they intend to grant an application on the basis of a specification to which they themselves have made significant and extensive amendments, without the prior approval of the applicant. These amendments include statements that various passages of the description and examples are “not within the scope of the claims”, and detailed discussions of the prior art in the light of the amended claims, which in some cases at least, might be found to add matter to the specification as filed. Whilst it is possible for the applicant to reject some or all of the Examiners’ proposed amendments, it can be time consuming to review and consider the implications of each amendment, and it may also be difficult to persuade an Examiner to reverse an amendment once they have proposed it.
At TLIP we have wide experience of patent prosecution at the EPO, and we have found that it is generally far more efficient (and therefore cost effective for our clients) for us to pre-emptively make amendments to the description ourselves, rather than to comb through and “correct” amendments proposed by an Examiner. We have also found that proposing reasonable amendments generally corresponding to the procedure at the EPO prior to the changes to the Guidelines in early 2021 can be enough to satisfy most Examiners, preventing the imposition of more restrictive amendments.
Thus, whilst it can be sensible to defer making amendments to the description at the very early stages of prosecution, as soon as amendments to the claims that are considered to be reasonably likely to be acceptable to an Examiner are identified, we recommend also filing amendments to the description acknowledging and briefly discussing the prior art and bringing the statements of invention in the specification into conformity with the amended independent claims (or adding statements of invention as necessary). Further amendments to the description modifying passages relating to features no longer falling within the scope of the claims can also be made, but without making significant deletions to the text or including explicit statements that particular features are not part of the invention.
We generally find that filing amendments as set out above can be sufficient to satisfy most Examiners, and that, even if an Examiner has some concerns, an informal telephone discussion may be sufficient to deal with these.
We are of course always happy to discuss this approach or alternative options with our clients for specific cases or in general.