PATENT – Referral on description amendments submitted to the EBA of the EPO

Newsletter n. 91 – December 2023

PATENT

Referral on description amendments submitted to the EBA of the EPO

In the appeal case T 56/21, the Board of Appeal of the EPO (“BA”) invited the applicant to request a referral (“Request”) to the Enlarged Board of Appeal (“EBA”) on the question of compulsory adaptation of the description with the claims, due to the uncertainty surrounding the applicable discipline on description amendments. This because the EPO guidelines require a strict alignment of the description with the claims, so that the applicant must either delete the subject matter not covered by the claims, or clearly state in the description that the latter is not part of the invention, otherwise the subject matter of the patent may be considered unclear. On the other hand, recent BA case law has highlighted that the description can be ignored if the language of the claims is clear. Therefore, the applicant, also considering the risks linked to such amendments (e.g. added matter issues), submitted the following questions to the BA: (i) “Is there a lack of clarity of the claims or a lack of support of the claims 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 in the specification 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 (ii) “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 (“adaptation of the description”)”.