As we recently reported, the Board of Appeal in T697/22 has referred questions to the EBA concerning whether the description should be amended to address any inconsistencies with the claims. The referral is now pending as G1/25.
This EBA referral is welcomed as providing an opportunity to clarify the EPO's approach to description amendments. The EPO is unique among major patent offices in requiring the description to be "brought into conformity with the claims" if amendments are made pre-grant during prosecution or post-grant during opposition proceedings. However, doing so can be a significant burden on applicants, particularly those in the biotechnology and pharmaceutical industries where applications tend to contain more information and examples.
Furthermore, the exact requirements for description amendments can vary depending on the examiner and technical field of the application, which can add further confusion. This confusion is not helped by a lack of legal clarity as to why the EPO is entitled to insist on such amendments, which has led to push-back from applicants as well as conflicting views from different Boards of Appeal.
The referring case T697/22
The issues underlying the EBA referral revolved around an auxiliary request that was considered by both the opposition division and the Board of Appeal to be allowable. Claim 1 of this auxiliary request concerned a method of growing a plant in a medium comprising an organic binder.
As is usual during opposition proceedings, the auxiliary request found allowable by the opposition division included an amended description. However, in that amended description, the definition of the binder was broader than the binder defined in claim 1. The Board, therefore, considered there to be an inconsistency between the claims and the description.
In an attempt to resolve the issue, during the oral proceedings before the Board, the patentee filed an updated description deleting the passages that included the broader binder definitions. However, the Board considered that the updated description should have been filed at a much earlier stage of the proceedings. The Board thus decided to not admit the updated description into the proceedings.
The Board was consequently faced with the following dilemma: either the inconsistency between the claims and description contravenes the EPC and the description upheld by the Opposition Division is not allowable, or the inconsistency does not contravene the EPC and the description is allowable. The Board considered that there were inconsistencies in the case law of the Boards of Appeal on this topic, and so decided that it would be appropriate to refer questions to the EBA.
The Board's first two referring questions to the EBA are as follows:
- If the claims of a European patent are amended during opposition proceedings or opposition-appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description of the patent, is it necessary, to comply with the requirements of the EPC, to adapt the description to the amended claims so as to remove the inconsistency?
- If the first question is answered in the affirmative, which requirement(s) of the EPC necessitate(s) such an adaptation?
The Board provided some analysis of their own in relation to these questions. In particular, they identified two diverging lines of case law, namely: (i) cases where the applicant/patentee was required to amend the description for consistency with the amended claims; and (ii) cases where it was decided that there is no legal basis for refusing an application based on inconsistency between the claims and description. The Board notably observed that even within the cases falling under (i), there are inconsistencies regarding the legal basis identified as requiring the description to be amended for conformity with the claims.
Whilst not decisive to resolve the issues in T697/22, the Board's observation that the same inconsistencies for opposition-appeal cases exist for examination-appeal cases prompted their referral of a third question:
- Would the answer to questions 1 and 2 be different if the claims of a European patent application are amended during examination proceedings or examination-appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description of the patent application?
The third question appears to be referring to pre-grant proceedings only, but it could also arguably be referring to whether the answers to questions 1 and 2 (concerning post-grant proceedings) would be different if the inconsistencies were introduced pre-grant, i.e. not as a result of amendments made during opposition. It remains to be seen how the EBA will interpret this question, if answered at all.
The Board, perhaps unsurprisingly, also emphasised that the questions being referred become of greater significance following the decision in G1/24, where the EBA held that the "description and drawings shall always be consulted to interpret the claims when assessing patentability under Article 52 to 57 EPC" (our comments on G1/24 can be found here).
Looking forward
It is hoped that the EBA will accept the referral and provide answers which are sufficiently clear and comprehensive to apply across the EPO's practice, although this may be optimistic. The EBA can also decline to answer any, or indeed all, of the questions – the third question seems particularly at risk here, since an answer to it is not strictly "required" to resolve the referring case.
Many applicants and patentees will be hoping that the EBA endorses an approach which reduces the burden associated with adapting the description, though there is also a risk of the EBA imposing onerous requirements. It will, in any case, be interesting to see how the EBA address the diverging lines of case law identified by the referring Board.
J A Kemp LLP acts for clients in the USA, Europe and globally, advising on UK and European patent practice and representing them before the European Patent Office, UKIPO and Unified Patent Court. We have in-depth expertise in a wide range of technologies, including Biotech and Life Sciences, Pharmaceuticals, Software and IT, Chemistry, Electronics and Engineering and many others. See our website to find out more.
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