T 56/21 – A missed opportunity for providing legal certainty on adapting the description at the EPO

In Europe, there has been a long-running debate over whether the EPC provides legal basis for this requirement. In particular, multiple revisions to the EPO Guidelines and various divergent case law from the EPO Boards of Appeal have contributed to this ongoing discussion. Some decisions (e.g. T 1024/18, T 2293/18, T 1808/06, T 2766/17 and T 3097/19) have held that the description must be brought into conformity with the allowable claims in order to comply with Article 84 EPC, which requires that the claims be clear and supported by the description. Conversely, other decisions have reached the opposite conclusion. For example, in T 1989/18 (involving the same Appellant and Board of Appeal as in T 56/21), the Board decided that if the claims are clear in themselves and supported by the description, their clarity is not affected if the description contains subject matter which is not claimed and therefore Article 84 EPC does not serve as a legal basis for a refusal in such instances.

 

The issue of adapting the description for conformity with the claims is significant for various reasons, not least because it often leads to increased costs for applicants. In addition, description amendments can have a direct impact on the scope of protection conferred by a granted patent, as Article 69(1) EPC states that the description and drawings shall be used to interpret the claims, which determine the scope of protection. Furthermore, some national courts apply the “doctrine of equivalents” which extends protection beyond the literal wording of the claims. Amending the description could impact the application of this doctrine.

 

Therefore, given the diverging decisions and the significance of the issue, it was hoped that the Board in T 56/21 would refer to the EPO Enlarged Board of Appeal (EBA) the question of whether there is any legal basis under the EPC for requiring the description to be adapted for conformity with the claims in order to provide much-needed clarity on the matter.

 

Appeal T 56/21 – Background

 

The Appeal stemmed from the Applicant (F. Hoffmann-La Roche AG) objecting to the deletion of claim-like clauses in the description which extended beyond the scope of the claims, leading to the Examining Division refusing the application due to non-compliance with Article 84 EPC.

 

In July 2023, the Board in this case (namely Technical Board of Appeal 3.3.04) queried the legal basis for objections under Article 84 EPC resulting from a lack of consistency between the description and the claims. As a result, they proposed to refer the following question to the EBA:

 

"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")?”

 

Roche subsequently agreed to the referral, leading many to believe that such a referral would be made in due course.

 

Appeal T 56/21 – The Decision

 

It was therefore surprising that, in the recent decision, the Board concluded that a referral to the EBA was unnecessary and proceeded to decide the case without such a referral.

 

The Board set forth their detailed reasoning in the decision and concluded the following:

 

• Article 69 EPC and its Protocol are not concerned with the assessment of patentability in examination before the EPO and are thus not applicable in grant proceedings before the EPO.
• Article 84 EPC and Rule 43 EPC are not a corollary of Article 69 EPC and therefore the requirements of Article 84 EPC and Rule 43 EPC are to be assessed separately and independently of considerations of extent of protection when examining a patent application.
• Article 84 and Rule 43 EPC do not provide a legal basis for a mandatory adaptation of the description to claims of more limited subject matter.
• Rule 48 EPC does not provide for a ground for refusal based on the inclusion of merely "irrelevant or unnecessary" matter in the description intended for grant and even less for "discrepancies" between the subject matter claimed and that disclosed in the description.

 

The Board also provided the following overall summary:

 

“In examination of a patent application, neither Article 84 nor Rules 42, 43 and 48 EPC provide a legal basis for requiring that the description be adapted to match allowable claims of more limited subject-matter.”

 

Regarding the lack of a referral to the EBA, the Board presented the following reasoning:

 

• The requirements of Article 84 EPC for the purpose of examining European patent applications appear unequivocal when considering the different elements of interpretation, the guidance by the EBA, and the practical implications.
• The wording of Article 84 EPC as well as its context leave no room for requiring that the description be adapted for conformity with allowable claims.
• Adapting the description in examination might have unwanted effects in the event of a "prosecution history estoppel" being applied at national level.
• Adapting the content of the description to match the subject matter of allowable claims reduces the reservoir of technical information that could be used in national courts in the Contracting States to determine the protection conferred by the granted patent.
• The lack of a provision in the EPC to require that the description be aligned with the subject matter of claims held allowable appears to be intentional. The legislator, which already considered amendments to Article 69 EPC and the Protocol as part of the revision of the EPC in 2000, has in fact taken a different approach.
• A requirement to adapt the description to amended claims disregards the choices made by the legislators and encroaches on the competence of the national courts. Therefore, a referral does not seem to be appropriate.
• While it could be argued that there are diverging decisions, it is rather more the case that the practice is evolving taking into account the revision of the EPC in 2000 and developments thereafter.
• The Board does not consider that its interpretation of Article 84 EPC deviates from an interpretation or explanation of Articles 84, 69 and 123 EPC in decisions of the EBA. Hence, a referral is also not mandatory under Article 21 RPBA.

 

As a result, the Board did not proceed with the referral. Instead, they set aside the decision under appeal and remitted the case to the Examining Division with an order to grant a patent that included the claim-like clauses which extend beyond the subject matter of the allowable claims.

 

Conclusion

 

The lack of a referral to the EBA will disappoint many applicants and patent attorneys who sought legal certainty on the issue of adapting the description for conformity with the allowable claims. While Technical Board of Appeal 3.3.04 did not consider this practice a requirement under the EPC, it is evident that other Boards hold different views. As a result, divergent decisions on this matter are likely to continue until the EBA provides clarification. The Board’s decision not to proceed with the referral in this case feels like a missed opportunity to settle the issue.

 

Nonetheless, this decision provides further support for applicants seeking to oppose the EPO's requests to align the description with the allowable claims. However, based on previous experience, it is unlikely that the Examining Division will consistently accept the arguments made in T 56/21. Therefore, applicants wishing to resist adapting the description must carefully weigh the benefits of maintaining the original description against the potential risk of delaying grant of the patent.

 

On a related note, it will be interesting to see whether this decision has any impact on the outcome of G 1/24, where the EBA is considering the role of the description and drawings when interpreting claims in relation to patentability at the EPO. Alternatively, it is possible that G 1/24 may undermine some of the reasoning provided in this decision.

 

For further advice on this topic, please contact one of Keltie’s patent attorneys, who would be happy to assist.