Does new case law contradict (again) the EPO’s position on description amendments?
The decision in T 1989/18 released earlier this year raised hopes that the EPO’s increasingly onerous stance on description amendments might be due to relax, only for subsequent case law (T 1024/18 and T 0121/20) to affirm the EPO’s current position.
However, in recent decision T 1444/20, the Board of Appeal diverges from the Guidelines once again and agrees with the more favourable position of T 1989/18.
A brief background to the case law
- T 1808/06 (2008): Inconsistencies between amended claims and the description should normally be excised (unless prominently stated as not covered by claims)
- EPO Guidelines, March 2021: More stringent description adaptation requirements are introduced (e.g., embodiments not covered by the claims should be removed, and replacing “invention” with “example” is no longer allowed)
- T 1989/18 (December 2021): Board of Appeal unable to find legal basis for requiring that broad statements in the description should be removed
- EPO Guidelines, March 2022: As discussed one of our recent articles, the EPO’s position remained largely unchanged
- T 1024/18 (1 March 2022): Consistent with the EPO’s position, the Board found that Art. 84 EPC provided legal basis to justify that “the description [must be] consistent with the claims not only in some part but throughout”
- T 0121/20 (11 March 2022): Reliance on the decision of T 1989/18 was tested, however, the Board disagreed with T 1989/18, instead affirming decision T 1024/18. The Board stated that “the criterion that the claims be "supported by the description" is not in any way subordinate to the requirement of "clarity" of the claim”
T 1444/20 (28 April 2022)
Explicitly agreeing with T 1989/18, the Board found that “claim-like clauses” in the description labelled as “specific embodiments of the invention” need not be excised. The Board reasoned that the clauses need not be removed because “the description refers to them as embodiment, item, immunoassay, method or use” (paragraph 2.4), despite the Guidelines indicating that marking inconsistencies as “examples” or “embodiments” is not acceptable.
The tension between the various contradictory decisions, highlighted in T 0121/20, may have arisen because some Boards have placed greater emphasis on the support criterion of Art. 84 EPC than the clarity criterion. The Board remarked in T 1444/20 that “there is no reason why the presence of the section "Specific embodiments of the invention" in the description should affect the clarity of the claims”. Interestingly, the Board justified their divergence from the Guidelines by remarking that “the entire section "Specific embodiments of the invention" relates to the same subject-matter (defined by the same method steps) as the current claims and may be taken to provide additional support for the claims in the description” (paragraph 2.7).
The Board in T 1444/20 therefore appears to share the sentiment of most practitioners that at least some ‘inconsistent’ passages may be viewed as providing “additional support” for the claimed invention, and should not in principle be removed.
Until the Guidelines are updated (or a referral is made to the Enlarged Board of Appeal to settle the matter) the official stance of the EPO will remain unchanged. However, it is encouraging to know that there is scope to challenge the EPO’s stance by relying on T 1989/18, and potentially now T 1444/20, if Applicants disagree with the current requirements.