15 October 2024EPO Board of Appeal finds no basis in EPC for requiring description amendments, and opts not to refer questions to the Enlarged Board
In a much-anticipated decision, Technical Board of Appeal 3.3.04 has held that there is no requirement under the EPC for an applicant to amend the description of a patent application before grant (T 56/21). This case is the latest in a developing line of decisions from the EPO’s Technical Boards of Appeal to go against the Office’s long-standing practice of requiring amendments to the description before grant for consistency with the claims.Of particular interest, the Board declines to refer questions to the Enlarged Board of Appeal which could help resolve this issue, despite having indicated its intention to do so earlier in appeal proceedings. In a detailed decision (running to 90 pages), the Board concludes that a referral is unnecessary, among other things because of recent developments from the Court of Appeal of the UPC and because it views the EPO case law as “evolving” rather than divergent. Ultimately, the Technical Board takes the view that “[t]he wording of Article 84 EPC as well as its context leave no room for requiring, in examination, that the description be adapted to allowable claims to match their subject-matter.” The Board takes the clear view that Article 84 is a requirement to be met by the claims and cannot impose any conditions on the content of the description. Rules 42, 43 and 48, which have previously been suggested by some as a legal basis for requiring description amendments, are also dismissed.A notable feature of the decision is that the Board sees a clear separation between the assessment of claims for compliance with the clarity and support requirements under Article 84 EPC on the one hand, and on the other hand the principles governing the interpretation of those claims post-grant under Article 69 EPC to determine of the extent of protection which they confer. The Board concludes that Article 69 EPC has no relevance in grant proceedings, and criticises the EPO’s current practice as “encroach[ing] on the competence of national courts and legislators” in seeking to use description amendments to “reduce the variability in the determination of the extent of protection of a patent … and to arrive at a more “harmonised” determination of the extent of protection”. Given that the relevance of Article 69 is already the subject of a pending referral to the Enlarged Board (G 1/24), it seems surprising that the Board in this instance has reached such an unequivocal conclusion. This suggests that the Board in the present instance might be seeking to influence that debate, and raises a question as to whether its view on description amendments might change if the Enlarged Board does not see such a clear separation between the rules for claim interpretation pre- and post-grant.This decision provides applicants with further legal support for refusing an order to amend a description before grant, but it seems unlikely that the EPO will change its Guidelines or its practice unless and until a referral to the Enlarged Board is eventually made on this topic.