Dr David Eyre

November 2023

Furthermore, this Appeal Board is the same Board that presided over T1989/18, and issued the first Board of Appeal decision to find a lack of legal basis for requiring amendments to the description. 

Background to Appeal T0056/21 

• Prior to issuing the Notes of Allowance the Examining Division amended the description for the application (EP 15700545.5).  
• In line with the Guidelines for Examination before the EPO, claim-like statements in the description were deleted by the Examiner.  
• The Applicant (now Appellant), Roche Diagnostics, disapproved the text the EPO proposed for grant because they objected to the deletion of the claim-like clauses.  
• The Examining Division justified the amendments in that the unamended description could lead to a lack of clarity as to the actual scope of protection of the claims because the description might be considered to disclose inventions other than that defined in the claims. 
• Roche withdrew the request for the oral proceedings during examination and requested a Decision open to appeal based on the status of the file. 
• Subsequently, the application was refused for non-compliance with Art. 84 EPC (clarity).  
• Subsequently, this refusal Decision was appealed. 

Appeal Proceedings 

The Board has queried whether the 2023 version of the EPO Guidelines for Examination (the “Guidelines”) is in line with the wording and purpose of Art. 84 EPC and with the recent case law, thus casting doubt on the legal basis for clarity objections resulting from inconsistency between the embodiments of invention in the description and the scope of the claims. 

In a communication dated 21 July 2023, the Board of Appeal identified divergent case law on the issue of whether Article 84 EPC and/or Article 69 EPC provide legal basis for the requirement of amending the description to conform with the allowed claims. 

The Board thus now questions: (i) whether the current EPO practice formalised in the Guidelines can be reconciled with the case law on clarity requiring that the claims should be clear in themselves without having resort to the description for interpretation; and (ii) whether Art. 84 EPC provides a legal basis for the required description amendments.  

The Board in its recent communication also seems to reject Article 69 EPC, which defines the extent of protection of a claim under European practice, as legal basis for the requirement to conform the description to the allowed claim scope.  

Supporters of the practice of amending the description argue that, given that the description shall be used to interpret the claims (Article 69 EPC), the description has to be brought in line with the amended claims. The Board however notes that that Article 69 EPC sets out considerations for national courts in infringement proceedings which are post-grant and thus beyond the jurisdiction of the EPO. Thus the Board considers that it is not for the EPO to harmonise the extent of protection conferred by European patents by requiring description amendments restricting the description to the allowable claims. The Board concludes that, should the appellant see the need for a referral, they may consider the following question: 

“Is there a lack of clarity of a claim or a lack of support of a claim by the description within the meaning of Article 84 EPC if a part of the disclosure of the invention in the description and/or drawings of the application (e.g. an embodiment of the invention, an example or claim-like clause”) is not encompassed by the subject-matter for which protection is sought (“inconsistency in scope between the description and/or drawings and the claims”) and can an application consequently be refused based on Article 84 EPC if the applicant does not remove the inconsistency in scope between the description and/or drawings and the claims by way of amendment of the description (“adaption of the description”)?” 

Submissions by the Appellant 

The appellant, Roche, then had an opportunity to file its own observations and thus to request a referral. They filed their observations on 30 October 2023, amongst which they suggested amending the question for referral to be (additional text shown in underline and deleted text shown in strikethrough): 

Question 1 “Is there a lack of clarity of a claim or a lack of support of a claim by the description within the meaning of Article 84 EPC if a part of the disclosure of the invention in the description and/or drawings of an application the specification (e.g. an embodiment of the invention, an example or claim-like clause”) is not encompassed by the subject-matter for which protection is sought as defined in the claims (“inconsistency in scope between the description and/or drawings and the claims”) and can an application consequently be refused based on Article 84 EPC if the applicant does not remove the inconsistency in scope between the description and/or drawings and the claims by way of amendment of the description (“adaption of the description”)?” 

Thus the Appellant suggests that the question not be restricted to examination proceedings but might encompass EPO proceedings more broadly, i.e. including Opposition proceedings. 

The Appellant has also suggested that if Appeal Board wanted the EBA to consider examination proceedings explicitly then the second part of the question proposed by the Appeal Board might be used to formulate a second question for referral to the EBA, and they suggested: 

Question 2 If the answer to question 1 is “yes”, can an application consequently be refused based on Article 84 EPC if the applicant does not remove the inconsistency in scope between the description and/or drawings and the claims by way of amendment of the description (“adaption of the description”)?” 

Such a referral would inevitably result in further delays to the granting process of this case but would provide an opportunity to get some legal certainty on this controversial aspect of the patenting process, which can incur a significant additional cost for large applications. We thus continue to watch this case with great interest.