As a complement to the 10th edition of the EPO "Case Law of the Boards of Appeal" (CLB), the EPO has published an Annual Review containing summaries of decisions from 2022. The review provides a thematic overview of selected decisions of the boards of appeal published in 2022. There are a number of notable decisions in the summary including those concerning the controversial topic of bringing the description into line with amended claims.
In October 2020, CMS published an article ‘New EPO Guidelines expected regarding amending a description: what’s all the fuss about?’, which was the catalyst for discussion in the profession about the impact of the new EPO practice around amending the description in conformity with the claims. Following this, the new EPO practice was formalised in the new EPO Guidelines which came into effect on 1 March 2021. As explained in our later article, there were immediately unanswered questions around why the Guidelines were changed. In particular, the only EPO Board of Appeal decision referenced in the Guidelines (T 1808/06) was a decision from 2008. Moreover, whilst this decision appears to align with EPO Guidelines and practice relating to amending the description pre-2021, it was not clear how the changes implemented by the 2021 Guidelines were occasioned by this decision. Practitioners were therefore still left grappling with how to comply with the new Guidelines and why they were needed.
Interestingly, from 2008 to 2021 i.e., 13 years, according to the EPO database of decisions, only 4 decisions cite decision T 1808/06 and only 3 of these (T 1252/11; T 1883/11; and T 0237/16) confirm the findings of this decision with respect to the need to amend the description (T 1646/12 notes that T 1808/06 dealt with the adaptation of the description and is not directly related to the issues referred to the board in the that case).
A glimmer of hope emerged from Board 3.3.04 at the end of 2021 with decision T 1989/18 (16 December 2021). T 1808/06 isn’t cited in T 1989/18 and, whereas T 1808/06 gives A84 EPC as the legal basis for amending the description, this was explicitly ruled out by T 1989/18. In view of T 1989/18 there were high hopes for the 2022 Guidelines revisions that there would be a reversal of the changes made in the 2021 Guidelines. Unfortunately, this did not materialise and in fact, in May 2022 the EPO issued a press release concerning the "adaptation of the description", indicating that the EPO understood the users' concerns as to the need for more certainty, thus signalling the EPO’s continued commitment to amending the description.
Hopes were dashed further in 2022 and in the EPO’s Annual Review there are 6 decisions mentioned (T 1024/18; T 2293/18; T 2766/17; T 1516/20; and T 3097/19) confirming the requirement for amending the description in conformity with the claims as compared to only 2 decisions (T 1444/20; and T 2194/19) that follow T 1989/18. There are also further decisions not featured in the Annual Review such as T 121/20; T 1968/18; T 2685/19 and T 169/20 which follow the trend that T 1989/18 is seen as an isolated decision.
The table below shows that these decisions have come from a variety of boards and that none of these decisions comes from Board 3.3.04 who issued T 1989/18. As compared with the 4 decisions over 13 years which cite T 1808/06, 4 decisions in 2022 alone cite T 1808/06 (see * in the table), thus signifying how controversial this topic has become.
Although not covered by the Annual Review just published, the trend above has continued so far in 2023 and Board 3.3.06’s decision T 169/20 dated 23 January 2023 refers to the requirement in Article 84 EPC that the claims shall be "supported by the description". In this context, there is an explicit acknowledgment from the board that this provision “is primarily applied to require that the claims be brought in line with the technical teachings of the description (i.e. due to an essential feature missing from the claim), or that the description be adapted to disclose the same invention as the claims” and that “these issues ultimately seek to eliminate inconsistencies in order to enable the supporting function of the description as an aid for understanding the claims”.
The EPO Guidelines F.IV.4.3 deal with inconsistencies between the claims and the description. Whilst the reference to T 1808/06 (which was apparently the basis for the revisions to the Guidelines in 2021) was deleted in 2022 and whilst none of the decisions since 2021 shed any light for applicants on how to amend the description, the EPO has persisted with the new practice. Nevertheless, there are a number of notable alterations to this section of the Guidelines, presumably aimed at addressing the need for more certainty, that was acknowledged in the May 2022 press release.
For example, there is an explicit acknowledgment that, where the claim comprises features A, B and C taken in combination, passages which describe only the realisation of feature A, for example by introducing features A1-A3 and discussing their advantages, but which can be interpreted as meant for being combined with the other features of the claim, would not necessarily need an amendment.
Further, previous language indicating that inconsistencies should be removed by amending the description either by deleting the inconsistent embodiments “or marking them as not falling within the subject-matter” for which protection is sought has been slightly tempered to say “ marking appropriately so that it is clear that they do not fall ” within the subject-matter for which protection is sought. The “marking appropriately” language appears to allow applicants slightly more flexibility in precisely how this might be worded.
Helpfully, there is also a new paragraph in the Guidelines stating:
“ As long as the resulting text of the description does not present conflicting information to the reader, an inconsistent embodiment may also be remedied by ensuring that it is not referred to as being "according to the invention" throughout the description and by complementing the reference to it with an explicit statement to the effect that it is retained due to being useful for understanding the invention (e.g. "embodiment useful for understanding the invention", "comparative example from background art”.”
Therefore, it would appear that paying careful attention to appropriate use of the phrase "according to the invention" throughout the description in combination with an explicit statement to the effect that it is retained due to being useful for understanding the invention represents an allowable approach under the 2023 Guidelines.
However, care must be taken since the revised Guidelines state that:
“ The terms "disclosure", "example", "aspect" or similar, on their own, do not necessarily imply that what follows is not encompassed by an independent claim. Unambiguous expressions have to be adopted to mark an inconsistent embodiment (e.g. by adding "not encompassed by the wording of the claims", "not according to the claimed invention" or "outside the subject-matter of the claims") instead of merely replacing the terms "embodiment" or "invention" by one of the aforementioned terms.” (new wording added marked in bold).
Therefore, the 2023 Guidelines still present significant challenges for applicants.
Working with Examiners
With the current uncertainties, in our experience, the most successful approach to amending the description is to engage actively in the process by responding to any request to amend the description at the earliest opportunity once a set of claims has been allowed or is likely to be allowed. We have developed a toolbox of approaches for amending the description which take into account the new Guidelines. In the event that an Examiner requests more extensive amendments, then actively engaging in dialogue with the Examiner by telephone is an important strategy for trying to reach a mutually agreeable description so that the application can proceed to grant. We have found that it is very rare to end up at an impasse and that Examiners often are as keen to reach a resolution as the applicant and they are therefore open to proactive dialogue and suggestions.