Description amendments at the EPO – uncertainty for not (too) much longer? Possible EBA referral in T0056/21

Amending the description to conform with the claims remains a challenging element of European patent practice, particularly in view of the divergent case law in the subject, and varied approaches taken by individual examiners during the examination of European patent applications. We previously discussed this controversial topic in March 2023, following the Annual Review of 2022 decisions of the Boards of Appeal.

Now, following a recent communication from Board of Appeal 3.3.04 in T0056/21, it is possible that applicants and patent attorneys alike might receive some long-awaited clarity on this issue, and the interpretation of Art. 84 EPC.

The Board has proposed a referral to the Enlarged Board of Appeal, and has invited the Appellant, Roche Diagnostics, to submit their observations by 21 October 2023.

The potential referral would aim to determine whether description amendments, bringing the description in line with the scope of the claims, are needed to fulfil the requirements of Art. 84 EPC.

The Board has suggested the following question for the proposed referral:

"Is there a lack of clarity of a claim or a lack of support of a claim by the description within the meaning of Article 84 EPC if a part of the disclosure of the invention in the description and/or drawings of an application (e.g. an embodiment of the inventio nr an example or a claim-like clause) is not encompassed by the subject-matter for which protection is sought ("inconsistency in scope between the description and/or drawings and the claims") and can an application consequently be refused based on Article 84 EPC if the applicant does not remove the inconsistency in scope between the description and/or drawings and the claims by way of amendment of the description ("adaptation of the description")?”

The Appeal follows a decision of the Examining Division to refuse the grant of the patent for the non-compliance with Art. 84 EPC, because the description had not been amended to conform with the claims. Roche withdrew the request for the oral proceedings during examination and requested a decision open to appeal based on the status of the file.

Interestingly, the Board has queried whether the 2023 version of the Guidelines for Examination is in line with the wording and purpose of Art. 84 EPC and with the recent case law, thus casting doubt on the legal basis for clarity objections resulting from inconsistency between the embodiments of invention in the description and the scope of the claims. It is notable that this is the same Board that presided over T1989/18, the first Board of Appeal decision to find a lack of legal basis for requiring amendments to the description.

It remains to be seen whether Roche will decide to request a referral, which would inevitably result in further delays to their grant process, yet provide an opportunity to advance this controversial aspect of the case law.

We will follow developments with great interest and will provide an update in due course.