European patent descriptions: To adapt or not to adapt?

In recent years, the European Patent Office has progressively required patent descriptions to be adapted to align them with the content of the claims, says Cyrille Poindron. He explains the background of this practice and the legal issues currently discussed at the European Patent Office. 

The European Patent Office (EPO) Guidelines for Examination instruct examiners to request or make changes to patent descriptions to eliminate contradictions or inconsistencies with the claims. To implement this practice, the EPO primarily relies on Article 84 of the European Patent Convention (EPC), sometimes in combination with other provisions: 

However, in cases brought before the Boards of Appeal, two lines of reasoning have emerged: 

• A first series of decisions, including T1024/18, confirms that the description must be consistent with the claims, and that amending the description is therefore necessary in the event of contradictions or inconsistencies with the claims, primarily on the basis of Article 84, alone or in combination with other provisions of the EPC;
• A second series of decisions, including T56/21 and T1889/18, indicates, on the contrary, that there is no legal basis for requiring an amendment to the description. In other words, according to this second series of decisions, Article 84 cannot serve as a legal basis for requiring an adaptation of the description. This distinction is important in opposition proceedings where clarity (Article 84) is not a ground for opposition. 

In case T697/22, the Board of Appeal considered that, in order to resolve the specific case, clarification was needed as to whether it was necessary to adapt the description. 

More specifically, the Board of Appeal decided to refer the matter to the Enlarged Board of Appeal to answer the following three questions: 

• If the claims of a European patent are amended during opposition proceedings or during proceedings on appeal against an opposition, and the amended claims introduce an inconsistency between the claims and the patent description, is it necessary, in order to comply with the requirements of the EPC, to adapt the description to eliminate this inconsistency?
• If the first question calls for an affirmative answer, which provision of the EPC requires such an adaptation?
• Would the answer to question 1 be different if the claims of a European patent application are amended during the examination or appeal proceedings, and this amendment introduces an inconsistency between the amended claims and the description of the patent application? 

The Enlarged Board of Appeal must now consider all the elements of the case (review of previous decisions, analysis of the observations of the President of the EPO, etc.) before issuing its decision, which we will be sure to disseminate through our communication channels. This decision will clarify the necessary practice to be followed at the EPO and should clarify the extent to which adapting the description is legally required when claims are amended. 

For additional information or related patent drafting best practices, speak to your Novagraaf attorney or contact our team.