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.