In our news article of February 24, 2022, we highlighted the applicant-friendly decision T 1989/18 of December 16, 2021 of the Boards of Appeal (BoA) 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.
Recently, another BoA (3.3.01) took an identical view in its decision T 1444/20 of April 28, 2022, also arguing that there is no potential legal basis for the description amendment requirement either in Article 84 EPC or in Rules 42(1)(c) and 48(1)(c) EPC (see items 2.4-3.3.4 of the reasons).
However, other BoA explicitly do not follow the reasoning in T 1989/18 and still apply said description requirement based on said EPC provisions, see
– T 1024/18 (BoA 3.2.06) of March 1, 2022, see items 3.1.6-3.1.12 of the reasons,
– T 0121/20 (BoA 3.2.01) of March 11, 2022, see item 10.2 of the reasons,
– T 2766/17 (BoA 3.2.02) of March 17, 2022 see item 6 of the reasons, and
– T 2293/18 (BoA 3.5.02) of March 31, 2022, see items 3.3.4-3.3.5 of the reasons.
In view of this significantly diverging recent BoA case law, there is an increasing need for a referral to the Enlarged Board of Appel to ensure a uniform application of said provisions, which can be initiated by the BoA or from a party to the appeal proceedings under Art. 112(1)(a) EPC.
However, it might be a better option to initiate said proceedings under Art. 112(1)(b) EPC under the discretion of the President of the EPO asap, at least if the President has an interest in preventing the EPO’s reputation from eroding, because the chaos created with the strengthened EPO Guidelines and the above-mentioned conflicting BoA case law can no longer be rationally explained to the EPO’s customers.