About the author: David Jasiewicz is a trainee patent attorney in our Manchester office. David has a background in chemistry and before joining Appleyard Lees worked in a patent law firm in Japan. David works with clients including large and small chemical manufacturers, universities, and start-ups. He has a particular interest in the field of novel materials, coatings, and pharmaceuticals.
When first filed, a patent application contains a set of claims which define a scope of legal protection alongside a detailed description which supports the claims. However, the claims are often amended during prosecution of the application to meet patentability requirements, such as novelty and inventive step. A number of patent offices around the world require the amendment of the description to match the scope of the amended claims.
The European Patent Office has long had such a requirement. However, in March 2021 its examination guidelines were updated to make the rule much stricter than before. Since then, examiners at the European Patent Office have been much more likely to insist on extensive amendments to the description following amendments to the claims.
While this requirement to amend the description seems innocuous, it can be a source of headaches for applicants and patent attorneys alike. Amendment of the description must be done carefully to avoid accidentally causing problems down the line. In worst-case scenarios the wrong amendment can make the patent invalid. Patent attorneys might need to spend a considerable amount of time reviewing and amending the description, resulting in additional costs for applicants. Furthermore, European examiners sometimes propose their own amendments to the description, which should be reviewed to make sure they are acceptable and reflect the wishes of the applicant. This again takes time and if the examiner’s proposals are not accepted, the grant of the patent application is delayed.
In the appeal case T1989/18, the applicant had not accepted the examiner’s proposed amendments to the description following a finding that the amended claims were allowable. However, the examiner in turn had not accepted the applicant’s own amended description because it allegedly did not conform to the amended claims. The application had been refused by the examining division, and the applicant had appealed against the decision.
Surprisingly, in its decision published in December 2021 (T1989/18), the Board of Appeal took a completely different position to the examining division. The Board reviewed the law applying to European patent applications (which does not include the examination guidelines) and found that there was no legal basis for requiring adaptation of the description to the claims. As long as the claims are clear in themselves and are supported by the description, the fact that the description describes something not (or no longer) claimed cannot be basis for refusing the application.
The Board’s decision will be a relief to many applicants and practitioners, as it will provide a strong argument for rejecting unwanted amendments to the description. However, it remains to be seen to what extent examiners at the European Patent Office will stop requesting or proposing such amendments.
T1989/18 – EPO – T 1989/18 (Adaptation of the description/HOFFMANN-LA ROCHE) of 16.12.2021
