A new referral to the Enlarged Board of Appeal from the Board of Appeal in decision T697/22 may resolve the long-standing issue of when a patent description needs to be amended to bring it into conformity with the claims.
Current practice at the European Patent Office
The EPO requires a patent description to be amended to bring it into conformity with the allowed set of claims. This is set out in the Guidelines for Examination F-IV, 4.3:
“Any inconsistency between the description and the claims must be avoided if it casts doubt on the subject-matter for which protection is sought, thereby rendering the claim either unclear or unsupported under Art. 84, second sentence, or objectionable under Art. 84, first sentence.”
To achieve this, the description usually requires amendment to delete embodiments which do not fall within the scope of the allowed claims or to introduce statements which denote that the embodiments in question do not form part of the invention.
This can be complex and costly for applicants as it is an additional requirement which must be carefully considered prior to grant. It is also not a common practice at other patent offices around the world.
Background to the referral
The case relates to EP 2,124,521 B1, which has claims to a hydroponics growing medium.
During opposition proceedings, a set of claims and an amended description filed during oral proceedings were found to be allowable (auxiliary request 1E). Both parties appealed the decision and one of the arguments submitted by the Opponent was that the amended description did not meet the requirements of Article 84 EPC because it was inconsistent with claim 1 of auxiliary request 1E.
In response, although the Patentee responded to the arguments regarding the amended description, it did not file a further amended description to address the issue raised.
At oral proceedings before the Board of Appeal, the Patentee initially argued that the description as amended during opposition proceedings did not need to be further amended since no such amendment would be needed even if the amendment in claim 1 of auxiliary request 1E introduced an inconsistency between this claim and the amended description. However, as stated in the decision:
“Only at a later stage during the oral proceedings did the patent proprietor file a new request containing the claims of auxiliary request 1E and a description which, compared to the description as amended during the oral proceedings before the opposition division, contained further amendments to adapt it to the claims of auxiliary request 1E. The description amended during the oral proceedings before the board is based on the description amended during the oral proceedings before the opposition division, but with paragraphs [0013] and [0016] deleted.”
The Board was of the view that the new description represented an unallowable amendment to the Patentee’s appeal case and could have been filed earlier in the appeal procedure, e.g. in response to the Opponent’s Grounds of Appeal. It was therefore not admitted to proceedings. The Patentee therefore had to argue that the amended description filed during opposition proceedings met the requirements of the EPC. However, the Board of Appeal agreed with the Opponent that there was an inconsistency between the claims of auxiliary request 1E and this version of the amended description.
Having decided that there was an inconsistency, the question to be considered was therefore does the inconsistency between the claims and the description contravene the requirements of Article 84 EPC?
The Board determined that there are two lines of diverging case law relating to this question, one line answering the above question in the affirmative, and a second line answering the above question in the negative.
In the first line of case law which would find that the inconsistency contravenes Article 84 EPC, the common underlying principle is that there is a legal basis that requires the description to be consistent with the amended claims. Within these cases the Board found five different subordinate lines of case law which all provide different legal basis for this requirement:
- Article 84 EPC alone as legal basis (with or without relying on T 1024/18 as a guiding decision);
- Article 84 EPC in combination with other legal provisions of the EPC as a legal basis (Article 94(3) EPC and Rules 42, 48 and 71(1) EPC or only in combination with Rule 42 EPC);
- Rule 42 EPC alone as a legal basis;
- The requirements of the EPC as a legal basis, i.e. in terms of the general principles of the EPC; and
- Requirement of consistency as a general (legal) principle
In the second line of case law, it was decided that there is no legal basis in the EPC for the refusal of a patent application if there is an inconsistency between any amended claims and the description, see T 56/21, T 1444/20, and T 2194/19.
The Board also pointed to the recent decision of G1/24 which confirmed the importance of the description when interpreting the features of the claims and felt that this case provided greater significance to the issue of an inconsistency between an amended claim and the description.
The Questions referred to the Enlarged Board of Appeal
In light of the diverging case law and the increased significance of the description in interpreting the invention following G1/24, the Board decided to refer three questions to the Enlarged Board of Appeal.
- 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?
- If the first question is answered in the affirmative, which requirement(s) of the EPC necessitate(s) such an adaptation?
- 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?
Summary
The first question relates to the crucial point in this case and the second question goes to the heart of what actual basis there is in the EPC if inconsistencies between the claims and the description must be removed. It is interesting, however, that the Board has specifically posed the third question which does not relate to this case but to the general practice at the EPO during examination procedures.
The requirement to amend the description to bring it into conformity with the allowed claims has been a long running and contentious point of practice at the EPO. What may at first seem like a straightforward task is actually fraught with potential pitfalls and dangers.
This will be a much-watched case and could have significant implications for future practice at the EPO. Let us hope that the Enlarged Board of Appeal chooses to answer all three of the questions and provides clear guidance for applicants, patent practitioners, and examiners alike.
