EPO description amendment requirement decisions T 1989/18 vs. T 1024/18 - what can be expected next?
In our news article of February 24, 2022, we highlighted the applicant-friendly decision T 1989/18 of December 16, 2021 of the Board of Appeal 3.3.04, which teaches that, contrary to the applicant-unfriendly guidance in the EPO Guidelines, the description does not have to be brought in line with the allowed claims.
Subsequently, and with reference to decision T 1989/18, another Board of Appeal (3.2.06) took a different view in decision T 1024/18 of March 1, 2022, arguing that there is legal basis for the description amendment requirement in Article 84 EPC. In other words, the wording of Article 84 EPC “The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description.” is interpreted differently depending on the Board.
What can be expected next? Hopefully further decisions along the lines of applicant-friendly decision T 1989/18 and hopefully a referral to the Enlarged Board of Appeal at some point, as this seems to be the only valid option to ensure a uniform application of Art. 84 EPC and to get clarity on what exactly applicants are obliged to do with regard to the adaptation of the description to the claims prior grant.