Users of the European patent system will be familiar with the EPO’s long-standing practice of requiring the description to be brought into line with amended claims, both before grant and in post-grant proceedings. The EPO stands alone among the major global patent offices in having such a requirement, and in recent years both the legal basis for this practice and the extent of amendments required (if any) have become highly controversial.
Oral Proceedings took place today, 8 May, before the EPO’s Enlarged Board of Appeal. The referral asks whether the EPC requires adaptation of the description following claim amendments, and if so, which provision supplies the legal basis. This article summarises the background, the route to the referral, the written submissions, and the main arguments at today’s hearing.
Background: what’s the debate all about?
For many years, the EPO has required applicants, before grant, to bring the description into line with any allowable amended claims. The same requirement arises post-grant where a patent is maintained in amended form. Historically, this was often a relatively light-touch exercise. However, in 2021 the EPO adopted a new policy requiring proprietors either to delete embodiments no longer covered by the amended claims, or to mark them “prominently” as not falling within the claimed invention. This turned what had been a routine procedural step into a major point of controversy.
Objections to this requirement are both legal and practical. Aside from the time and expense involved in making extensive description amendments (particularly in the case of long or complex specifications, or those originally drafted in a non-EPO style), concerns have been raised about interference with claim interpretation during litigation and the risk of introducing added matter. Inconsistent practice between different examining/opposition divisions and Boards has added to the uncertainty.
How did this end up before the Enlarged Board?
Given the controversial change in practice, it was inevitable that users of the EPO began to push back. Starting with decision T 1989/18, a minority line of Technical Board of Appeal decisions began to question whether the EPO’s practice had any legal foundation. This provoked a reaction from other Boards seeking to provide legal justification for the EPO’s practice, such as in T 1024/18 and T 3097/19.
In the case underlying today’s hearing, T 697/22, the Patentee amended the claims during opposition-appeal proceedings. The amended claims were found to meet the requirements of added matter, sufficiency of disclosure, novelty and inventive step. However, the Board found that the claims were inconsistent with the description as amended at first instance. A further amendment to the description was inadmissible for procedural reasons. The question therefore arose as to whether that inconsistency itself prevented maintenance of the patent as amended, whether under the support requirement of Article 84 EPC “or any other requirement of the EPC”.
In view of the divergence in the case law, the Technical Board of Appeal referred the following three questions to the Enlarged Board:
1. If the claims of a European patent are amended during opposition proceedings or opposition-appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description of the patent, is it necessary, to comply with the requirements of the EPC, to adapt the description to the amended claims so as to remove the inconsistency?
2. If the first question is answered in the affirmative, which requirement(s) of the EPC necessitate(s) such an adaptation?
3. Would the answer to questions 1 and 2 be different if the claims of a European patent application are amended during examination proceedings or examination-appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description of the patent application?
Written proceedings before the Enlarged Board
In written submissions ahead of the hearing, both the Patentee and the Opponent argued against the EPO’s current practice, though their positions were not completely aligned with one another. The Patentee essentially argued that there was no requirement for adaptation whatsoever. The Opponent took a more nuanced position advocating a significant narrowing of the circumstances in which adaptation of the description could be required, essentially restricting these to situations in which inconsistencies genuinely interfered with the assessment of patentability.
Submissions on behalf of the President of the EPO unsurprisingly defended the EPO’s current practice, primarily on the basis of the “support” requirement of Article 84 EPC and grounds of public policy relating to harmonisation with national courts and the UPC and promotion of “legal certainty for the public as to the scope of the patent monopoly”.
Given the significance of the questions referred, it is not surprising that over 40 amicus curiae briefs were submitted, mainly by patent attorneys, professional associations, and representatives of industry. The vast majority of these argued against any requirement for description amendments, or for a significant restriction of the EPO’s current practice. Common arguments included a lack of clear legal basis, concerns about interference with the competence of national courts and the UPC, the absence of comparable requirements in other major jurisdictions, procedural inefficiency and the risk of unintended consequences such as introduction of added matter.
Looming large over the proceedings was the Enlarged Board’s own recent decision in G 1/24, which held that the description and drawings should always be used to interpret the claims. For the pro-adaptation side of the argument, this meant that inconsistencies now carry greater significance and must be removed. For the anti-adaptation side, G 1/24 instead meant that inconsistencies could be dealt with as an act of interpretation, taking into account the primary role of the claims for determining both patentability and scope of protection.
The Enlarged Board’s preliminary opinion, issued about two months before the hearing, shed relatively little light on its thinking. The Enlarged Board identified two types of inconsistency: those which do not cause noncompliance with the EPC (thereby necessitating no amendments), and those which do (thereby necessitating amendment). However, the Enlarged Board left it open as to how such inconsistencies were to be identified and categorised, or how they might give rise to noncompliance with the EPC.
Oral proceedings before the Enlarged Board
In line with its written submissions, the proprietor argued strongly against any requirement for description amendments. At the heart of its oral submissions was an argument that the “support” requirement of Article 84 EPC merely requires that the claimed subject matter must be derivable from the description, and that amendment of the claims does not impose a reciprocal obligation to amend the description. This argument was based on the plain wording of Article 84 in both English and French, and on a survey of secondary sources including the travaux préparatoires to the EPC.
The proprietor argued that the EPO’s practice rests on a conflation of distinct provisions relating to the role of the claims in defining the subject-matter for which protection is sought on the one hand (Article 84, first sentence) and the requirements of clarity and support on the other hand (Article 84, second sentence). Any inconsistency between the description and claims could be dealt with as a matter of interpretation, recognising that the claims remain controlling for determining the scope of protection (in line with Article 69 EPC) while the description and drawings are consulted to understand their terminology (in line with G 1/24).
The proprietor also emphasised that Article 84 is not a ground for revocation in post-grant proceedings but that a strict adaptation requirement could result in Article 84 becoming a ground of revocation through the back door. Following G 3/14, “pre-existing” clarity or support issues under Article 84 in a granted patent cannot generally be reopened in opposition. A broad requirement for adaptation could therefore also create the odd result that some inconsistencies must be removed while others must be tolerated.
The Opponent took a more nuanced position, but also resisted any broad requirement for conformity between claims and description. It accepted that claim interpretation after G 1/24 is a unitary process in which the description and drawings are consulted together. However, it argued that any real interpretative problem should be addressed as part of the substantive examination of patentability, sufficiency or added matter. Once the claims have been found allowable, there should not be a further, separate exercise of combing through the description for possible inconsistencies, unless a specific inconsistency creates serious doubt about the scope of the claims. The opponent also argued that aggressive description adaptation can distort the balancing exercise between the interests of the patent proprietor and those of third parties as required by Article 69 EPC and its Protocol on Interpretation, tilting the balance too far toward a literal reading of the claims by excising broader subject-matter providing a wider context for their interpretation.
The EPO’s representatives defended the need for adaptation, but in contrast to their written submissions, focused principally on public policy arguments regarding the need to generate certainty for third parties rather than elaborating significantly on the underlying legal basis for current practice. The EPO devoted a significant proportion of its oral submissions to an argument that adaptation of the description would reduce the risk of divergent interpretations of the scope of protection and divergent outcomes in proceedings in different member states. The EPO did not explain how it reconciled this position with its assertion that this did not interfere with the competence of the national courts when interpreting the claims under Article 69 EPC in the context of infringement proceedings.
The Enlarged Board’s questioning was led by the English patents judge Richard Arnold, sitting as an external member of the Board. Questioning focused on several recurring issues:
- First, if G 1/24 requires the description always to be consulted when interpreting the claims, does that support a requirement for adaptation, or does it mean that courts and skilled readers can resolve inconsistencies without amendment – and if so, can such inconsistencies always be resolved as a matter of interpretation?
- Secondly, why should courts be required to deal with sub-optimal, unclear or unamended descriptions if inconsistencies can be resolved by amendment in proceedings before the EPO?
- Thirdly, if claim interpretation is truly a unitary process in which claims and description are to be read together at all stages, is the EPO’s normal practice of deferring description amendment until an allowable set of claims has been identified legally coherent, or should parties logically be required to submit an amended description with each and every amended claim set (a proposition which neither the parties, nor the EPO, nor the Enlarged Board appeared to be willing to endorse)?
Next steps
As is typical of Enlarged Board proceedings, no decision was announced at the conclusion of the hearing. The Enlarged Board’s answers and their reasoning will follow in writing, most likely at some point later this year.
If the written decision follows the contours of the Enlarged Board’s preliminary opinion and the points discussed at the hearing, it seems unlikely that the Enlarged Board will abolish the requirement for description amendments altogether. Equally, however, the maximalist position adopted by some within the EPO under its current practice appeared to be under pressure from the Enlarged Board’s questioning. The main question therefore appears to be how the Enlarged Board will define the threshold differentiating between harmless inconsistencies or those which can be resolved as a pure exercise of claim interpretation, and those which it views as genuinely problematic and necessitating amendment.
