A Rollback on Referral to the EBA Regarding Adaptation of Description
In Short
The Situation: The European Patent Office ("EPO") currently requires applicants to adapt descriptions to allowable claims. 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 asserts that this practice improves the clarity and consistency of patents. It is controversial, however, because it forces applicants to make risky amendments at great expense, based on shaky legal grounds.
The requirement to adapt descriptions arose from the EPO's desire to ensure legal certainty for third parties and for the national parts of European patents to be interpreted as uniformly as possible by the courts of the EPC member states. Over the years, various boards of appeal have ruled differently on this requirement. 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. However, after a thorough review of the case law and legislative history, the Board ruled that the language of Article 84 EPC is "unequivocal" and leaves no room for requiring that the description be adapted to allowable claims. The Board also ruled that Article 69 EPC and its Protocol are not concerned with the assessment of patentability in examination before the EPO and are hence not applicable pre-grant. In its view, the best approach to achieve uniformity and predictability of the extent of protection is to grant claims that are "clear in themselves." 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). However, this practice may not be achievable when validity and infringement are decided by different authorities at different points in time.
The present decision intensifies the debate over the practice of adapting descriptions at the EPO. Presently, the EBA is working through related referral G 1/24 on the more general question of whether the description should be used to interpret the claims in EPO proceedings. It is hard to imagine that the timing and form of T 56/21 are not intended 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.
