One feature that distinguishes theEuropean Patent Officefrom the other IP5 offices is the requirement to align the description of a patent application with the claims as a prerequisite for granting the patent.
Although this requirement has been in place for several years, its specifics have varied over time and with each patent application.
The European Patent Office has been working for some time to harmonize these requirements.
Aligning the description with the claims
The legal basis for this requirement is found inArticle 84 ofthe EPC: “The claims shall define the subject matter for which protection is sought. They shall be clear and concise andbe supported by the description.”
Although theEPCdoes not clearly specify the scope of this support, as of today, as reflected in the European Patent Office’s Examination Guidelines, this support involves eliminating inconsistencies between the description and the claims.
This interpretation is supported by several recent decisions by the Board of Appeal, such asT1024/18andT121/20; however, there have recently been decisions—T1989/18andT1444/20—that could be considered contrary to current practice.
Challenges in Adapting the Description of a Patent Application
The need to adapt the description stems from the desire to define as precisely as possible the scope of protection conferred by a patent, in order to reduce uncertainty for third parties.
This greater certainty is not without potential problems for the patent holder, such as:
- Addition of matter, in violation ofArt. 123(2) EPC.
- Excessive limitation of the scope of protection, for example, resulting in a waiver of equivalents of the claimed subject matter.
- Abandon “fallback positions.”
- The processing cost increases; the longer the description, the higher the cost.
- Risk of making hasty adjustments to oral procedures.
How to Minimize Problems with Adapting the Description
While there are several ways to minimize these potential problems, perhaps the most cost-effective approach for processing them involves:
- Exclude or delete only what is strictly necessary, since the EPO’s practice in other cases is to give the applicant the benefit of the doubt.
- Decide on a case-by-case basis whether to exclude or delete, taking into account how it might affect the scope of protection and whether it might result in the addition of material. If it causes any of these issues, it is likely that strong arguments can be made against exclusion or deletion.
- Prepare any necessary adjustments in advance of the oral proceedings.
There are other, riskier alternatives, such as, for example, prolonging the proceedings in the hope that the EPO’s practice will change in the medium to long term, or filing the patent application with the BoA in the hope that the BoA will not require such an amendment to the description.
While this article has focused on the patent holder’s perspective, from an opponent’s standpoint, this amendment opens the door to new lines of attack, such as alleging an addition of subject matter under Article 123(2) of the EPC or filing third-party observations to force more risky amendments.
Author: Javier Polop