More burden for the Applicant when amending the description
Nestled amongst a number of updates to the EPO’s Guidelines for Examination 2021, which came into force on 1 March 2021, is a somewhat controversial change in practice regarding how the description should be amended in view of the scope of claims deemed allowable by an Examiner. It has been a requirement of European patent prosecution for quite some time to bring the description into conformity with an allowed set of claims for consistency and clarity in accordance with Article 84 EPC, however, the EPO has, until now, allowed Applicants to interpret this requirement rather liberally.
Under the rules of the previous guidelines, it was possible to simply add a broad statement to the description’s “Summary of Invention” which made clear to the reader that the appended claims determined the scope of protection, and that features or embodiments mentioned in the description which fell outside the scope of the claims were not intended to be protected. This approach could also be coupled with amending recitations of any embodiments which fell outside the scope of the allowed claims with statements that made such embodiments part of the disclosure only so as to help with understanding the invention.
It is not uncommon for specifications in the biotechnology and pharmaceutical fields to run hundreds of pages long, and so by employing the strategies outlined above Applicants could meet the EPO’s previous description requirements – already an additional burden when compared to requirements of other jurisdictions which typically do not require that the description be brought into conformity with an allowed set of claims – with relatively minimal expenditure of time.
However, at Part F, Chapter IV, 4.3 (iii)[1] of the updated guidelines it is now stated that:
“Embodiments in the description which are no longer covered by the independent claims must be deleted (for example if the description comprises an alternative for at least one feature which is no longer covered by the amended claims) unless these embodiments can reasonably be considered to be useful for highlighting specific aspects of the amended claims. In such a case, the fact that an embodiment is not covered by the claims must be prominently stated (T 1808/06) … In addition, merely changing the wording ‘invention’ to ‘disclosure’ and/or the wording ‘embodiment’ to ‘example’, ‘aspect’ or similar is not sufficient to clearly state that this part of the description does not fall under the scope of the claimed invention. It has to be explicitly specified that this part of the description does not describe part of the claimed invention.”
These new requirements further burden the Applicant by not only necessitating further investment of time and expense by requiring a more in-depth analysis of the disclosed embodiments but also an additional risk that the scope of protection conferred by the allowed claims could unwittingly be reduced.
As the extent of protection conferred by a European patent is determined by the claims when interpreted in light of the description and drawings[2], greater care will be needed when amending the description to conform to the claims.
Infringement of a European patent is dealt with by national law[3] and, as such, the extent of protection conferred by a given European patent can differ on a national basis. This is particularly apparent when considering that the doctrine of equivalents[4] is applied differently in key jurisdictions such as the UK, Germany, and France, and so amendments to the description which directly impact interpretations of claim scope have the potential to non-uniformly alter the protection conferred by the European patent on a national level.
The EPO’s reasoning for introducing these requirements remains unclear and appears to stem from internal guidance and a decision dating back to 2008[5]. Further, Examiners can now issue a summons to oral proceedings where the Applicant does not amend the description in the manner that they have been asked and as set out in the Guidelines, which could potentially lead to a refusal of the application. Perhaps to offset this rather draconian measure, part C-VII, 2[6] of the Guidelines sets out that videoconference consultations with document sharing will be available as the preferred way to resolve minor issues with the Examiner.
Until the provisions are challenged in the future, the new Guidelines are here to stay. Please contact your Attorney at Avidity-IP should you have any concerns.
[1] https://www.epo.org/law-practice/legal-texts/html/guidelines/e/f_iv_4_3.htm
[2] Art. 69(1) EPC: https://www.epo.org/law-practice/legal-texts/html/epc/2016/e/ar69.html
[3] Art. 64(3) EPC: https://www.epo.org/law-practice/legal-texts/html/epc/2016/e/ar64.html
[4] https://en.wikipedia.org/wiki/Doctrine_of_equivalents
[5] T 1808/06 https://www.epo.org/law-practice/case-law-appeals/recent/t061808eu1.html
[6] https://www.epo.org/law-practice/legal-texts/html/guidelines/e/c_vii_2_1.htm