For months, it has been expected that the Enlarged Board of Appeal would have to deal with the issue of description amendments. However, now much more fundamental questions have been referred to it.
Globally, there is no common practice of adapting the description in the light of the claims prior to grant of a patent. Only in Germany and before the European Patent Office (EPO) is such an adaptation of the description required, and also assessed by examiners.
In principle, a change to the description within the narrow limits of Art. 123(2) EPC and the first sentence of sect. 38 of the German Patent Act can be useful, because courts regularly use the description to interpret the patent claims after grant. For example, the second headnote of decision UPC_CoA_335/2023 dated 26 February 2024 holds: “The interpretation of a patent claim does not depend solely on the strict, literal meaning of the wording used. Rather, the description and the drawings must always be used as explanatory aids for the interpretation of the patent claim and not only to resolve any ambiguities in the patent claim.“
However, the requirement to adapt the description has in everyday practice led to the EPO's exercise of naming the most relevant cited documents, and replacing the word "invention" with "disclosure". If necessary, statements on the incorporation of documents by reference have to be deleted, as this is not a permissible procedure under the EPC. The EPO apparently tried to counteract such exercise by amending the examination guidelines in 2021 to require that disclosure in the description that does not fall under the claims should either be deleted or be identified as such. Since then, this requirement has been followed with varying degrees of adherence, depending on the examining division in charge.
As a result, the Boards of Appeal of the EPO several times had to deal with the question of whether amendments to the description were indeed required.
Then, in proceedings T 56/21, the Board of Appeal announced in July 2023 that it would refer the question to the Enlarged Board of Appeal as to whether failure to amend the description in accordance with the current examination guidelines would result in a deficiency under Art. 84 EPC. Since then, multiple third-party submissions have been filed and no interlocutory decision has yet been issued.
The decisions taken by the Boards of Appeal of the EPO are by no means uniform (see decisions T 1989/18 and T 447/22), so that both applicants and patent attorneys see a need for clarification. To a considerable extent, the different views of the Boards of Appeal can be attributed to a different understanding of the relevance of Art. 69 EPC. According to the second sentence of Art. 69(1) EPC, the description and the drawings are to be used to interpret the claims. This provision is thus consistent with the practice of the courts after grant, cf. the UPC decision mentioned above.
Art. 69 EPC concerns the scope of protection, which is an aspect for which, strictly speaking, the EPO is not competent. In decision T 2563/11, a Board of Appeal found that the scope of protection may well be broader than the "claimed subject matter". The description should therefore not be consulted for interpreting the claimed subject matter.
A decision by a Board of Appeal that ignores the scope of protection and thus the possible fate in court can, on the one hand, rightly be seen as of questionable value for an applicant. On the other hand, the Enlarged Board of Appeal does not appear to have made a distinction between the claimed subject matter and the scope of protection. Thus, in decision G 6/88, it is stated in point 3 of the reasons: “For the purpose of determining their technical features, the claims must be interpreted in accordance with Article 69(1) EPC and its Protocol. … The object of the Protocol is clearly to avoid too much emphasis on the literal wording of the claims when considered in isolation from the remainder of the text of the patent in which they appear“.
In decision G 2/88 the Enlarged Board of Appeal held under point 2.5 of the reasons that, under Article 84 EPC, the claims “shall define the matter for which protection is sought.“ Moreover, the purpose of claims was “to enable the protection conferred by the patent (or patent application) to be determined (Article 69 EPC), and thus the rights of the patent owner within the designated Contracting States (Article 64 EPC), having regard to the patentability requirements of Articles 52 to 57 EPC.“ There is no indication of an artificial distinction between the scope of protection and the claimed subject matter here either.
For at least 20 years, an unpleasant but wide variety of decisions on the relevance of the description for claim interpretation has been generated by the Boards of Appeal of the EPO.
Against this background, a Board of Appeal in the proceedings T 439/22 felt compelled to refer to the Enlarged Board of Appeal for clarification. In the case at issue, claim 1 contained the feature „gathered sheet“. Based on the wording of the claim as understood by the skilled person, the claim was to be regarded as novel. However, the description of the patent gave the term a broader meaning, with which claim 1 was to be regarded as lacking novelty.
The following questions are referred to the Enlarged Board of Appeal:
1. Is Article 69 (1), second sentence EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC to be applied on the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC?
2. May the description and figures be consulted when interpreting the claims to assess patentability and, if so, may this be done generally or only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation?
3. May a definition or similar information on a term used in the claims which is explicitly given in the description be disregarded when interpreting the claims to assess patentability and, if so, under what conditions?
The referring Board has obviously recognised that part of current case law of the Boards of Appeal is not in line with what the Enlarged Board of Appeal held 35 years ago. In point 3.2, including sub-points, of the reasons, it refers to decisions G 2/88 and G 6/88, and in point 4.3.4 it refers again to decision G 2/88.
It rightly states in point 4.1 of the reasons: “Granting European patents is not an end in itself.“ Under point 4.1.1 it continues : „… it is of utmost importance that the subject-matter examined by the European Patent Office during grant and opposition proceedings be identical to the subject-matter taken as the basis for allowing monopoly protection by the national courts of the member states once the European patent is in force.“ Point 4.3 then states: „A further question is whether the person skilled in the art must find a claim unclear to be able to take the description and figures into account when interpreting a claim to assess patentability. To the knowledge of the Board, no national jurisdiction of the member states of the European Patent Organisation answers this question in the affirmative.“
It therefore appears that the fundamental questions on the interpretation of claims have just overtaken on the right the subordinate questions on the sense and extent of amendments to the description.
Interestingly, in view of this referral, the President of the EPO seems to expect an overwhelming number of requests on claim interpretation filed by parties to proceedings. His order that “Considering the need for … ensuring the functioning of the EPO” examination and opposition proceedings are not to be stayed can hardly be understood in any other way.
