28 April 2022

T 1024/18 and description amendments: a sequel to T 1989/18

Update: 12 May 2022

T 1444/20 of 28 April 2022 cites and agrees with T 1989/19, finding that “claim-like clauses” in the description, labelled as “specific embodiments of the invention”, did not need to be deleted for the claims to comply with Article 84 EPC. See Reasons, 2.4, which states “the numbered embodiments (…) of the description under the heading “Specific embodiments of the invention” cannot be mistaken for claims, since it is evident that they are part of the description text, and they are not denoted as “claims” either”. Thus, in this instance, the specific embodiments did not result in a lack of clarity of the actual claim, and did not need to be removed.

A recent Board of Appeal decision returns to the topic of description amendments. T 1024/18 is the first decision on the subject since T 1989/18, and indeed the first decision to cite T 1989/19. This new decision appears to backtrack on T 1989/18 – description amendments are likely here to stay.

As a reminder, in T 1989/18, published in December 2021, the Board held there was no legal basis for a requirement to amend the description in line with allowable claims. The decision contradicted earlier decisions, such as T 1808/06, on which the EPO Guidelines wording was primarily based, where it was held that the description must be adapted so that the claims are supported by the description (Article 84 EPC).

The decision also came despite examiners typically insisting on this being completed before agreeing to grant the patent application and despite the revision to the EPO’s Guidelines for Examination in March 2021, which had altered the extent to which examiners should expect the description to be amended (see, e.g., H-V, 2.7 and F-IV, 4.3). As a further reminder, the Guidelines were revised again in March 2022, providing some further clarity on the expected amendments, but not substantially changing the requirements compared to the 2021 guidelines.

The changes to the Guidelines and strict adherence by the examiners increased the care and attention that needed to be taken over amending the description in line with claims, thus increasing workload to attorneys and subsequently, of course, cost to clients. The decision in T 1989/18 therefore appeared to offer some hope that examiners might not adhere to the new Guidelines quite so strictly, and release some of this burden from attorneys and applicants alike.

In T 1024/18, however, EP 2609899 was revoked because an amended description had not been filed with the allowable amended claims on appeal. The Board in this case held that Article 84 EPC required the description to be consistent with the claims throughout, such that the claims are supported by the description as a whole, and it seems the Board of T 1024/18 considered that the previous Board of T 1989/19 placed more emphasis on the clarity element of Article 84 EPC, and insufficient emphasis on support.

It is interesting to note that the two decisions have been treated differently already by the EPO: T 1989/18 was given a ‘D’ distribution (i.e., not distributed to other Boards) and did not appear as a ‘Selected Decision’ on the Boards of Appeal website, whereas 1989/18 was given a ‘C’ distribution (distributed to other Chairpersons)[1] and is a ‘Selected Decision’ on the website. This different treatment may imply the EPO’s feelings towards the topic – that T 1989/18 is merely a slight curveball in proceedings, and that T 1024/18 reinforces decisions that came before it where it was held that the description must be amended in line with the allowable claims.

Indeed, two subsequent decisions also seem to support this. In T 0120/20, the respondent (patent proprietor) argued that following T 1989/18, there was no general provision in the EPC that required an adaptation of the description. However, the Board rejected this line of argument, stating (in 10.2 of the decision), that they did not follow decision T 1989/18, instead agreeing with T 1024/18. In addition, although not explicitly citing either T 1989/18 or T 1024/18, the board in T 2613/18 held that a claim which is inconsistent with the description is not supported by the description under Article 84 EPC (see 2.1.1 of the decision), indicating that Boards of Appeal in general may be more likely to follow T 1024/18 than T 1989/18.

Considering the ongoing conflict and attention to the subject, we expect there will be more decisions that cite T 1989/18 and T 1024/18 and discuss the matter further. We will review these with interest if and when such decisions are issued. It is also possible that the issue could become subject of discussions in the EPO user reviews as part of the Guidelines for Examination revision processes, and that in time a referral to the Enlarged Board of Appeal to settle the matter could be made. Again, if this happens, we will be paying close attention.

The above is not intended to provide legal advice: if you have any questions, please get in touch.

[1] “B” decisions are distributed to Chairpersons and Members; “A” decisions are published in the Official Journal of the EPO.