Originally published on IPKat.
Last year, the Board of Appeal in T 56/21 promised us all a referral to the Enlarged Board of Appeal (EBA) on whether the description must be adapted in line with the allowed claims. Since then, the Board of Appeal seems to have been having a catnap. Now, nearly a year later, the Board of Appeal has finally issued its decision. However, in a disappointing anti-climax, the promised referral has failed to materialise. In its decision, the Board of Appeal concluded that a referral was not needed and instead found that there is unequivocally a lack of legal basis for the description amendment requirement.
Adaptation of the description: What is it all about?
The description amendment saga began with the introduction of substantially stricter guidance in the 2021 EPO Guidelines for Examination on how much the description should be adapted in line with the allowed claims. The Guidelines currently require that, when adapting the description, the applicant must either delete subject matter not covered by the claims or explicitly state in the description that such subject matter is not part of the invention (F-IV, 4.3).
The issue of description amendments causes controversy because of the risks of pre-grant description amendments for the validity and successful enforcement of a granted patent. Amendments made to the description of the patent application may influence interpretation of the claims under the doctrine of equivalents in national court proceedings. The claims may also be interpreted at opposition in view of the description of the patent as granted and not the description of the application as filed (see T 471/20). Amendments to the description therefore may be considered to irretrievably add matter. These risks, and the less than clear legal basis for the requirement, has lead to considerable dissatisfaction with the EPO’s bullish approach to description amendments as represented by the Guidelines.
T 56/21 case catch-up: Roche takes a stand
The case at issue in T 56/21 related to Roche’s application for a modified antibody constant region (Fc) (EP 15700545.5). The Examining Division (ED) issued a notice of allowance for the application in which the Examiner had proactively amended the description in line with the allowed claims. Following the Guidelines, the Examiner had deleted a number of pages describing mutations that were considered outside the scope of the allowed claim. The Examiner had also deleted the “claim-like clauses” provided at the end of the description. Claim-like clauses are often introduced into the description of divisionals to provide explicit basis for later claim amendments. The Examiner indicated that retaining the deleted passages could lead to unclarity as to the actual scope of protection of the claims. Roche rejected the Examiner’s description amendments.
Despite the controversy, a referral on description amendments has never been certain. The down-stream consequences of description amendments on claim interpretation may only become clear years after grant and, in the short term, the risks of amending the description before grant can be mitigated by filing a divisional application. However, in this case, Roche continued to refuse to amend the description and appealed the ED decision. Roche also submitted arguments supporting the Board of Appeal’s stated intention to refer the issue of description amendments to the EBA.
Board of Appeal finds no legal basis for adaptation of the description (again)
In its long-anticipated decision, the Board of Appeal considered whether the requirement for applicants to amend the description in line with the claims has legal basis in the EPC. The Board of Appeal dismissed the Guidelines themselves (the only explicit basis for the requirement) as irrelevant, given that “Article 23(3) EPC requires the members of the Boards of Appeal to comply only with the provisions of the European Patent Convention” (r. 5). Then, following the template of its previous decision in T 1989/18, the Board of Appeal considered and dismissed each of the provisions cited as the legal basis for the description amendment requirement.
The main body of the decision sets out the Board of Appeal’s reasoning for rejecting the argument that Article 69 EPC and Article 84 EPC are linked so as to justify the use of the description to interpret the claims during examination, as opposed to post-grant. For the Board of Appeal, Article 69 EPC relates to using the description to determine the scope of protection of the granted patent, and does not therefore justify the use of the description for the purpose of claim construction or resolving ambiguities in claim during examination (r. 52). In particular, for the Board of Appeal, Article 69 EPC (and its associated Protocol) is not concerned with the assessment of patentability in examination before the EPO. Article 69 EPC is instead concerned with the extent of protection in the context of national proceedings of a European patent following such examination. Therefore, Article 69 EPC is not applicable pre-grant.
Similarly, the Board of Appeal also found that neither Rule 43 EPC or Rule 48 EPC provided the necessary legal basis for the description amendment requirement. Specifically, Article 84 EPC and Rule 43 EPC merely set forth the requirements for the claims. Furthermore, for the Board of Appeal, “Rule 48 EPC is concerned with the publication of an application and the avoidance of expressions which are contrary to public morality or public order, or certain disparaging or irrelevant statements. Rule 48 EPC thus does not provide for a ground for refusal based on the inclusion of merely ‘irrelevant or unnecessary’ matter in the description intended for grant and even less for ‘discrepancies’ between the subject-matter claimed and that disclosed in the description”.
The Board of Appeal concluded that none of the legal basis proposed by other Boards of Appeal justify refusing an application based on a description that has not been adapted to the claims. In the case in question the Board of Appeal remitted the case to the ED with the order to grant the patent.
Why no referral?
The Board of Appeal also addressed directly the question of a referral on the issue to the EBA. It stated that it had decided not to proceed with the referral, as the law was “unequivocal”. Specifically, “the 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 was also not “persuaded by the reasons for the practice requiring the description to be adapted to allowable claims. A more uniform determination and better predictability of the extent of protection of a granted European patent in infringement proceedings can only be achieved if granted claims are clear in themselves” and found that “[i]f the legislator considers it justified to require that the description be aligned with the subject-matter of claims held allowable, the legislator should provide for the respective legal basis by way of amendment of the EPC.”
Final thoughts
Undoubtedly, the initial excitement over the promised imminent description amendment referral had already dissipated somewhat in the intervening months. The case had already been overshadowed by the recent referral on the related (and more impactful issue) of whether and how much the description should be taken into account for claim interpretation. Early speculation that the EPO may choose to combine the two issues into one referral for consideration by EBA has proved unfounded.
Aside from the absent referral, the decision of the Board of Appeal in this case is not surprising. The same Board of Appeal had already made its view clear on this issue in T 1989/18 i.e. the 2022 decision that kick-started the whole debate. The lack of a referral means that the decision in T 56/21 will now join the mounting pile of contradictory Board of Appeal decisions on the same issue. T 56/21 will be grist to the mill for those strongly against the description amendment requirement, ensuring that this issue will continue to trouble the EPO for the foreseeable future.
