PATENTS | The EPO Board of Appeal on description amendments and claim-like clauses

In appeal case T 0438/22 (the “Case”), the EPO’s Board of Appeal (“BA”) issued its decision (“Decision”) on the legality of the provision of the Guidelines (4F-IV, 4.4) according to which claim-like clauses must be removed from the description. The Guidelines define claim-like clauses as those “clauses present in the description which despite not being identified as claims, appear as such”. It is common to find such clauses particularly in divisional or Euro-PCT applications, where the original set of claims from the parent or PCT application is appended to the description. In the Case, the applicant argued that there was no Enlarged Board of Appeal (“EBA”) case law justifying provision 4F-IV, 4,4 of the Guidelines as it was solely based on long-standing practice developed over time by the examining divisions. With the Decision, the BA agreed that there is no EBA case law that forms the basis of such provisions of the Guidelines. However, the BA dismissed the appeal, highlighting that “the EPC as a whole” requires a strict adaptation of the description with the claims, also considering the long-established case law on Art. 84 of the EPC (on this matter see here).

Newsletter n. 93 – February 2024