Patent description amendments at the EPO (2)

Following revision of the Guidelines for Examination the EPO started becoming much stricter on amendments to the description to align it with the claims. The view from the EPO is that this is necessary to avoid any possible lack of clarity as to the scope of the claims which could arise if the description says something different to the claims. The requirements can now be very burdensome on applicants as they can require extensive parts of the description to be reviewed and amended to state whether they fall inside or outside of the claims. Although there are clearly cases where some amendment is required because there is a clear contradiction, I am strongly of the view that a blanket-rule to remove subject matter outside the claims is unnecessary and places an undue burden on applicants.

Following a short period of optimism when the 2022 Guidelines slightly softened the requirement, a report of an “expert workshop” has recently been published by the EPO which suggests that optimism was false and if anything the requirements are going to be strengthened. The report is odd in a few ways. The “workshop” which the report discusses appears to have actually been a seminar which people could pay to attend, or perhaps the workshop was held in parallel with this session and was entirely secret. This raises several concerns and seems an entirely inappropriate approach to an open discussion.

The article is headed “EPO practice confirmed on adaptation of description” which raises the question how either a set of seminar-attendees, or a secret group of people, have the authority to “confirm” the EPO’s practice. If the article is in fact referring to the seminar, reports from people who went suggest rather than confirm the EPO’s current practice, the attendees were unified in criticism and it was only the EPO participants who sought to confirm the practice. The news article also appears very one-sided, and when referring to Boards of Appeal decisions only mentions those which align with the need for extensive amendments, and is silent on contradicting cases. There is no discussion at all of reasons not to amend the description, or any consideration of the burden placed on applicants by the requirements. This all suggests a very troubling conclusion - that the EPO has decided on a course of action and is pretending there is no other view.

Our experience is that the approach of Examining Divisions is actually very divergent. Some take a pragmatic approach and accept that only explicit contradictions (eg the description states “The invention is X” when the claimed invention is actually Y) need to be amended, and otherwise a general statement confirming the invention is defined by the claims is sufficient. Other Divisions are insisting that every use of the word “embodiment” is reviewed and amended to state if it is in inside or outside the claims; even If there is a statement that “The use of the word embodiment does not imply the scope of protection is different to the claims” (which in a pragmatic way seems to put the issue beyond doubt). It is this latter approach that I argue is wrong in law and unnecessary in practice, even if academically it can be justified. My point may sound petty, but some applications may have over a hundred occasions of the word “embodiment”, each of which must be reviewed and amended; that takes a significant amount of time which must be paid for by the applicant. Moreover, any amendment, including to the description, brings with it a risk of adding subject matter. Coupled with the EPO’s strict (and well-established) approach to added-subject matter, which can lead to outright revocation of a patent, no amendment can ever be taken lightly.

For me, the example in the Guidelines given to exemplify why amendments are needed actually shows why this is an academic and not a practical point:-

Example: Independent claim defines a vehicle with a broad feature of a "motor", together with other features. The description and the drawings comprise Embodiment 1, in which the vehicle has an electric motor, and Embodiment 2, in which the vehicle has a combustion engine. During the prosecution, in order to fulfil the requirements of inventive step, the independent claim is amended to specify a vehicle employing an electric motor since the combination of claimed features using a combustion engine was anticipated by the prior art. Embodiment 2 is no longer consistent with the independent claim, unless it can be inferred from this embodiment that the combustion engine is used in combination with the electric motor. This inconsistency can be rectified either by removing Embodiment 2 from the description and drawings or by marking Embodiment 2 as not being covered by the claimed subject-matter (eg "Embodiment 2 is not covered by the subject-matter of the claims" or similar wording).

Of course, the embodiment with the combustion engine is inconstant with the claims, but how can this possibly have any effect on the scope or meaning of the claim? The claim clearly and explicitly says “electric motor” and the claim scope is limited as such. On any reasonable construction, even leaning heavily on Article 69(1) EPC, how can the claim scope be affected by mention of combustion engines in the description? To change the scope would require a Court to ignore the explicit definition in the claim and modify the scope based on something in the description that has been explicitly excluded from the claim. I can’t see how any Court would adopt this approach, and it is contradictory to the persistent message of the Boards of Appeal that the claims have primacy and it is only in cases of doubt that one can look to the description.

I am not aware of any litigation cases where the outcome has been affected by text in a description which would have been deleted under the EPO’s recent practice, and I have never seen any mention of such cases to justify these requirements. If the cases don’t exist, then that seems to imply the older practice of light-touch amendments was appropriate, and if the cases do exist they should be cited as evidence in support of the new practice. I’d be interested to hear from anyone who is aware of a case to which this is relevant.

It seems clear that the EPO is determined to enforce amendment of the description and so it is likely applicants will simply have to go along with things and attend to objections in the most efficient way possible. Since the “problems” perceived by the EPO are at the heart of many (mostly US) applicants’ drafting styles, which are considered important for other countries, it seems unlikely applicants can change much to pre-empt the objections and reduce the burden of amendment.

Hopefully if enough applicants can push Examiners for a pragmatic approach of accepting a general argument, and if a referral to the Enlarged Board of Appeal is allowed (eg as a point of law of fundamental importance, which I believe it is), practice can be softened somewhat. However, my fear is the current approach will cement many applicant’s view of the EPO examination process as being focussed on academic and esoteric points, rather than the important, practical, issues of granting patents for inventive subject matter which recognise the inventor’s contribution.

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