A referral to the EPO’s Enlarged Board of Appeal appears imminent to request a decision on if and when the description must be amended in line with the claims during EPO proceedings. The increased strictness of EPO practice on this issue in recent years has created additional prosecution costs even after an allowable claim set is reached. It also creates a dilemma between accepting the risks caused by removal of embodiments from the description or getting tied up in further delays to grant.
The expected referral will be the culmination of a growing body of conflicting case law from the EPO Boards of Appeal over the past couple of years. Some Boards have doubted the legal justification for the strict approach to description amendments, whereas others have backed up the EPO’s approach as set out in the EPO Guidelines for Examination.
The Board of Appeal (3.3.04) for EP3094648 proposed earlier this year that a referral to the Enlarged Board may be required to hopefully bring clarity to this point of practice. Appeal submissions filed on 30 October 2023 by the applicant-appellant state that they agree that a referral is justified. It therefore seems that the way is clear for the Board to make the referral.
We will report again as and when the Board makes their decision to refer to the Enlarged Board, and confirmation of the referred question.
If you have any questions or for more information, please contact Alistair Cobbold or your usual Kilburn & Strode advisor.