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This forms part of a wider report on the 2022 updates to EPO Guidelines for Examination.
There are some small but important changes to the guidelines on required changes to the description of a European patent application (Guidelines Part F, Chapter IV, section 4.3).
Many EPO customers were hoping for a relaxation of the Guidelines and EPO practice relating to the requirement for amendments to the description of a patent specification for consistency with amended claims. Some EPO Examining Divisions have been applying the current requirement (“to avoid inconsistencies between the claims and description”) very strictly. The 2022 Guidelines have been amended in Part F, Chapter IV section 4.3 to make it clear that the description must be amended to avoid “a contradiction between the claims and description”. The Guidelines wording has been changed as follows:
“embodiments in the description which are no longer covered by contradict the independent claims must be deleted or not to be presented as being in accordance with the invention (for example if the description comprises an alternative for at least one feature which is no longer covered by the amended claims)”
We are pleased that the EPO has recognised that deletions are not always appropriate, and that not all differences (inconsistencies) between the claims and description create a lack of clarity that justifies an Examining Division insisting on amendments.
We also welcome the confirmation that an apparent requirement to excise “excluded” subject matter was only intended to refer to the specific exception to patentability under Article 53(c ):
“Subject-matter in the description regarded as exceptions to the patentability under Art. 53(c) being excluded from patentability needs to be excised, reworded such that it does not fall under the exceptions to patentability or prominently marked as not being according to the claimed invention.”
However, many applicants will feel the EPO has not gone far enough with its 2022 changes. Examiner proposals to add explicit disclaimers or to delete chunks of the description are not welcomed by applicants.
The revised Guidelines still suggest that passages of the description that refer to embodiments that are outside the literal scope of the claim should be amended to include explicit disclaimers such as “Embodiments not falling within the scope of the claims” or to state that examples are “outside the scope of the claims”. Applicants have good reasons for wanting to avoid such explicit statements, especially if an examiner proposes adding a statement that an embodiment or example is not part of the invention.
The new wording of Guidelines F-IV, 4.3 includes:
“The terms ‘’disclosure’’, ‘’example’’, ‘’aspect’’ or similar do not necessarily imply that what follows is out of the scope of an independent claim. Therefore, for marking embodiments which no longer fall within the scope of an independent claim, it is not sufficient merely to replace the term ‘’embodiments’’ or ‘’inventions’’ with the stated terms. Instead, unambiguous expressions have to be adopted to mark an embodiment which does not fall within the scope of an independent claim (for example referring to ‘’not falling within the scope of the claim’’ or ‘’outside the scope of the claim’’).”
and this amendment:
“Moreover, features required by the independent claims may not be described in the description as being optional using wording such as “preferably”, “may” or “optionally”. The description must be amended to remove such terms when preceding aif they result in making a mandatory feature of an independent claim optional.”
Some EPO Examining Divisions allow replacement of “embodiments” with “examples”, but others currently require explicit disclaimers. The updated Guidelines will allow EPO management to encourage a more consistent practice throughout the office.
We predict that some applicants will seek to rely on December 2021’s EPO Technical Board of Appeal decision T1989/18 and argue against description amendments proposed by EPO examiners. In T1989/18, the Board concluded that there was no legal basis for the Examining Division to refuse an application based on the applicant’s decision not to amend their description (point 7 of the reasons notes that “Article 84 EPC cannot serve as a legal basis for the refusal” and point 12 notes that “Rule 48 EPC cannot serve as a legal basis for the refusal either”). It is unclear how Examining Divisions will react to T1989/18, so we recommend watching out for additional case law on this point and considering the option to help the EPO develop its 2023 Guidelines by contributing to the new Guidelines consultation.
This issue is a reminder that, when drafting patent specifications that will be prosecuted in Europe, applicants should try to avoid references to “embodiments of the invention” and consider alternative wording that reduces the likelihood of future objections that the description contradicts the claims (e.g wording such as “The following examples illustrate at least some features of the described methods, systems or apparatus” could be accompanied by an explanation of which described features may be implemented in different combinations or separately). If your description is limited to a single “embodiment”, there will be less scope to amend the claims and a reduced likelihood of being able to retain the description in its original form when claim amendments are made.