7 July
2022
A recent expert
workshop held on 23 June 2022 has confirmed the EPO practice whereby the
description in a patent application must be made consistent with its amended
claims (in accordance with Article 84 EPC) to ensure legal certainty and
avoid the public being presented with information that conflicts with the wording
of the claims. This was the conclusion reached by user representatives, members of the Boards of Appeal and national
judges as well as experienced EPO examiners and lawyers who met to discuss the legal
and practical aspects of adaptation of the description. The practice explained in
the 2022 edition of the Guidelines for Examination was compared against the recent
case law. Parallel breakout sessions were held on challenges and best practices
when adapting the description in different technical areas.
Article 84 EPC requires
that the claims be supported by the description. This means that any inconsistencies
between the claims and those parts of the description disclosing ways to carry
out the invention need to be removed, as expressed in the 2022 decisions T 1024/18,
T 121/20, T 2293/18, T 2766/17 and T 1516/20.
This
understanding of Article 84 EPC is in line with the standard of claim
interpretation for national proceedings enshrined in Article 69(1) EPC, which requires
that the description also be taken into account when interpreting the claims. Diverging
interpretations of the scope of the claims can be avoided if inconsistent information
contained in the description or drawings is already removed in the proceedings
before the EPO. Thus, the support requirement of Article 84 EPC also serves the
aim of ensuring legal certainty for national post-grant proceedings.
The findings from
this workshop will be used to revise the relevant sections of the Guidelines,
for example, to provide a better definition of what should be considered
inconsistent, conflicting or contradictory or to insert illustrative examples.
The revised text will be prepared in consultation with the SACEPO Working Party
on the Guidelines.
The EPO will
continue to monitor developments in the case law on adaptation of the
description as well as on the sub-topic of claim-like clauses.
