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Case law 22 feb 2022

Adaption of the description, which EPO examiners request based on the EPO guidelines, has no basis in the EPC

-Dit artikel is alleen in het Engels beschikbaar- In this case, the applicant appealed the decision of the Examining Division (ED) to refuse the European patent No. 12 810 245.6 for the reason of not having been satisfied with the extent to which the applicant amended the specification for bringing it into conformity with the allowable claims. The Board analysed the legal basis for requiring the applicants to amend the description for consistency with the claims, as it currently appears to be necessary based on the EPO Guidelines for Examination, and concluded that there is none. Consequently, as there also was no legal basis for the refusal, the case was remitted to the ED with the order to grant the patent.

The ED had refused a European Patent application for the reason that the amendments to the description did not allegedly comply with Art. 84 EPC, in particular for containing parts describing the subject matter of the invention broader than in one of the allowable claims directed to an expression vector (being a man-made nucleic acid construct, in this case for making an antibody).

In one embodiment of invention

During examination the applicant responded to the communication to remove inconsistencies between the allowable claims and the specification (as laid out in EPO Guidelines Part F-IV, 4.3,), by inserting a phrase “In one embodiment of the invention” before a section describing an expression vector. The ED opined that this and similar amendments rendered the scope of protection as determined by the allowable claims when interpreted in view of the such amended description (Art. 69(1) EPC) unclear, thus refusing the patent.

The applicant appealed explicitly pointing out that “The EPC did not require that parts of the description (..) which were no longer covered by (..) claims (..) intended to grant (..) had to be marked as "non-related disclosure" or even had to be deleted when adapting the description to those claims”.

Clear claims and supported description

Consequently, the Board analysed closely different provisions of the EPC, on which the requirement to amend description could have been based. Firstly, the Board concluded that the provisions of Art. 84 EPC, 2nd sentence (“They (the claims) shall be clear and concise and be supported by the description”) only concern claims per se and not the description. So this sentence merely defines that claims on their own have to be clear, concise, and supported by the description. Importantly, the Board stated: “In particular, if the claims are clear in themselves and supported by the description, their clarity is not affected if the description contains subject-matter which is not claimed.” (emphasis added)

Then, the Board referred to Art. 69 EPC, concluding that it was “of no relevance since it is only concerned with the extent of protection (..)” and not being “by itself concerned with a requirement of the Convention to be met by an application or patent”.

...clarity is not affected if the description contains subject-matter which is not claimed
The Board of Appeal -

Description of claims

Next, the Board considered the wording of Rule 42(1)(c) EPC that defines that the “description shall .. disclose the invention, as claimed, in … technical problem .. and solution”. The Board concluded that it merely “requires the description to disclose how the invention can be understood as the solution to a technical problem” and that they “fail[ed] to see how the above-mentioned provision could be the legal basis for requiring the applicant, as a general rule, to bring the description in line with claims intended for grant, and to remove passages of the description that disclose embodiments which are not claimed.” (emphasis added). The Board then verified that the refused application contained passages meeting the requirements of Rule 42(1)(c) EPC and concluded that the lack of the latter also could not had formed the basis for the refusal of the application in the first instance.

As a last resort for finding the legal basis requiring the adaptation of the description, the Board looked at Rule 48(1)(c) stating that “the EP application shall not contain … any statement or other matter obviously irrelevant or unnecessary under the circumstances.” Firstly, the Board noted that said Rule concerns patent applications and not granted patents. Then, the Board noted that “Rule 48 EPC is entirely silent on the legal consequence.” and consequently, should not be conceived as intended to impose a sanction as severe as a refusal in case of a potential non-compliance therewith, which in this particular case was not clear-cut at all, especially in view of the fact that the Board could not find any guidance in the legislation as to what could amount to "obviously irrelevant or unnecessary".

Decision of the Board

The Board concluded their analysis by stating that they “fail[ed] to see how the aforementioned provisions of the EPC, or any others, can lead to the requirement that embodiments .. in the description .. which are of a more general nature than the subject-matter of a given independent claim must constitute potential subject-matter of a claim dependent on that independent claim.” (emphasis added). Hence, the case was remitted to ED with the order to grant a patent.

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