Executive summary
Many observers have concluded that the significant description changes forced by the EPO to bring the description into accordance with the claims are too onerous and ultra vires. In particular, the EPO has been guiding applicants to amend the description to delete embodiments which are no longer covered by the independent claims, even when these embodiments can be considered to be useful for highlighting specific aspects of the claims.
However, a new Board of Appeal decision has recently issued suggesting that the current practice has gone too far. In the T 1989/18 decision, the Board of Appeal found that the main request (in which the description disclosed subject matter broader than the allowable independent claims) complied with the clarity requirements of the EPC. Because of the way lawmaking happens at the EPO, this decision is not the end of the story, and quite a lot remains to be resolved. Nevertheless, this decision is a step in the right direction and a real relief for practitioners who had been becoming rather desperate about the situation regarding these extensive description amendments, and their ability to change the EPO’s mind. But we will probably not see radical change soon.
What was the problem?
Article 84 EPC requires that the claims be clear and concise and supported by the description. The EPO has always requested that significant discrepancies in the description be corrected before a patent can be granted with the final version of claims, particularly at the “Druckexemplar” or “approval of text” phase. However, practitioners had noticed that the requests were becoming increasingly more onerous. For example, merely changing the word “invention” to “disclosure”, or the word “embodiment” to “example” was not sufficient to state that the corresponding part of the description did not fall under the scope of the claimed invention. Instead, description amendments were required throughout the description, along with removal of a lot of previous claim language, and insistence on deletion of subject matter that, even if not in contradiction with the independent claims, was not absolutely in line with it.
Practitioners had been raising concerns with the EPO for some time, but examiners were pointing to case law of the Boards of Appeal and the Guidelines for Examination as basis for continuing with the practice. Concern remained, however, partly because of the basic cost of such a wholesale review, but also because of the risks at the litigation stage of making such changes.
Why did the EPO say that changes were necessary?
There were two principal lines of reasoning for the EPO requiring more extensive description amendments. First of all, the Article 84 EPC requirement that the claims be clear and supported by the description was cited heavily. Additionally, the EPO expressed concern that as claim interpretation became more directed towards requirements of “equivalents” in multiple national courts, it was ever more important to bring the description exactly into conformity with the claims.
As a counterargument to this, Article 84 EPC does not mean that the description has to be absolutely slavishly identical to the claims. When assessing clarity, the description cannot be relied upon to resolve a clarity issue in a claim, nor can it give rise to a clarity issue if the definition of the subject matter in the claim itself is clear. In addition, unless the EPO has relevant expertise in how national courts approach claim interpretation, and can provide a single harmonised approach that works for all of them, it is out of its jurisdiction in requiring such changes.
What has happened so far?
New decision T 1989/18 is well-reasoned and presents a clear explanation of why it is not necessary to amend the description to the levels currently being required. The attention the decision has received is indicative of how problematic the current approach has been. However, just because one Board of Appeal has issued one contrary decision does not mean that the situation is resolved.
Law making at the EPO
The EPO is a continental-style jurisdiction, meaning that case law is not binding and it is indeed possible to have conflicting decisions. The way that the EPO controls the uncertainty is twofold.
First of all, the EPO has its famous Guidelines for Examination which are more or less binding on first instance examiners and oppositions, and are taken into account by Boards of Appeal to the extent that if they diverge from the Guidelines they should explain why. As a result, the Guidelines are rather important. They are written by the legal department at the EPO in consultation with users, and effectively take into account the leading case law. As a result, it can be expected that the EPO will have to carefully consider the impact of the new decision, and whether it is significant and persuasive enough to change the current Guidelines. The next edition of the Guidelines will come into effect in March, and it is too late in the cycle for them to reflect this recent development. So change through this route, if at all, will take time.
The second route to controlling the uncertainty of conflicting case law is through the Enlarged Board of Appeal. This is the highest tier at the EPO and its decisions carry significantly more weight than those from Boards of Appeal, even though they are still not perfectly binding. One of the routes by which a case can appear before the Enlarged Board is by virtue of a referral by the EPO President in relation to conflicting Board of Appeal decisions. There is no formal route to request a referral, but there is a possibility that organisations will now lobby the EPO for a decision from the Enlarged Board. Of course, you should be careful what you wish for, and it may be that even if the Enlarged Board decides to hear the matter, it goes against the most recent Board of Appeal decision.
Again, in terms of timescales, the Enlarged Board does not normally convene rapidly as it is composed of high-level EPO and external judges whom it will take quite a while to assemble, and decisions can take many months or even years.
What’s the likely outcome?
It may therefore be that we have to wait quite a long time, and see further confirmatory Appeal Board cases, before either the Guidelines are updated or the Enlarged Board agrees to hear a decision. A further possibility could be a practice announcement from the President of the EPO, but it would seem that this is too significant a matter, and there is too much debate around it, for that to be a likely outcome.
Daniel Jarrett, one of our attorneys who has been following the situation closely, agrees:
EPO requests for description amendments have been the bane of patent applicants and attorneys in Europe over the past year or so. Although I would probably be quite glad to see them abolished, there has been a bit of wishful thinking of late in the European patent community. As T 1989/18 is a single decision, the EPO is unlikely to view it as sufficient to overturn the existing case law, and the Guidelines for Examination are unlikely to change solely as a result of this decision. That being said, if other Boards of Appeal start issuing similar decisions, then this could be the start of a real change in practice. In short, this is a welcome decision, but by no means the end of the story."
Observers are, at least, relieved that the matter is now being aired more widely, and “the other side of the argument” is now being heard. But that is a long way from removing the burden which most applicants are feeling in relation to the current practice.
Gwilym Roberts is Chair at Kilburn & Strode, Honorary Secretary of the Chartered Institute of Patent Attorneys and visiting professor at Queen Mary University of London. He sits on the Guidelines Working Group for the Standing Advisory Committee to the EPO where the current matter has been a subject of lengthy and repeated debate.