It is long-standing practice for examining divisions at the European Patent Office to require the description of a patent application to be amended into conformity with the allowable claims prior to grant.

However, in 2021, the patent office’s guidelines for examination were updated to make this requirement more stringent. The issue of description amendment has been a hot topic ever since.

This is because of applicants’ and attorneys’ general aversion to substantial amendment to the description due to the additional cost and potentially harmful postgrant implications, as well as Technical Board of Appeal disagreement over whether there is a legal basis in the European Patent Convention, or EPC, for requiring such amendments.

Against this background, the Technical Board of Appeal in case T 56/21 indicated, in July 2023, that it was minded to refer the matter to the enlarged board of appeal to provide a definitive answer.

However, in a surprise reversal, this 56/21 board issued a lengthy and detailed decision on Oct. 4, 2024, without a referral, in which it held that there is unequivocally no legal basis in the EPC for requiring pregrant description amendments. This article reviews that decision and its implications.

Background

Description amendments have been a feature of European Patent Office practice for many years. But in March 2021, the guidelines became much more prescriptive on the extent to which a description should be amended.

The current guidelines specify that any inconsistencies between the claims and the description must be removed, either by deleting the inconsistent embodiment or explicitly marking it as not falling within the scope of the claims.

This often entails substantial amendment to the description in ways that are uncomfortable for applicants, for example, by explicitly marking embodiments as not in accordance with the invention, or similar.

Such extensive amendment to the description may negatively affect how a granted claim is interpreted in national infringement proceedings. In particular, a number of European Patent Office member states apply a doctrine of equivalents, under which something that does not fall within the literal meaning of the claims may still infringe if it is considered to be an equivalent.¹

However, a successful finding of infringement by equivalents may be less likely if embodiments have been explicitly characterized as not according to the invention.

Additionally, preparing extensively amended descriptions can be costly and fraught with difficulty, and the practice can cause problems for corresponding applications and patents in other jurisdictions. For instance, courts in jurisdictions such as the U.S. may rely on file histories from foreign prosecution when considering corresponding national applications in litigation.

Therefore, the current European Patent Office approach generally has not been popular with applicants and attorneys.

Crucially, the guidelines do not constitute a legal basis in their own right. The fraught issue of whether the EPC provides the legal basis for requiring description amendments has been considered in a number of Technical Board of Appeal decisions since the 2021 guidelines were issued, with various technical boards disagreeing on the matter.² Thus, an unsatisfactory legal uncertainty has prevailed in recent years.

T 56/21

During the prosecution of the application under appeal in T 56/21, the applicant, F. Hoffmann-La Roche AG, refused to delete claimlike clauses from the description, which the current guidelines require. The examining division refused the application on this basis, and the applicant appealed the decision.

In July 2023, the Technical Board of Appeal in T 56/21 indicated that it was considering referring a question to the enlarged board of appeal on whether the EPC — in particular Article 84 EPC, which sets out clarity requirements — provides the legal basis for amendment to the description, leading to much anticipation that the matter would finally be resolved.

However, this board unexpectedly issued its decision on Oct. 4, 2024, without a referral. In an apparent reversal, this board explained in its decision that it does not consider a referral to be necessary, and set out in detail why it does not consider the EPC to provide the legal basis for requiring description amendments.

Decisions favoring the requirement for description amendments have pointed to different sources in the EPC as the legal basis for this requirement. The board in T 56/21 dealt with each of these in turn, and found that none provided the legal basis for requiring amendment to the description.

Article 84 of the EPC

Article 84 of the EPC stipulates that the claims shall define the subject matter for which protection is sought, be clear and concise, and be supported by the description.

Both the requirements of clarity and support referenced in Article 84 have been identified as providing a legal basis for requiring description amendments, and it is under Article 84 that the guidelines discuss amendment to the description.

The T 56/21 board began its assessment of Article 84 of the EPC by setting out the article’s purpose, which it considered to be to define the matter for which protection is sought.

It characterized the claims as “precise statements of what is sought to be protected in terms of distinctive technical features.”³ The Technical Board of Appeal concluded that Article 84 sets out requirements for the claims, and does not provide any legal requirement for the description to be adapted to reflect a more limited claim scope.

Article 69(1) of the EPC

Article 69 of the EPC defines the extent of protection conferred by a European patent. It stipulates that the scope of protection conferred shall be determined by the claims, but that the description and drawings shall nevertheless be used to interpret the claims.

Some Technical Board of Appeal decisions favoring mandatory amendments to the description have reasoned that Article 69(1), in conjunction with Article 84, sets out a requirement for the description to be amended to be consistent with the claims.

These decisions have reasoned that because the description is used to interpret the claims, the description cannot be inconsistent with the claims.⁴ Noting that the claims do not stand alone and that the patent should be interpreted as a whole,⁵ the extent of protection that is interpreted in line with Article 69 can only be determined precisely when the description is consistent with the claims.

The board in T 56/21 took an alternative view, consistent with other decisions.⁶ It did not consider Article 69 of the EPC to relate to the assessment of patentability before the European Patent Office.

Instead, it considered Article 69(1) of the EPC to be a postgrant consideration of whether a potentially infringing subject matter falls within the scope of the claims of a granted patent.

Therefore, it concluded that Article 69 was not relevant for grant proceedings before the European Patent Office, so it could not provide the legal basis for requiring pregrant description amendments.

The Technical Board of Appeal acknowledged that prior decisions may have attempted to reduce variability in the determination of the extent of the protection a patent confers by national courts under the EPC’s Article 69(1) by requiring pregrant description amendments. However, this board did not consider this to be within the competence of the European Patent Office.

Rule 42(1) of the EPC

Rule 42(1)(c) of the EPC stipulates that the description shall disclose the claimed invention in a manner such that the technical problem and its solution can be understood, and that the description shall state any advantageous effects of the invention with reference to the background art.

The Technical Board of Appeal did not consider this to establish any legal basis to require broad amendments to the description.⁷ This board noted that this rule is very specific and provides defined, limited information that must be set out in the description.

Rule 48(1)(c) of the EPC

Rule 48 of the EPC sets out certain prohibited matters that should not be present in a European patent application. Rule 48(1)(c) specifies that an application shall not contain any statement or other matter obviously irrelevant or unnecessary under the circumstances.

Some favoring by a Technical Board of Appeal of mandatory amendments to the description have also reasoned that Rule 48(1)(c) of the EPC provides the legal basis to require the description to be amended to be consistent with the claims.⁸

However, the board in T 56/21 reviewed other decisions⁹ assessing Rule 48 EPC as a whole, the corresponding Patent Cooperation Treaty legislation — Article 21(6) and Rule 9 of the treaty — and the minutes of the diplomatic conference for the setting up of the EPC, and concluded that Rule 48 EPC is intended only to avoid expressions that are contrary to public morality or public order, or certain disparaging or irrelevant statements.¹⁰

The board in T 56/21 concluded that Rule 48(1)(c) EPC does not provide a ground for refusal of an application at all, let alone due to alleged discrepancies between the claims and the description.

Reasons for No Referral

The T 56/21 appeal board also set out its reasoning for not proceeding with a referral to the enlarged board of appeal. In relation to Article 84 of the EPC, this board concluded that the requirements of Article 84 are unequivocal and that the wording of Article 84 does not leave any room for requiring the description to be adapted to match the claimed subject matter.

Similarly, it considered it to be settled that Article 69 of the EPC was not directed to pregrant matters, so it could not be interpreted as providing the legal basis for description amendments.

The Technical Board of Appeal also noted that its interpretation of Article 84 of the EPC was consistent with the interpretation and explanation of Articles 84, 69, and 123 of the EPC in prior decisions and opinions of the enlarged board of appeal.

Regarding apparently divergent decisions, the Technical Board of Appeal considered this to represent an evolution of practice, rather than true divergence.

Therefore, it did not consider a referral to the enlarged board of appeal to be necessary.

However, the Technical Board of Appeal’s reasoning for nonreferral is questionable. It is arguably irrelevant whether this particular board considers the lack of legal basis to be unequivocal; the salient point is whether there is disagreement between different boards.

On this point, claims by a Technical Board of Appeal that the case law is merely evolving is unconvincing in view of the mounting pile of conflicting decisions on this issue. Regarding the reasoning being consistent with the previous interpretation of the relevant articles by the enlarged board of appeal, this appears to miss the point that it is the application of the EPC to the specific issue of amendment to the description where there is apparent disagreement, and this has not been directly considered by the enlarged board of appeal.

The lack of a referral therefore appears to be a missed opportunity to provide much-needed legal certainty on this issue.

Conclusions

Although T 56/21 sets out in detail that the Technical Board of Appeals considers there to be no legal basis for requiring description amendments, it is only binding on the examining division that issued the decision under the appeal.

Examining divisions are required to follow the guidelines, not Technical Board of Appeal decisions, so it is anticipated that examining divisions will continue to apply a strict approach to pregrant description amendments unless the guidelines are updated.¹¹

The European Patent Office provides a yearly update to the guidelines each March, and it remains to be seen whether the 2025 update will reflect this latest Technical Board of Appeal decision.

It is notable that the Technical Board of Appeal in T 56/21 was the same board that issued the first decision¹² disagreeing with the practice of mandatory description amendments following the updated 2021 guidelines.

Therefore, although the reasoning in T 56/21 is extremely detailed, the European Patent Office may consider T 56/21 to merely represent the latest banging of the drum by a dissenting board rather than a significant addition to the weight of contrary decisions.

Legal uncertainty on this issue therefore continues to subsist, and the issue seems far from resolved.

Practice Points

Nevertheless, T 56/21 may be a useful case to cite when resisting description amendments proposed by examining divisions. However, the likelihood of success will depend on the attitude of the examining division in question, and chances may be low.

It is also important to note that the applicant has a right to amend the description of its own volition. In many instances, it will remain best practice to continue to amend the description to at least some extent.

For example, there is case law in at least Germany¹³ and the U.K.¹⁴ that indicates that alternatives that are disclosed but not claimed do not fall within the scope of the claims, even as an equivalent.

Therefore, in instances where claims are limited to one of a number of alternatives, it may still be advisable to delete the alternatives that are not claimed but could be considered infringing equivalents.

Footnotes

1 Including the U.K., France, Germany, the Netherlands, and more recently the Unified Patent Court.

2 See, for example, T 1989/18, T 1444/20, T 2194/19, T 1024/18, T 2766/17, T 3097/19.

3 G 1/93.

4 T 3097/19.

5 T 556/02, T 1871/09, T 1871/14.

6 T 1989/18.

7 See also T 2194/19.

8 T 544/88, T 329/89, T 1903/06, T 853/91, and T 443/11.

9 E.g., T 1989/18.

10 Minutes of the proceedings of Main Committee I of the Munich Diplomatic Conference for the setting up of a European System for the Grant of Patents, document M/PR/I, No. 2225 to 2236.

11 EPO Guidelines for Examination, H-V, 2.7.

12 T 1989/18.

13 Case X ZR 16/09 – Okklusionsvorrichtung (Occlusion Device).

14 Shenzhen Carku Technology v The NOCO Company [2022] EWHC 2034 (Pat).