Changes in the draft 2022 EPO Guidelines for Examination on description amendments: Substantial changes or window-dressing?
The EPO has released the draft Guidelines for Examination 2022. The new Guidelines will come into force on 1 March 2022. Alongside the release of the draft Guidelines, the EPO has launched a user consultation. There had been cautious hope that the new Guidelines would soften the stringent description amendment requirements that were introduced in 2021. However, it is now clear that the 2022 Guidelines will do little to ameliorate the requirements introduced in 2021.
Legal Background: Description amendments
There has been speculation that the latest version of the Guidelines would ameliorate the onerous requirements introduced into the 2021 Guidelines on amending of the description in line with the claims. The 2021 Guidelines explicitly state that "embodiments in the description which are no longer covered by the independent claims must be deleted...unless these embodiments can reasonably be considered to be useful for highlighting specific aspects of the amended claims. In such a case, the fact that an embodiment is not covered by the claims must be prominently stated (T 1808/06)" (F-VI-4.3, emphasis added).
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| Draft version |
The requirement to amend the description of a European patent application in line with the scope of the claims is a peculiarity of European patent prosecution. Applicants understandably are loath to make substantial amendments to the description, either by deleting subject matter or introducing statements to the effect that certain subject matter does not fall under the scope of the claim. Both of these approaches carry risks. Deleting subject matter removes the possibility of relying on that subject matter for post-grant amendments during opposition. Introducing explicit statements that certain subject matter does not fall under the scope of the invention could potentially impact interpretation of the claims under the doctrine of equivalents. Given that the monopoly of a patent is defined by the claims (and that the description need only be referred to if there is ambiguity in the claims), then amending the description in line with the claims seems superfluous to requirements. After all, other jurisdictions don't find description amendments necessary.
The legal basis for the description amendment requirement is disputed. The 2021 Guidelines for Examination cite T 1808/06 as basis for the description amendment requirement. However, in a recent decision (T 1989/18), published online shortly before Christmas, a Board of Appeal searched for and failed to find any legal basis for the description amendment requirement (IPKat).
In cases of contradictory or evolving Boards of Appeal case law, the EPO Guidelines are generally intransient to change. It took the Guidelines considerable time, for example, to update the requirements for selection from lists to remove the "purposive selection" criteria that had been resoundingly rejected by a number of Boards of Appeal (IPKat). Even the most optimistic observers thus did not expect the recent Boards of Appeal decisions on description amendments to have an impact on the 2022 Guidelines, especially given that the case law is clearly far from settled on the point. Nonetheless, there had been rumours that the EPO was planning some form of amelioration of the requirement. The EPO themselves issued a press release in November stating that, following user feedback, in the next addition of the Guidelines the relevant sections on description amendments would "reflect users' requirements with a view to legal certainty in the post-grant stage of their European patents".
Limited changes in the draft 2022 Guidelines on description amendments
So what, if anything, has been changed in the 2022 Guidelines on description amendments? Section F-IV, 4.3 of the Guidelines, which refers to description amendments, has been reworded slightly. Some commentators have welcomed this rewording as a softening of the requirement. A welcome addition, for example, is that in borderline cases where there is doubt as to whether an embodiment is consistent with the claims, the benefit of the doubt should be given to the applicant.
However, to this Kat, aside from the addition that benefit of the doubt should be given to the applicant, the substance of the requirements remain unchanged. The EPO themselves only classify the updates as "minor amendments". In fact, far from ameliorating the description amendment requirements, the 2022 draft Guidelines now explicitly forbid the use of generalised statements regarding what does and does not fall under the invention (a strategy that some applicants have used to reduce the burden of onerous amendments). In particular, the new Guidelines explicitly require applicants to specify the exact embodiments that are considered inconsistent with the claims, using wording such as 'Embodiments X and Y are not encompassed by the wording of the claims but are considered as useful for understanding the invention".
A similar requirement has been included with regards to mentions of unpatentable subject matter such as methods of treatment. The new Guidelines indicate that it is acceptable to include a statement that specific examples should be interpreted as references to compounds for use in methods of treatment, but that the statement should again refer to explicit examples. A blanket statement is not sufficient. The changes to the Guidelines on description amendments thus amount to nothing more than window dressing.
User consultation on the Guidelines
Alongside the release of the draft 2022 Guidelines, the EPO has launched a user consultation. The deadline for submitting a response to the consultation is 15 April 2022. The draft 2022 Guidelines as they currently stand have ensured that description amendments will remain a controversial topic, and the EPO can probably expect many submissions on this topic from users. Perhaps this will persuade the EPO to rethink their approach in time for 2023?
Further reading
- 2019 updates to the EPO Guidelines for Examination - the highlights
- Highlights from the new EPO guidelines for examination 2021: ViCo oral proceedings, description amendments and antibodies (14 Feb 2021)
- Board of Appeal finds no legal basis for the requirement to amend the description in line with the claims (T 1989/18) (26 Dec 20221)
- Can amending the description to summarize the prior art add matter to the patent application as filed? (T 0471/20) (5 Jan 2022)
Reviewed by Rose Hughes
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Monday, February 07, 2022
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I shall be provocative, to see what reaction I draw from your readership. Why is the EPO so fixated on the imperative of strict conformity between the description and the claims? I suspect that the real reason is NOT to be of service to the courts seized with infringement actions but, rather, because it is still obsessed by its own metrics for its "productivity". Insistence on strict compliance makes it so much easier and quicker for the EPO to strike down patent applications they feel do not deserve to be allowed.
ReplyDeleteKilling a patent application for non-compliance with Art 54 or Art 56 is hard work. How much easier it is to use an age-old technique from the sport of boxing, the old One-Two. First you punch Applicant with the imperative of compliance with Art 84. The follow-up is to refuse the amended application for non-comliance with Art 123(2) EPC. If the EPO surrenders its insistence on strict conformity, Art 84 loses its potency and Art 123(2) loses its lethality.
The EPO resembles ever more closely a corporation fixated on pushing up productivity and driving down costs. But it isn't a corporation and corporate ideas of productivity are misplaced. Suppose the management of an orchestra decides to impress its Funding Bodies by raising "productivity". And suppose it does this by playing its performance pieces 5% faster. If you were funding the orchestra, how impresed would you be by that?
While I agree with your last paragraph, I do not think that stringent requirements of adapting the description are related to production or trying to "kill" applications. These requirements actually lead examiners to spend time in very unproductive ways (explaining the requirements, checking that adaptation has been performed as required, writing communications or even summons to oral proceedings...). And I doubt that the managers introducing such measures have any will to kill applications, instead if everything could be granted while somehow maintaining appearances of quality, they would surely be very happy.
DeleteSo why? One can only guess. It might be the conjunction of the tendency of the EPO to constantly expand beyond its actual purpose (here: influencing infringement proceedings) and of a manager having identified the opportunity of an easy project for "enhancing quality" (which as everybody knows is the main priority at the EPO).
Bring About: what you write about productivity makes sense but does not completely convince me.
DeleteHow much time does it take, to call upon Applicant to i) conform the description and ii) include a painstaking, word-by-word legitimation of every text amendment? Not much. A lot more for the representative. How much time does it take the Examiner to skim through those text changes to find one that can be said to offend Art 123(2) EPC? Again, not much.
Suppose the "productivity game" includes fending off the heavy personal workload of preparing for Oral Proceedings, writing the Summons, making heavy demands on the precious time of the two colleagues in the ED, and the Oral Proceedings. Why not instead keep going indefinitely the rapid ping-pong one-to-one argument about clarity/added matter till Applicant gives up or gives in?
For the ED as such, that's higher "productivity" isn't it?
Inasmuch as intermediate communications in examination bring no points for the examiner, that's a big "NO". And as you wouldn't even consider conformity with the claims to be a problem until you had a set of claims that could be granted, it's no use for fending off the summons, either. Multiple intermediate communications are NOT considered as a sign of "quality".
DeleteThe author writes: "Deleting subject matter removes the possibility of relying on that subject matter for post-grant amendments during opposition." - I would appreciate if the legal basis could be clarified. At least Article 123(2) EPC, Article 100(c) and Article 128(1)(c) are, each, concerned only with the application as filed. Article 123(3) does not limit narrowing claim amendments (same for Article 138(1)(d).
ReplyDeleteThe author also writes: "Given that ... that the description need only be referred to if there is ambiguity in the claims". I recall that the Protocol on the Interpretation of Article 69 does not exactly say this. To quote the Protocol: "Article 69 should NOT be interpreted as meaning that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims." (capitalization added).
Rose, as you will see from commentary on another blog (http://patentblog.kluweriplaw.com/2022/02/01/top-4-changes-to-the-2022-epo-guidelines-for-examination/), you are not alone in believing that the changes to the GL will not improve the situation for the vast majority of cases. However, given that the draft text of the GL was the result of discussions with stakeholders, the fact that little of substance has changed raises various questions.
ReplyDeleteFirstly, did the "stakeholders" - which I assume means the representatives of user associations on SACEPO - really agree to this draft text?
If so, was this really the best that the user associations could achieve on behalf of their members?
On the other hand, if the draft text does not fairly reflect the consensus on SACEPO, then why is the EPO proving to be so resistant to reverting to their previous, long-established (and much more "applicant-friendly") practice?
In this regard, I think that Max may have a point when questioning the EPO's motivations for demanding "strict" compliance with the claims. That is, whilst I have my doubts that the aim is to kill questionable applications, I agree that supposed "productivity" is almost certainly the underlying driver.
Surely the issue the EPO fear is certainty for third parties? If the description of a granted patent has text that explicitly says "the invention" encompasses a much broader scope than the granted claims, then the untrained reader may incorrectly conclude their activities (planned or otherwise) infringe.
ReplyDeleteHaving said that I completely disagree with the premise, situation above notwithstanding. Given that the US leaves the description unamended and is the most important market in the vast majority of cases, we are wasting our time making amendments in Europe.
It is not possible to achieve, and so not sensible for the EPO to pursue, absolute certainty regarding the extent of protection afforded by the claims. This is so for two main reasons.
DeleteFirstly, national courts, and not the EPO, have the ultimate responsibility for determining the extent of protection conveyed by the claims of a patent.
Secondly, the way that national courts determine the extent of protection unavoidably introduces an element of uncertainty.
For example, a court may take evidence from a person skilled in the art in order to determine what technical meaning is conveyed to them by the wording of the claims. That technical meaning may be (subtly) different to that which the EPO examiner (and/or the representative for the applicant) had in mind during prosecution.
More importantly, a court is obliged to give consideration to equivalents. My understanding is that, for the purpose of determining the outcome of either examination or opposition proceedings, the EPO never considers equivalents. This makes it impossible to be certain that the extent of protection afforded by a national court will chime with the EPO's interpretation of the claims (which will be based upon a rather literal assessment the claim wording).
In this context, the EPO's insistence upon a "strict" adaptation of the description (wherein what the EPO believes is not claimed must be disclaimed) effectively amounts to an attempt to prevent the national courts from reaching their own conclusions regarding extent of protection. This is not the EPO's role. Nor is it even remotely appropriate that the EPO should attempt to do this.
The EPO is its own system and asking it to defer to the US is wishful thinking at best and arrogant at worst. I am always bemused by the "tell the EPO this has been granted in the US" argument, as if the USPTO is the ultimate arbiter of what is patentable. Usually when you look closer, the USPTO has granted a patent over the same prior art under consideration at the EPO, where the EPO finds a lack of novelty.
ReplyDeleteSame goes with Broad case - EPO priority should be assessed the same as US.
It is a US drafting style where every sentence has the words "embodiment" and "may" that causes these inconsistencies and removes any certainty for third parties. Obviously this is a deliberate strategy, but the EPO places more emphasis on the rights of third parties, and this is not going to change anytime soon.
Irrespective of the EPO's current heavy handed approach, with which I disagree, the applicant could always choose to draft a better application that discloses an invention to the public for a 20 year monopoly. That is the deal after all.
I fully agree with the comments of Proof of the pudding and with the conclusions of T 1989/18, which has proven that Art. 84 EPC does not require to delete unclaimed subject-matter. T 1808/06, on the contrary, did not enter into the details as T 1989/18 and moreover confirmed that Art. 69 does not need to be taken into account.
ReplyDeleteTherefore, T 1989/18 superseeds T 1808/06.
It is worth to be noted that the EPO is the only patent office in the world which requires, without a proper legal basis, to delete unclaimed subject-matter, thus putting in risk (art. 100(b) and (c) EPC) the granted patents, not to mention infringement proceedings.