Jones Day
This practice is risky, expensive, and not clearly grounded in the law. This practice is risky, expensive, and not clearly grounded in the law.
The Result
: A technical board of appeal of the EPO ruled that the long-established practice of adapting patent descriptions to the allowable claims has no legal basis in the European Patent Convention (“EPC”), and it rolled back on a potential referral to the Enlarged Board of Appeal (“EBA”).Looking Ahead
: In rendering decision T 56/21, Technical Board of Appeal 3.3.04 has produced the most thorough and convincing arguments yet as to why this requirement has no legal basis and should be abandoned by the EPO. This decision is legally binding only on the case concerned but could influence the EBA on related–and precedent-setting–case G 1/24.Technical Board of Appeal 3.3.04 has published its decision in case T 56/21, concerning the EPO-imposed requirement of adapting descriptions to the allowable claims in examination or opposition proceedings. The EPO claims that this practice enhances clarity and consistency in patents. The practice is controversial because it forces applicants into making risky changes at great expense on the basis of shaky legal bases. In the absence of explicit provisions requiring description adaptation, many boards justified this practice with strained interpretations of the EPC, specifically Articles 84 and 69 EPC. In the absence of any explicit provisions requiring description adaptation, many boards justified this practice with strained interpretations of the EPC, specifically of Articles 84 and 69 EPC.
Article 84 EPC requires claims to be clear, concise, and supported in the description for the purposes of assessing patentability during grant proceedings.Article 69 EPC and the Protocol on its interpretations provide guidance to national courts and aim to harmonize claim construction of granted patents across EPC member states.
Earlier decisions of boards that did not require adapting descriptions were grounded on the basis that Article 84 EPC requires the claims to be clear on their own, and thus unrelated embodiments in the description could not render the claims unclear. In contrast, boards that did require adapting descriptions reasoned that because the description is used to interpret the claims under Article 69 EPC, the claims cannot have a clear scope as required by Article 84 EPC if they are not aligned with the description.
In view of the diverging case law, Board 3.3.04 suggested a referral to the EBA. After a thorough review, the Board ruled the language of Article 84 EPC was “unambiguous” and left no room to require that the description be adapted for allowable claims. The Board also ruled Article 69 EPC, and its Protocol, do not concern the assessment of patentability during examination before the EPO. They are therefore not applicable prior to grant. The Board stated that the applicant has the right to adapt the description on its own volition. The applicant, however, has the right to adapt the description on its own volition, the Board stated.
Regarding the practice at the Unified Patent Court (“UPC”) on claim interpretation–namely, that patent claims must be interpreted in the same manner in view of the description when assessing validity and infringement–the Board considers that this may be desirable in situations where a court is competent to decide on both validity and infringement (e.g., the UPC). This practice may not be possible when validity and infringement decisions are made by different authorities in different time periods. Currently, the EBA is working on a related referral G1/24 to answer the question of whether a description should be used in EPO proceedings to interpret claims. The timing and form T 56/21 is likely to influence the EBA. Applicants may hope that G 1/24 also sheds light on the question of description adaptation.
Whether or not adapting descriptions at the EPO should be a must, it is important for applicants to consider how the allowable claims may be interpreted in view of the description in invalidity and infringement proceedings before the national courts.
Three Key Takeaways
A technical board of appeal at the EPO has held that there is no legal basis for the EPO requiring applicants to adapt descriptions.
Clarification by the EBA on whether adapting descriptions is mandatory, is much needed.
Even if the EPO abolishes the practice of adapting descriptions, applicants may want to adapt the description on their own volition in favor of claim interpretation by the national courts.
