Description Amendments - Quo Vadis?
The new Guidelines for Examination in the European Patent Office (EPO) came into force as of March 1, 2022. Many hoped that the much-tightened requirements for description amendments before grant which were introduced with the 2021 Guidelines would be relaxed again with the new edition of the Guidelines. Let’s have a look.
It is established practice at the EPO to amend the description at the end of examination, before grant, to bring the description into conformity with the pending claims. In particular, passages of the description that relate to embodiments that are no longer covered by the claims need to be amended in such a way that it is made clear that these embodiments are not part of the claimed invention. Previously, characterizing these embodiments as “disclosure” instead of part of the “invention” used to be sufficient to accomplish this goal.
However, following decision T 1808/06 and the 2021 revisions to the Guidelines, a much stricter regime has been applied for amending the description, at least by some Examining Divisions. The 2021 version of the Guidelines stated (F-VI, 4.3):
“Embodiments in the description which are no longer covered by the independent claims must be deleted (for example if the description comprises an alternative for at least one feature which is no longer covered by the amended claims) unless these embodiments can reasonably be considered to be useful for highlighting specific aspects of the amended claims. In such a case, the fact that an embodiment is not covered by the claims must be prominently stated (T 1808/06).”
In some cases, the requirement to delete or amend embodiments that are no longer covered by the claims necessitates a complete overhaul of the description, which inherently is associated with certain risks. Sometimes the required amendments may introduce legal uncertainty with regard to added matter. Introducing explicit statements that certain embodiments are no longer covered by the claims may also negatively impact the application of the doctrine of equivalence in certain jurisdictions.
In light of these issues, decision T 1989/18, which was published in the end of 2021, appeared to be the light at the end of the tunnel. In this decision, the Board could not find any legal basis for the EPO’s practice to amend the description before grant. In particular, the Board held that Article 84 EPC, which is often cited in support of bringing the description into conformity with the claims, does not provide a legal basis for this practice.
New version of the Guidelines
However, in contrast to T 1989/18, the 2022 Guidelines continue to justify the practice to amend the description in line with the allowable claims with the requirements of Article 84, second sentence EPC (F-IV, 4.3).
“According to Art. 84, second sentence, the claims must be supported by the description. This means that there must not be inconsistency between the claims and the description. Parts of the description that give the skilled person the impression that they disclose ways to carry out the invention but are not encompassed by the wording of the claims are inconsistent (or contradictory) with the claims.”
The 2022 Guidelines continue (F-IV, 4.3):
“The applicant must remove any inconsistencies by amending the description either by deleting the inconsistent embodiments or marking them as not falling within the subject-matter for which protection is sought.”
Accordingly, the Applicant still has two options to address the presence of embodiments in the description that are no longer encompassed by the claims, a) delete them, or b) mark them as subject matter for which no protection is sought. Using terms such as “disclosure”, “example” or “aspect”, according to the 2022 Guidelines, does “not necessarily imply that what follows is not encompassed by an independent claim”. Rather, the 2022 Guidelines require “unambiguous expressions”, such as “not encompassed by the wording of the claims” or “not according to the claimed invention”.
While the general direction of the 2022 Guidelines remained the same with respect to amending the description, it is helpful that the 2022 Guidelines now clearly state that
“it is not an inconsistency when an embodiment comprises further features which are not claimed as dependent claims as long as the combination of the features in the embodiment is encompassed by the subject-matter of an independent claim”.
This is particularly so since the author has continuously observed objections to embodiments mentioned in the description but not explicitly recited in the claims, despite the fact that these embodiments were encompassed by the (generic) claims, e.g. due to “comprising”-language.
Most likely, the T 1989/18 decision came too late for being taken into account for the 2022 Guidelines. But even for the next edition of the Guidelines, we simply have to wait and see whether the EPO will substantially change its practice in line with the Board of Appeals decision in T 1989/18. So far, this decision is an outlier and without further Board of Appeal decisions confirming this line of reasoning, the EPO might not be willing to change its practice and the Guidelines, no matter how much many practitioners and users of European Patent System would welcome such a move.