Adaptation of the description no longer required at the EPO

The EPO have always requested some amendments to the description of an application before grant to adapt it to the claims which will be granted by removing statements that might contradict the claims or suggest a different scope of protection.  In recent years, this requirement has become stricter and more expansive, with the Guidelines for Examination being amended to introduce more explicit requirements.  It is now common for Examiners to request the whole description is amended to remove subject matter falling outside the claims and note whether each feature is essential (required by an independent claim) or optional.  This is clearly an extremely onerous process, requiring a great deal of time to properly assess every bit of text. 

The EPO's argument was that a difference in content of the description and claims could lead to doubt about the scope of protection sought such that any differences had to be removed.  There were very few attorneys or lawyers who agreed with this, and it was very hard to find any examples of where any difference had caused a problem in subsequent proceedings concerning the patent.

There were a number of decisions from the EPO Boards of Appeal concerning these requirements which reached a range of decisions from confirming the practice to completely disagreeing.  In view of this case, T0056/21 had proposed a referral to the Enlarged Board of Appeal to resolve the conflict. However, they have now taken a stronger stance and after a thorough review of the law, previous Board of Appeal Decisions, and UPC decisions, have concluded that there is no legal basis for the requirement to adapt the description.  This is a very significant change in the requirements and will make the applicant's task a lot easier.

The Decision is over 90 pages long and includes a thorough review of a wide range of legal issues.  A key point taken from the outset by the Board is that the EPO's Guidelines for Examination (from which Examiners have derived their authority to request adaptation of the description) are not binding on the Boards of Appeal and do not form a part of their assessment. In turn, this means the Board of Appeal's Decision overrules the Guidelines. The Board go on to review the function of the claims and description, as well as considering 140 EPO Board of Appeal cases and decisions from The Swiss Federal Supreme Court, The German Federal Court of Justice, The Court of Appeal of England and Wales, and the Unified Patent Court.  In brief, they have left no stone unturned!

Their conclusions are:

• Article 69 EPC and the protocol thereto (which defines how the description can be used to interpret the scope protection) are not applicable in grant proceedings before the EPO. This Article had been a key citation in requiring amendment as it was argued a non-adapted description could cause doubt when applying the article.  The Decision makes clear Article 69 EPC is only a matter for the Courts when considering the enforcement of a patent.
• The requirements of Article 84 EPC (concerning clarity) and Rule 43 EPC (a form of them claims) are to be assessed independently of the assessment of the scope of protection (which is a matter for Article 69 EPC post-grant).
• Article 84 EPC and Rule 43 EPC do not provide a legal basis for requiring adaptation of the description to the claims before grant.
• Rule 48 EPC is concerned only with suppressing publication of subject matter contrary to morality or public order, or certain disparaging or irrelevant statements, and does not require removal of matter not related to the claims or any discrepancies.

Overall, the Decision comprehensively, and strongly, dismisses every basis for requiring amendment of the description which was put before them.

The Board also firmly dismisses the need for a referral to the Enlarged Board, stating in no uncertain terms that there seems to be no possible basis for requiring adaptation of the description.  They state "If the legislator considers it justified to require that the description be aligned with the subject matter of the claims held allowable, the legislator should provide for the respective legal basis by way of amendment of the EPC" and "The lack of such a provision appears to be intentional."

The Decision is of course written in impeccably polite language, but there is an undertone of "The EPO have dreamt up this whole scheme, and we're really not sure where from."