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24.02.2022

Pre-grant description amendments at the EPO – Don’t be (mis)guided by the EPO Guidelines

In situations where the claims are EPO allowable and the grant of the patent is looming on the horizon, EPO examiners usually require the adaption of the description to the claims as outlined in the current (2021) EPO Guidelines for Examination which require that embodiments no longer covered by the claims be either deleted or prominently marked as not claimed, as outlined in Part F, chapter IV, item 4.3 (iii) of said Guidelines.

Said item of the EPO Guidelines refers to decision T 1808/06, which, however, no longer seems to be relevant in view of recent decision T 1989/18, which the Board of Appeal placed under the applicant’s Christmas tree in 2021. In decision T 1989/18, the application was refused by the Examining Division solely because the description had not been amended in line with the allowed claims and therefore allegedly violated the clarity requirement of Article 84 EPC. The Board of Appeal looked for relevant provisions in the EPC that could serve as a legal basis for the refusal by the Examining Division, but could not find any and therefore remitted the case back to the Examining Division with the order to grant the patent. 

The draft of the new EPO Guidelines, which will replace the current version on March 1, 2022, seems to be softer with regard to said alleged adaptation of the description requirement, obviously in view of the new case law and the users’ feedback on the rather strict application of the current (2021) EPO Guidelines in this regard. For example, the paragraph in the current EPO Guidelines, requiring that embodiments no longer covered by the claims must either be deleted or prominently marked as not claimed has been deleted in the draft of the new (2022) EPO Guidelines, and where instead, for example, the following wording has been added:

For borderline cases where there is doubt as to whether an embodiment is consistent with the claims, the benefit of doubt is given to the applicant.

It remains to be seen whether or not EPO examiners will apply a softer approach with regard to the alleged adaptation of the description requirement under the new (2022) EPO Guidelines and if the Boards of Appeal will approve the new version.

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