Patent description amendments at the EPO

The European Patent Office’s Board of Appeal has issued a decision (T1989/18) stating that there is no legal basis in the EPC to require applicants to amend a patent application’s description to exclude subject matter that is not covered by the claims. The case concerned an appeal against a decision by the Examining Division to refuse an application under Article 84 EPC, because (while the claims were found allowable) the description related to subject matter that was broader than the subject matter of the claims. The Board of Appeal overturned the Examining Division’s decision stating that it “fails to see how the aforementioned provisions of the EPC, or any others, can lead to the requirement that embodiments disclosed in the description of an application which are of a more general nature than the subject-matter of a given independent claim must constitute potential subject-matter of a claim dependent on that independent claim”, meaning there is no requirement to amend the description to exclude such subject matter.

Article 84 EPC requires that “The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description.” The EPO has increasingly used this article to require the description to be amended (sometimes substantially) to remove, or mark as not covered by the invention, embodiments that do not fall within the scope of the claims. In the appealed case, the Board reviewed various aspects of the EPC and concluded that none of them provided legal basis to refuse the application. In particular, the Board stated that “Article 84 EPC only mentions the description in the context of the additional requirement that it must support the claims. Under this requirement, the subject-matter of the claim must be taken from the description, it being inadmissible to claim any subject-matter which is not described. However, when assessing clarity, the description cannot be relied upon to resolve a clarity issue in a claim, nor can it give rise to any such issue if the definition of the subject-matter in a claim is clear per se. In particular, if the claims are clear in themselves and supported by the description, their clarity is not affected if the description contains subject-matter which is not claimed”. This means that, so long as the claims are clear in themselves and do not claim subject matter beyond that described in the description, Article 84 EPC cannot serve as legal basis to refuse the application, even where the description contains other subject matter falling outside the scope of the claims.

This is a welcome decision for applicants, particularly in light of the EPO’s Guidelines for Examination becoming increasingly strict on requiring amendments to the description (reading for example that “General statements in the description which imply that the extent of protection may be expanded in some vague and not precisely defined way are not allowed”), which some applicants have found excessively onerous where the claims are already clear. It remains to be seen if the Board’s decision will encourage a wider change in practice for amending the description at the EPO, but at least for now this is an encouraging development.

This article is a part of our EPO Practice and Peculiarities series. Click here to explore.