Board of Appeal finds no legal basis for the requirement to amend the description in line with the claims (T 1989/18)

A quirk of European patent prosecution is the requirement for the description to be amended in line with allowed claims. This requirement is provided for by the EPO Guidelines for Examination (F-IV-4.4). Despite having unclear legal basis, the description amendment requirement was controversially made even more stringent in the 2021 Guidelines (IPKat).  Now, in a remarkable decision from the Boards of Appeal (T 1989/18), published on the 22nd December, a Board of Appeal searched for and unambiguously failed to find any legal basis in the EPC for the requirement that the description must be brought in line with the claims.  

Legal Background: Description amendments

In order to comply with the requirement stipulated by the EPO Guidelines for Examination, that the description should be brought in line with the claims, it used to be standard practice for applicants to merely replace "invention" with "disclosure" thorough-out the description. The aim of the applicant will always be to minimize description amendments as much as possible, given the potential for the description to be used to interpret the claims post-grant (e.g. in a doctrine of equivalents analysis). 

Amending the description

Controversially, however, the EPO Guidelines for Examination for 2021 newly required applicants to make much more significant changes to the description. Particularly, the 2021 Guidelines state that the description should be amended to delete embodiments which are no longer covered by the claims, or to explicitly state that the offending subject matter is not part of the invention (F-IV-4.4) (IPKat). 

Importantly, the legal basis for description amendments has always been sketchy. Importantly, the Guidelines, as the name suggests, are a guide to the current case law and practise of the EPO and are not legally binding (IPKat). Anecdotally, not all of the Examiners have enforced strict compliance with the new Guidelines. On the contrary, some Examiners have taken a fairly laid-back approach, and have been happy to accept only minimal amendments to the description. Conversely, other Examiners have been insisting on very strict compliance with the new Guidelines. In most cases, however, Examiners have been more-or-less reasonable in their approach, requiring more amendments to the description than might previously have been required, but not insisting on a strict adherence to the letter of the Guidelines. 

Nonetheless, the requirement to amend the description in line with the claims remains the bugbear of patent attorneys concerned with how amendments may be viewed as limiting the scope of the claims in national courts, and who have been frustrated by the divergent approach taken by Examiners. 

Case background: Refusal of an application on the grounds of an unclear description

The Board of Appeal decision in T 1989/18 considered whether there was legal basis for refusing an application on the grounds that the description had not been amended in line with the allowed claims. After accepting the claims as allowable, the Examiner refused the application (EP2794651) for the sole reason that the description did not comply with the requirements of Article 84 EPC, i.e. that the claims should be clear and concise and supported by the description. 

The Examiner argued that the description identified embodiments as being part of the invention which were not part of the invention as defined by the claims. Particularly, the Examiner's main objection was that the description specified subject matter as being part of the invention, where this subject-matter was broader than the independent claims. The Examiner suggested some more substantial amendments to the description, but these were not accepted by the applicant. Notably, the Examining Division decision dates back to 2018, i.e. before the even more stringent guidelines on description amendments were introduced. 

On appeal, the applicant maintained as their Main Request a description having only minimal amendments. The applicant argued that there was no legal basis in the EPC for the requirement that parts of the description no longer covered by the claims should be marked as non-related to the invention or deleted. As such, the applicant argued, "the adaption of the description is superimposed by the Examining Division on the Applicant as an additional, non-EPC-based hurdle before a decision to grant will be issued". The applicant also pointed out the non-uniform way in which the Guidelines were applied by different Examiners. 

No legal basis in Article 84 EPC or Article 69 EPC

The Board of Appeal in T 1989/18 considered whether any legal basis could be found for the refusal of the application on the grounds that the description included subject-matter that was broader than the claimed invention. 

The Examiner had refused the application on the basis of Article 84 EPCArticle 84 EPC states that "[t]he claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description". The Board of Appeal pointed out that Article 84 EPC thus requires the claims to be clear in-and-of-themselves, i.e. without reference to the description (as discussed in detail in T 1127/16, IPKat). Article 84 EPC requires the claims to be supported by the description, but only to the extent that the claims should not include subject matter that does not have basis in the description. As such, additional subject matter in the description that does not appear in the claims is not prohibited.  

The Board of Appeal also rejected Article 69 EPC as providing legal basis for the requirement for description amendments. Article 69 EPC states that the extent of the protection provided by a patent is determined by the claims, but that the description shall be used to interpret the claims. Article 69 EPC is used as the legal basis for permitting an analysis under the doctrine of equivalents in the national courts (IPkat). The Board of Appeal considered Article 69 EPC irrelevant to the matter of description amendments, given that it is not concerned with the definition of the subject-matter sought to be protected by a claim, but instead just deals with how the claims should be interpreted (r. 6-7). 

No legal basis in Rule 42(1)(c) EPC

The Board of Appeal also considered whether Rule 42(1)(c) EPC could serve as legal basis for description amendments. Rule 42(1)(c) EPC requires that the description shall disclose the invention, as claimed, in such terms that the technical problem and its solution can be understood. In the absence of a unity objection, the Board of Appeal could not see how this provision could be used to justify a requirement to amend the description in line with the claims. In the case in question, the Board of Appeal particularly failed to see how the offending passages impaired the understanding of the technical problem and its solution as set forth in the summary of the invention (r. 8).  

No legal basis in Rule 48(1)(c) EPC

The Board of Appeal finally considered whether Rule 48(1)(c) EPC could provide the legal basis for description amendments. Rule 48(1)(c) EPC states that a patent application should not contain "any statement or other matter obviously irrelevant or unnecessary under the circumstances". The Board of Appeal noted the lack of legal guidance as to what constituted "matter obviously irrelevant or unnecessary".

Rule 48 has previously been cited as potential legal basis for the requirement to amend the description (e.g. T 1903/06, r. 2). However, the Board of Appeal present case disagreed with this approach for a number of reasons. First, Rule 48(1)(c) EPC only relates to patent applications, not granted patents (r. 11). Second, whilst the other sub-provisions of Rule 48 EPC specify that more serious matter should not be included in a patent application, e.g. '"matter contrary to "ordre public" or morality"', these sub provisions are not understood as providing sufficient reason to refuse grant of a patent. Thus, it would seem perverse to use Rule 48 EPC as allowing refusal of a patent just because the description contained "unnecessary" subject matter. 

No legal basis, full stop.

The Board of Appeal therefore rejected all of the proposed provisions of the EPC that might be thought to provide legal basis for the requirement in the Guidelines that the description should be brought in line with the claims. The appealed decision was thus found to be erroneous and was set aside.

Final thoughts

Despite the stringent and onerous nature of the current Guidelines on amending the description in line with the claims, there is a paucity of case law justifying the requirement. A lack of Boards of Appeal case law is of course understandable, given that it is generally not worth an applicant pursuing the matter all the way to appeal when their claims have already been deemed allowable. T 1989/18 appears to change this. To this Kat, the decision of the Boards of Appeal in T 1989/18 is an unequivocal rejection of the requirement that the description must be brought in line with the allowed claims. Adjunct to T 1989/18, we are also awaiting confirmation of rumours that the EPO is rethinking the more strict requirements on description amendments introduced in the 2021 guidelines, and that these may be ameliorated in 2022 guidelines. 

Despite the obvious relevance of T 1989/18 to almost every allowed patent application, the decision has only been given a D distribution (i.e. no distribution to the other Boards). The decision was also published at a time when many attorneys will be enjoying a holiday break as opposed to reading the latest Boards of Appeal case law. Nonetheless, and regardless of whether the guidelines are changed in 2022, applicants now have clear Boards of Appeal case law to cite should an Examiner demand unnecessary amendments to the description of an otherwise allowable application. 

Further reading

Board of Appeal finds no legal basis for the requirement to amend the description in line with the claims (T 1989/18) Board of Appeal finds no legal basis for the requirement to amend the description in line with the claims (T 1989/18) Reviewed by Rose Hughes on Sunday, December 26, 2021 Rating: 5

18 comments:

  1. For me, this decision is a bolt out of the blue but, on reflection, perhaps we should have been expecting it. Striking out the requirement for strictly conforming the description to the allowed claims will deliver a huge boost (to use the technical term de jour) to efficiency at the EPO. Such a huge uplift in efficiency would clear the way for management to reduce the numbers of highly paid EPo Examiners quite considerably. Besides, the Americans don't do it, and their courts can still manage to do patent litigation, so why should we Euro's worry, eh?

    One would have thought that Boards of Appeal are unswayed by thoughts about efficiency. Not any more though. The topic seems to weigh more and more heavily in their delibarations. Perhaps the members of this deciding Board are all still young, in tune with the times, and at this stage of their career within the EPO find thoughts about improving efficiency particularly persuasive.

    Meanwhile, if past performance is any guide to the immediate future, we shall all have to continue delivering strict conformity, that is, until the Examiners' Bible, The Guidelines, suffers its next revision by management.

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  2. Dear Max Drei,
    I can agree with you that it would help if the description would not have to be adapted to the new claims like in the US.
    There are however two conditions to fulfil:
    1) the last sentence of Art 84 should be deleted, and this needs an amendment of the EPC other than by "secondary legislation";
    2) like in the US, the behaviour of the applicant/proprietor during examination should be taken into account.
    The problem is that there is a fluctuating legislation about the doctrine of equivalents. This results to a large part of the refusal of the contracting state to adopt a definition of equivalents in the protocol on Art 69 during the diplomatic conference of 2000. An Art 2 has been added, but the Art 3 about equivalents has been rejected.
    The EPO cannot cater for the various ways equivalents are dealt with by the national jurisdiction and can thus not accept that what is claimed is not really what is claimed but could also be something else.
    By the way the BA in T 1989/18 seems to have confused clarity of the claims as such (first part of Art 84) and support by the description (last sentence of Art 84).
    Last but not least, it is, at least for the time being, a single decision.
    Should the Guidelines be adapted, it might indeed take quite a while.
    How long did it take to remove the purposive selection in the Guidelines?
    The three points test = ex essentiality test is still in the Guidelines in spite of the heavy criticism by the BA.

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  3. There is a lot of discussion on LinkedIn about this decision.

    There are two distinct threads but both are about the same decision:

    https://www.linkedin.com/feed/update/urn:li:activity:6880822812777443328/

    https://www.linkedin.com/feed/update/urn:li:activity:6880931690655584256/

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  4. Shouldn't this pave the way for a further referral by the President to the EBoA? Clearly, conflicting decisions by different Boards concerning a point of fundamental nature.

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  5. There is one decision T 1989/18 which goes against T 1808/06 which is the reference in matters of adaptation of the description.

    Should the president file a referral for every decision which is contrary to another one the legal department of the EPO would only be busy with such matters. This is not reasonable.

    To me there is one referral which could be useful: depending on the BA to which the file goes, the absence of a measuring method is considered sometimes as a matter under under Art 83 which leads to the revocation of the patent. For other BA it is a mere problem of Art 84 which under G 3/14 cannot be discussed in opposition.

    This lottery effect should be brought to an end, and if a BA is not prepared to refer the question to the EBA, then the president should do so.

    The adaptation of the description seems to become kind of fixation that puts representatives in a trance.

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    1. Arguing that we shouldn't seek legal certainty in one area because there are other bigger issues in another area is a fallacy.

      Description amendments put us in a trance because they waste our clients' money and do not improve legal certainty enough to justify the additional costs. When I am prosecuting, description amendments are purely a waste of my time and the client's money. When I am reviewing third parties' patents, it makes essentially no difference to my infringement opinions whether the description has been amended. So what is the point, particularly when the legal justification is so weak? Article 84 requires the description to support the claimed invention, but a bridge can support many cars simultaneously.

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  6. I'm a representative, Attentive, but I'm not one of those put into a trance. I am somwhat equivocal about the whole issue of conforming the description. If we see the description as a historical record of what was filed by the Applicant on the filing date of the application, then any effort to conform it to the allowed claims is misguided. Conversely, if the description of the B publication is to be that which informs the task of construing the issued claims, then it should be conformed.

    For me, the more interesting choice is whether to excise passages of the description or, instead, hang on to them but preface them with words indicating that they are not descriptions of subject matter within the ambit of the claim. I find that my decision varies from case to case, often turning on Art 83 EPC considerations. Sometimes I want to hang on to those passages but in other cases I am thinking that the scope of infringement by equivalent is best optimised by excision of such passages of the descrption. As ever , Applicant has to decide what text goes to issue.

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  7. Dear Max Drei,

    I only used the word trance as I have rarely seen a topic in which so many representatives commented on a decision.
    You might not have spotted the cheek in my tongue.
    I fully agree with your statement about the B publication, but construing the claims does not mean for me leaving in the description statements which could put doubts about what the claim cover.

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  8. I would like to draw the attention to T 1399/17 which came to a different conclusion.

    As the claims amended during the OP before the OD which lead to maintenance in amended form were not adapted to the description and hence left doubts about the scope of protection, the MR was not allowable.

    https://www.epo.org/law-practice/case-law-appeals/recent/t171399eu1.html

    See Point 2 of the reasons

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  9. I suppose this comments thread has gone to sleep now but, if not, I offer the following comment and hope for reaction.

    I find para 5. of the "reasons"in the written Decision somewhat superficial because it fails to address the question what does the word "support" mean (in the context of Art 84 EPC). Does it mean i) "backs up" or "corroborates", or does it mean ii) "enables" the claimed subject matter.

    Suppose I file at the EPO, with a claim to the feature combination A+B+C+D, the EPO searches and finds in prior publication P1 exactly that feature combination. In reply I file a 2-part independent claim to "A+B+C+D characterized by X". I leave the description unamended, whereby it continues to declare that the invention is A+B+C+D. That was true when the patent application was filed but it is manifestly false, as soon as D1 is brought to light. The unamended WO description text enables the granted claim but does it corroborate the granted claim? I think not. Consider witness testimony at trial. Witness A gives evidence of fact and, later, Witness B gives evidence which flatly contradicts that given earlier by A. Does Witness B "support" Witness A? Isn't that contention a bit of a stretch?

    Reverting to Para 5 of the Reasons, after the first two sentences, the text simply recites the constraints on using the description to construe the claim. But just because you can't use the description to get to an artificial meaning for the claim does not mean that it is obligatory and in all cases and circumstances to construe the claim as if you have not already read the description (or that the description doesn't even exist). I mean, the B publication is a single document with several parts. One supposes that the legislator envisaged that the person construing the claim would do it only after reading all the parts of the document, to gain a cumulative undertsanding of its teaching. Shouldn't those different parts then be rendered consistent with each other, to spare the court construing the claim unnecessary stress and confusion? If a description in an EPO B publication flatly contradicts the granted claim in regard to what the subject invention is, to what extent does that description "support" that claim? In other words, will an enabling description always satisfy the Art 84 requirement that it "support" the claim, regardless how egregiously the description contradicts the claim in its statements of what the invention is?

    The EPO has an ongoing practical problem with the strictness of its Gold Standard. Applicants with a deserving invention nevertheless often find themselves in the Bermuda Triangle, needing to amend to comply with Art 84 but unable to do so without offending one or both of Art 123(2) or 84. I wonder whether the motivation for this Decision is to reduce the number of deserving inventions that perish in the Bermuda Triangle. The problem with that is that easing the requirement to conform the description strictly to the allowable claims will do nothing to help in that regard.

    Alternatively, the EPO Boards of Appeal are looking for ways to remove aspects of practice peculiar to the EPO (of which conforming the description is one) which increase prosecution costs at the EPO and which therefore irritate bulk corporate EPO filers and so occupy their powerful lobby.

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    Replies
    1. Thanks for sharing your thoughts. As to your first point, an applicant submits the application with the belief that the invention as described is patentable. If the examining body of competent jurisdiction disagrees, the applicant has an opportunity to amend the claims until they are found to be allowable, or to appeal the refusal. However, any "concession" made by the applicant to obtain a patent is not admission that the allowed claims define the broadest scope of the invention. Rather, it is a compromise offered in exchange for a grant of IP rights (better to get something than to get nothing). Thus, it is not necessarily a contradiction for the description of the invention to be broader than the allowed claims if one (correctly) presumes that the claims, and not the description, define the scope of protection of the granted patent. As long as the scope of the claims are clear (as required by the EPC), then any description broader than the claims can be understood to be beyond the scope of the patent rights and not confused as to being some alternative interpretation of those rights (that is what the claims are for).

      The problem with the Gold Standard (other than the tension between Art 84 and Art 123(2)) is that there is no clear requirement for amending the description. From a practical standpoint, most patents are shelved. The few that are asserted are likely to have sufficient value that the parties (either on their own or through the courts) can spend the time and money to litigate what the patent covers and what it doesn't. This acknowledges that the patent examiner doesn't, and shouldn't, have the final word in an ex parte proceeding. While the goal of clarity is admirable, and we should want to reduce the number of bad patents that are granted, it also seems like forcing the applicant to commit to the Examiner's interpretation prior to grant is like putting the cart before the horse because patents are not self-enforcing. In the U.S., the USPTO (for better or for worse) has adopted the broadest reasonable interpretation standard in an attempt to mitigate these sorts of post-grant interpretation issues. If an Examiner believes that the claims are too broad, then the Examiner should make a refusal on that basis and not, instead, force the applicant to hew to the Examiner's interpretation of what the invention is (as opposed to what aspect of the invention the applicant has agreed the claims cover).

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    2. Excellent arguments, Anonymous. They reminded me of the Pemetrexed litigation, in which the courts gave the claims a wider scope of protection than their literal wording would seem to allow. In that case, an unconformed description might have been more helpful to the court than one strictly conformed to the claims after prosecution amendment. Where's the harm in everybody agreeing that if Applicants wants it, the "support" requirement of Art 84 EPC can still be met even if the description remains as filed, even on into the B publication?

      One consequence of the importation of a DoE (Doctrine of Equivalents) into the EPC is that it wipes out the ages-old maxim that what comes after and infringes would, if coming before, destroy novelty. Could it be that an unintended consequence of the arrival of the DoE is that it clears the way for descriptions to go to B publication without being conformed?

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  10. Art. 84 EPC requires the claims to be supported by the description (to avoid that what is claimed cannot be found also in the description).
    However, there is nothing in the EPC that requires the descriiption to be supported by the claims.

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  11. Dear Max Drei,

    It is worth noting that the chair in T 1989/18 was simply deputising.

    By the way, M.Harrisson is chairing BA 3.2.06 and the present decision was taken by BA 3.3.04.

    To come back on the case, why on earth does a deputising chair find it necessary to come up with such a decision, even if he is the deputy chair of the BA?
    Was the legal member wanting to show off?

    The description has to be adapted to the claims and most of the boards require it.
    When they remit after having found some claims allowable, they remit for further prosecution which mostly means adapting the description. Sometimes they even say so.

    In the absence of the applicant or the proprietor at the OP, most BA refuse the application or revoke the patent. Some are more lenient and remit in spite of the absence of the proprietor. Are all those BA so wrong that they need a telling off by BA 3.3.04?

    If the description does not need adaptation then the last sentence of Art 84 should be deleted. But then, like in the USA, the behaviour of the applicant should be taken into account when he starts an infringement action.

    To me it was exactly the Pemetrexed case which lead me to think that it was the description which was not amended correctly which caused the upheaval. During the whole examination the applicant wanted a quick decision and accepted to limit its claims to pemetrexed disodium.

    The applicant drew a “distinction between subject matter which is relevant to the invention which is indicated as being to which “the present invention generally relates” and the “subject matter provided by the invention” which is the subject matter claimed”. The applicant further “highlighted that the reduction of toxicity of the anti-folate in the use of the combination therapy is relevant and should be retained”.

    The only combination therapy ever disclosed or envisaged during examination disclosed was pemetrexed disodium + the anti-folate, i.e. vitamin B12.
    This should not have been left in the description.

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    1. As I wrote before, there is nothing in the EPC that requires the description to be supported by the claims (art. 84 requires the OPPOSITE), therefore the description should not be adapted to the claims and in particular there is no need at all to delete subject-matter not covered by the claims. Such a deletion may even raise issues of art. 123(2) and (3) EPC.

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  12. Thank you, DXT. Perhaps the Board here was doing something like what I enjoy doing on the blogs: set a hare running and see who chases it. Or, as one of my critics on the US blogs often says: throwing stuff against a wall to see what sticks.

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  13. Hi,

    I am a student working on my master's thesis. The topic of the thesis is the right / obligation to make changes to the patent description. T 1989/18 will be central to my thesis and your views on the matter is very helpful for me. If you have any relevant decisions you recommend reading regarding this topic, please let me know!

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  14. Would it be enough to only describe the subject matter of original claim 1 as an embodiment, and leave everything else in the description as optional features? The days of the clearly-delineated numbered embodiments are (mostly) long gone anyway: you're more likely to see every sentence of the description starting with "In some embodiments" which is not really helpful to anyone.

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