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  • Dr. Peter Reckenthäler

EPO Board of Appeal disagrees with rule on mandatory amendment of patent descriptions

Düsseldorf, Jan. 13, 2022 - In a decision dated Dec. 16, 2021 (T 1989/18), a Board of Appeal of the European Patent Office (EPO) has contradicted the EPO Guidelines for Examination on a fundamental point:

According to the decision, patent applicants should in the future no longer be obliged to delete embodiments from the description simply because they go beyond what is covered by the claims considered grantable.

In their current version, the EPO Guidelines for Examination require exactly this: "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)" (EPO Guidelines for Examination, F-IV 4.3).

According to the Board of Appeal, however, there is no legal basis in the European Patent Convention (EPC) prohibiting such embodiments. In particular, clarity of claims that are clear in themselves and supported by the description would not be affected by the fact that the description also contains subject-matter that is not claimed.

"For applicants, the EPO Board of Appeal's decision is good news, as it provides a basis for avoiding disproportionate adjustments to the description," says Dr. Peter Reckenthäler, patent attorney at Cohausz & Florack (C&F). "At the same time, applicants should, in their own interest, ensure that the description is consistent with the issued claims. This appears advisable, as the description is used in patent infringement proceedings to interpret the patent claims."