Posted: July 21st, 2023
News on description adaptations at the EPO, T 0454/20 and T 2391/18, by Georg Anetsberger and Sebastian Rieger, Bardehle Pagenberg
In T 2391/18, the Board of Appeal 3.2.03 of the EPO decided that, in opposition proceedings, the requirement to “adapt the description to the claims” does not apply to discrepancies between description and claims that were already present in the patent as granted. In case T 0454/20, the same board confirmed that, on the other hand, discrepancies caused by claim amendments must be removed, and dealt with a new sword of Damocles, namely the point in time at which the necessary adaptations to the description are filed: The good news is that, generally, amended claims cannot be considered as late filed just because the required adaptation of the description is filed late.
To the contrary, for reasons of procedural economy, adapting the description can generally be postponed until an allowable claim set is reached. Yet, T 0454/20 expressly leaves open the possibility that reasons to deviate from this general rule may exist, they just saw no such reasons in the case at hand.
There has been an ongoing dissent between different Boards of Appeal of the EPO on how to deal with amendments to the description: The core of this dissent lies in the different interpretations of Art. 84 EPC stating that the claims shall be clear and concise and be supported by the description. There are decisions stating that Article 84 EPC cannot be a basis for the requirement of adapting the description, or at most to a limited extent (e.g., T 1444/20, T 1989/18, and T 2194/19).
In contrast, various other decisions (e.g., T 1024/18, T 1808/06 T 2766/17, and T 2293/18) disagree and require a strict adaptation of the description to the claims, e.g., that embodiments which are not consistent with the claims must be deleted or must be clearly identified.
Decision T 2391/18
In T 2391/18, the board seems generally in agreement with the strict requirement of adapting the description to the claims. But they draw a line between inconsistencies between the claims and the description that were already present in the patent as granted and inconsistencies that are caused by amendments after grant.
In G 3/14 it was decided that a patent as amended can be examined for compliance with Article 84 EPC only when and only to the extent that the amendment introduces non-compliance with Article 84 EPC. The board essentially concludes that the same line has to be drawn when it comes to adapting the description. When an inconsistency between claims and the description already existed in the granted version of the patent, such inconsistency does not have to be remedied during opposition. This is a logical application of G 3/14. Only if the discrepancy between description and claims was caused by amendments during opposition, can it be examined for compliance with Art. 84 EPC. Therefore, only in this case, the proprietor can be forced to adapt the description.
The board even raises doubts whether an amendment of the description would be allowable if this was not the case, e.g., if the amendment removed an inconsistency already present in the granted patent. Rule 80 EPC stipulates that the description may be amended if the amendments are occasioned by a ground for opposition. However, if the description amendment tries to amend an issue already present in the patent as granted, it would hardly be occasioned by a ground for opposition. Article 84 EPC itself is not a ground for opposition and compliance with Article 84 EPC can only be examined in case of issues that were not already present in the patent as granted.
Decision T 454/20
In the case T 454/20, an auxiliary request was indicated as patentable by the board during oral proceedings, and the opponent tried to get that auxiliary request rejected, since no adaptation to the description had been filed together with the auxiliary request. The Board of Appeal 3.2.03 found that it is common practice that the adaptation of the description is postponed until a grantable claim set is identified.
While this is comforting from a practical perspective, care should nevertheless be taken. The board expressly notes that “generally” (in the German original “in der Regel”), adapting the description can be postponed. However, from their reasoning it can be inferred that it has to be decided, on a case-by-case basis, whether this general rule applies or whether an exception is at hand. In other words, there may be reasons to reject an auxiliary request just because the description was not adapted to that request. Therefore, it may be advisable to file correspondingly adapted description passages together with each amended claim set.