T 3097/19: The need to adapt the description for conformance with allowed claims during examination

New decision T 3097/19 from the European Patent Office (EPO) Board of Appeal adds to the body of conflicting case law on the need for the description of a patent application to be adapted for conformance with allowed claims during the examination procedure.

At the EPO, once the claims of a patent application are considered allowable by an Examining Division, it is typical practice that the description of the patent application must be adapted to be in line with the allowed claims. Common amendments that are made include amending the description to remove inconsistencies between the description and allowed claims (such as where the originally filed description describes a feature of the allowed independent claims as only optional). Amendments are also typically required where the originally filed description describes as embodiments of the invention subject matter that is no longer covered by the allowed claims. 

In the latter of these scenarios, for many years, practice at the EPO was largely settled. Where the description of an application referred to embodiments of the invention that were not covered by the allowed claims, the description could typically be amended by simply removing explicit reference to the embodiment forming part of the invention. For example, the statement ‘in an embodiment of the invention’ could be replaced with ‘in an instance of the disclosure.’

This practice changed with the coming into force of updated EPO Guidelines for Examination in 2021. The Guidelines for Examination reflect EPO practice and should be followed by Examining Divisions. The updated guidelines brought in more stringent requirements for adapting the description. In particular, for disclosed embodiments not covered by the allowed claims, the updated guidelines only allowed these embodiments to be retained in the description if they were useful for highlighting specific aspects of the allowed claims. Furthermore, the updated guidelines required each of these embodiments (if retained) to be explicitly labelled as not being part of the claimed invention. The more stringent requirements are controversial and have attracted criticism both within the EPO and in the patent attorney profession. As a result of the updated guidelines, a greater number of, typically more complex, amendments to the description are generally required which can increase the costs for applicants of prosecuting an application to grant.

The rationale for updating the guidelines was to follow various decisions of the EPO Boards of Appeal (such as decision T 1808/06). Most of these decisions make reference to the requirements of Article 84 EPC, second sentence, which states that the claims should be supported by the description. According to these decisions, for this requirement to be met, embodiments not covered by allowed claims should normally be excised from the description, and if retained, prominently indicated as not being part of the claimed invention.

Despite these decisions and the updated guidelines, certain recent EPO Board of Appeal decisions have gone against what is stated in the updated guidelines reflecting the disagreement within the EPO and controversy associated with this matter. For example, decision T 1989/18 (Reason 13) stated that neither Article 84 EPC, nor any other EPC provision, can lead to the requirement that embodiments disclosed in the description that are more general in nature than the subject matter of an independent claim must necessarily constitute subject matter dependent upon that of the independent claim (i.e. be necessarily according to the invention defined in the claims). Similarly, recent decision T 2194/19 found that if the description mentions embodiments outside the scope of allowed claims, the description does not need amending to remove said ‘embodiments’ or to highlight them as not being according to the invention. This decision also found that the ‘invention’ is not necessarily always to be equated with the ‘invention claimed.’

In stark contrast to these decisions (and indeed explicitly disagreeing with them), recent decision T 3097/19 found the opposite and agreed with the approach taken in the current EPO Guidelines for Examination. In the decision, in addition to making reference to Article 84 EPC, the Board also made extensive reference to Article 69 EPC and the extent of protection conferred by a patent.

In the view of the Board, an elementary requirement of a patent is that its extent of protection can be determined precisely. In the Board’s view, the clarity requirements for the claims of Article 84 EPC serve that purpose but are not sufficient to ensure it. According to the Board, the function of the claims, as defined in Article 84 EPC, is only achieved when the extent of protection can be precisely determined, and this can only be done if the claims are consistent with the definition of the invention provided in the description. If this were not the case, then the application for grant of the patent would be self-contradictory. The Board goes on to state that consistency between the claims and description is necessary for legal certainty, and that the skilled person must not be confronted with contradictory statements when reading a patent application since this might cast doubt on what the invention is for which protection is sought.

The Board goes on to provide additional comments on clarity and interpretation of claims. The Board acknowledges that its findings in the decision may be in tension with the requirement often expressed in case law that the claims must be clear “from the wording of the claims alone.” The Board states that it does not agree with a verbatim reading of this requirement and instead concurs with the statement in the Guidelines for Examination that “the meaning of the terms of a claim must, as far as possible, be clear for the skilled person from the wording of the claim alone”, which the Board considers is an expression of desire, in the interest of legal certainty, that divergence of post-grant jurisprudence be limited. The Board again then highlights its opinion that the requirement of Article 84 EPC that claims be clear is different from the purpose of Article 84 EPC which is that it must be possible to precisely determine the scope of protection.

T 3097/19 is an interesting decision since it makes an explicit link between the need to adapt the description so as to be in line with the allowed claims and the determination of the extent of protection as prescribed by Article 69 EPC which the Board considers to be the purpose of Article 84 EPC. The decision also adds to the body of conflicting case law on the need to adapt the description so as to be in line with allowed claims.

It is quite possible that at some point the conflict in the case law will generate a referral to the Enlarged Board of Appeal to answer the question of to what extent the description is required to be amended so as to be in line with allowed claims during examination of a European patent application. If such a referral takes place, it is hoped that the Enlarged Board will take a pragmatic approach to adaption of the description and not impose overly stringent requirements on applicants with regard to what amendments are necessary, which can add considerable costs to the pre-grant examination process.