5.3. Bringing the description into line with amended claims

In T 977/94 the board decided that if the patentee amended his claims he had also to bring the description into line with them, because of its fundamental importance. An invention was only claimable to the extent that it was supported by the description (Art. 84, second sentence, EPC 1973), and the claims were interpreted in the light of the description (Art. 69 EPC 1973). So it was necessary to check that the essential elements of the invention claimed were also described as such in the description (see T 300/04).

In T 295/02 the board found that an inconsistency between a claim and the provisional description was not a valid reason to refuse the application if the inconsistency arose from an amendment, if it was apparent that the text of the description was not intended by the applicant to form the agreed basis of any decision, especially one concerning its consistency with the amended claims, and if the appellant was prepared to adapt the description to conform to a definite allowable set of claims.

In T 1808/06 the board recalled that, in order to meet the requirement of Art. 84 EPC that the claims have to be supported by the description, any disclosure in the description and/or drawings inconsistent with the amended subject-matter should normally be excised. Reference to embodiments no longer covered by amended claims must be deleted, unless these embodiments can reasonably be considered to be useful for highlighting specific aspects of the amended subject-matter. In such a case, the fact that an embodiment is not covered by the claims must be prominently stated.

The board considered that the placing of reliance on Art. 69(1) EPC, as was done in the decision under appeal, was not an appropriate justification for a less stringent adaptation of the description. Reference to Art. 69(1) EPC was misleading in so far as it could be understood to suggest a direct applicability of its contents at the examination or opposition stage. This was clearly not the case as Art. 69(1) EPC related to the scope of protection. It was only in situations where the removal of inconsistencies was not possible for procedural reasons (e.g. no amendment possible of the granted version) that - purely as an auxiliary construction - Art. 69(1) EPC could be invoked for an interpretation of the claimed subject-matter.

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