Deletion of claim-like clauses: Board of Appeal finds legal basis for adaptation of the description from "the EPC as a whole" (T 0438/22)

The recent decision in T 0438/22 is a relatively lengthy justification of the EPO's idiosyncratic requirement for the description of a patent to be amended in line with the allowed claims. The decision is yet another contribution to the ongoing debate over whether the EPO's strict approach to amendment of the description has legal basis, In the meantime, we await a potential referral to the Enlarged Board of Appeal (EBA) on the issue (IPKat).  T 0438/22 specifically related to the requirement in the EPO Guidelines for Examination for claim-like clauses to be deleted from the description pre-grant (F-IV, 4.4). 

Amending the description and claim-like clauses

The EPO Guidelines for Examination currently require that, when adapting the description, an applicant must either delete subject matter not covered by the claims or explicitly state in the description that such subject matter is not part of the invention (F-IV, 4.3). It is argued that these amendments are necessary in view of the stipulation in the EPC that the description "shall be used to interpret the claims" (Article 69 EPC). As such, it is argued, the claims can only clearly define the invention (Article 84 EPC) if they are not contradicted by the description. However, amending the description is fraught with risk for patentees. Description amendments may add matter to the application as filed, and lead to the inescapable added matter trap post-grant. Amendments to the description may also adversely impact claim interpretation post-grant in both invalidity and infringement proceedings.

Amended semiconductors

Part of the Guidelines on adaptation of the description relate specifically to the deletion of "claim-like clauses". It is common practice when filing a divisional European patent application to add the complete set of original claims (e.g. PCT claims) to the description. These claim-like clauses can then be used as basis for future claim amendments if subject-matter in the original claims inadvertently lacked explicit basis in the original description. However, the EPO Guidelines for Examination currently state that, in order to bring the description in line with the claims: "claim-like clauses must also be deleted or amended to avoid claim-like language prior to grant since they otherwise may lead to unclarity on the subject-matter for which protection is sought" (F-IV, 4.4). However, claim-like clauses may also be used as basis for amendments post-grant (e.g. in Opposition proceedings). 

Legal basis for requiring deletion of claim-like clauses? (T 0438/22)

In T 0438/22, the Board of Appeal considered the legality of the provision in the Guidelines that claim-like clauses should be removed from the description. The case related to Intel's European patent application EP3511980 for semiconductors. The application was refused by the Examining Division because the description had not been amended to remove the claim-like clauses and, in the view of the Examining Division, thereby lead to unclarity as to the scope of protection of the claims (Article 84 EPC). 

Intel argued that there was no EBA case law justifying the stipulation in the Guidelines that claim-like clauses should be deleted. As such, Intel argued, unconditional application of the Guidelines forced the applicant to limit the disclosure of a patent application in an unjustified way. Intel cited T 1989/18, in which the Board of Appeal found that the requirement for mandatory adaptation of the description in line with the claim lacked legal basis (IPKat). Intel further argued that deletion of the claim-like clauses would lead to a loss of disclosed subject-matter that might be needed post-grant, such as basis for amendments during opposition. 

Intel also requested a referral to the EBA on the question of whether it was justified to force an applicant to delete parts of the description solely due to the wording being identified by the examining division as "claim-like". 

On appeal, the Board agreed with Intel that there was no risk of the claim-like clauses being misinterpreted as claims, and that "[t]here is no justification for deleting them just because they were drafted as claim-like clauses." (r. 3.4). The Board of Appeal also agreed with Intel that "there appears to be no decision of the boards or the Enlarged Board of Appeal that forms the basis of the relevant part of the Guidelines" relating to the required deletion of claim-like clauses (r. 3.2). 

However, on the general principle of adaptation of the description, the Board of Appeal did not agree with T 1989/18 that this requirement lacked legal basis. Instead, the Board of Appeal considered there to be "long established" case law that Article 84 EPC requires the entirety of the description to be consistent with the allowed claim, citing T 1024/18, T 1808/06, T 2293/18, T 1399/17, T 2766/17, T 1516/20, T 0121/20, T 1968/18, and T 2685/19.

The Board of Appeal went on to provide what they considered to be the legal basis for the description amendment requirement. The Board of Appeal accepted that "Article 84 EPC is primarily directed to the claims and refers only indirectly to the description". However, the Board of Appeal considered that, according to the principles of the Vienna Convention, "the object and purpose of a legal provision may be derived not only from its literal wording but also from its context within the statute". As such, the Board of Appeal concluded that legal basis for requiring the applicant to adapt the description in line with the claim might "be derived from the EPC as a whole".

The Board of Appeal went on to outline in detail its view of the legal basis for mandatory adaptation of the description. The Board of Appeal concluded that "[i]t is a general and overarching objective, and as such also a 'requirement' of the Convention, that authorities, courts and the public interpreting the claims at a later stage should, as far as possible, arrive at the same understanding of the claimed subject-matter as the EPO bodies deciding on the patentability of the same subject-matter. The only tool for achieving this objective is the patent specification as the expression of a unitary legal title. The description, as an integral part of the patent specification, should therefore also serve this overriding objective, i.e. it should provide a common understanding and interpretation of the claims. If the description contains subject-matter which manifestly impedes a common understanding, it is legitimate to insist on its removal".

The Board of Appeal's reasoning on this point encroaches once again on the related issue of whether the description should be consulted for the interpretation of otherwise clear claim-language. On this issue, there are also arguably conflicting Board of Appeal decisions (IPKat). The Board of Appeal in this case explicitly disagreed with an approach to claim interpretation that does not take account of the description: "The idea that the description is entirely unnecessary for claim interpretation is unrealistic and simply 'wishful thinking', just like the case law expecting claims to be clear in themselves" (r.63)

The Board of Appeal nonetheless did accept that deletion of subject-matter from the description might be harmful to the patentee from a sufficiency perspective, given that "[r]equiring the unconditional deletion of subject-matter would often result in the deletion of enabling disclosure." In such cases, the Board of Appeal considered it "settled practice that subject-matter not covered by the claims must be 'removed' through an appropriate statement of the applicant in the description which effectively does not remove the technical teaching of the patent". However, the inclusion of such statements may still be detrimental to the patentee given that such statements could adversely affect post-grant claim interpretation, e.g. under the doctrine of equivalents, or even in US litigation (IPKat). On the plus side, the Board of Appeal did at least accept that it is not necessary to amend the description every time the claims are amended during prosecution (r. 5.4.3). 

The Board of Appeal concluded by rejecting Intel's request lacking amendment of the description. 

Final thoughts

We are currently waiting on tenterhooks for confirmation of a referral to the EBA on description amendments (IPKat). A parallel referral on interpretation of the claims in view of the description will be discussed at oral proceedings in appeal case T 439/22 in April (IPKat). If the referral on description amendment goes ahead, and is accepted by the EBA, then this latest decision in T 0438/22 is a preview of the potential legal arguments that will be submitted in favour of maintaining the status quo stipulated by the Guidelines. 

Further reading

Claim interpretation

• Boeing's comma drama: Commas and taking the description into account when construing a claim (T 1127/16) (April 2021)
• Another case of catastrophic comma loss (T 1473/19): Interpreting the claims in view of the description (Jan 2023)
• EPO tries to have its cake and eat it on claim interpretation (T 0169/20) (March 2023)
• Construing the claims to include technical effects mentioned in the description (T 1924/20) (April 2023)
• The risk of pre-grant description amendments (T 450/20) (July 2023)
• Benefits and pitfalls of functional patent claims (and why the UK is out of step with the EPO on claim construction): Astellas v Teva [2023] EWHC 2571 (Pat) (Nov 2023)
• Will we have a referral on using the description for claim interpretation or is the Board of Appeal jumping the gun? (T 439/22) (Jan 2024)
• Don't shoot yourself in the foot: European file history in US patent claim interpretation (K-fee v Nespresso) (Jan 2024)

Description amendments

• Board of Appeal finds no legal basis for the requirement to amend the description in line with the claims (T1989/18) (Dec 2021)
• Can amending the description to summarize the prior art add matter to the patent application as filed? (T 0471/20) (Jan 2022)
• EPO Board of Appeal toes the party-line on description amendments (T 1024/18) (April 2022)
• Board of Appeal case law against the description amendment requirement starts to mount up (T 2194/19) (16 Nov 2022)
• Another Board of Appeal enters the fray on description amendments (T 3097/19) (Nov 2022)
• Board of Appeal poised on the brink of a referral on description amendments (T 56/21) (July 2023)
• Adding matter by amending the description to exclude embodiments (Ensygnia v Shell [2023] EWHC 1495 (Pat) (Aug 2023)
• Referral on description amendments moves one step closer (T 56/21) (Nov 2023)

Image credit: MidJourney