A key step towards the grant of a European patent is the amendment of the description to be consistent with the allowable claims. The EPO has always required applicants to take this step, but changes to the EPO’s Guidelines for Examination published in March 2021 (H-V,2.7) place an increased emphasis on the need to be clear about what is – or is not – within the scope of the claimed invention. Are the changes significant, and how will this change the approach taken by applicants?
The EPO’s changes explained
The Guidelines have been updated to set out in more detail the changes that need to be made to the description and figures to ensure that they are brought into line with the allowable claims prior to grant. The highest impact changes have been made to Part F-IV,4.3 of the Guidelines, regarding inconsistencies between the description and the claims. Going forward, examiners will generally expect applicants to completely delete embodiments in the description that are no longer covered by the independent claims. An exception to this general rule is if these embodiments, in the words of the Guidelines, “can reasonably be considered to be useful for highlighting specific aspects of the amended claims”, in which case they may be retained but must, in principle, each be clearly marked as “not covered by the claimed invention” or words to that effect. In practice, however, we have so far found that examiners may permit applicants to retain relevant technical information by adding a more general waiver to the description indicating that passages that go beyond the scope of protection defined by the claims are not part of the invention.
So, yes, these changes are significant, and we have heard from several examiners that they are being asked to apply the changes strictly. In fact, examiners have been given clear guidance to issue a summons to oral proceedings when an applicant fails to amend the description in line with the Guidelines. Tips for approaching the challenge presented by these changes, which are discussed further below, include being proactive in making the necessary amendments. In doing this, applicants can help ensure amendments to the description meet the requirements set out in the Guidelines while also ensuring the granted patent meets their commercial goals.
How applicants can change their approach
The amended Guidelines push applicants towards amending their description earlier and more thoroughly than before. This is because there will often be a mismatch between what an applicant would choose to keep when asked to bring the description into conformity with the claims and the amendments an examiner would make when given the same task. If the examiner makes amendments to the description the applicant will be left considering whether to argue against those changes. By being proactive in making changes to the description early in prosecution, the applicant stands a better chance of getting their preferred version of the text.
Acknowledge the prior art
Applicants will be familiar with the need to acknowledge key prior art cited in examination in the description. Again, a proactive approach to making the required amendments will place the applicant in a stronger position to control the amendments made to the description. Otherwise, they are risking examiners proposing an amendment such as stating that a prior art document discloses the preamble in an independent claim. Taking the initiative reduces the risk of examiner-led amendments.
Keep commercial goals in mind
Making the necessary amendments to the description will take more time, and cost more, but this investment is essential. As the description and drawings are used to interpret the scope of granted claims, it is vital that amendments to the description are made with commercial goals in mind. Any amendment that could alter the interpretation of the claims should be made with great care. Consideration should also be made of the extent to which national courts will look at the file wrapper and take into account changes made during the course of prosecution when considering infringement.
Retain relevant text for SPCs
Thinking ahead is also key for patents protecting pharmaceutical products. In order to obtain a supplementary protection certificate (SPC), the product must be covered by the basic patent and the patent must contain a sufficient disclosure which enables the identification of the active ingredients in the product. Amendments made to the description prior to grant of a patent could be pivotal in deciding whether an SPC is granted.
A positive change for third parties
For third parties examining the scope of a competitor’s patent, the changes to the Guidelines bring a welcome increase in certainty. With examiners becoming more rigorous in the way in which they require applicants to mark out the invention in the description, the chances of ambiguities arising around whether or not specific embodiments in the description fall within the scope of the claims should fall. In many situations this will allow third parties to establish with more confidence whether they risk infringing a competitor’s patent rights.
If you would like any advice on making changes to the description prior to grant, please contact your usual Kilburn & Strode advisor.