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.