May 25, 2022

The Boards of Appeal “in line” with the new EPO Examination Guidelines.

The recent decision of the Boards of Appeal T1444/20 of April 28, 2022, regarding the modifications in the description for reasons of clarity before the granting of the patent application is “in line” with the modifications introduced in the new Guidelines for Examination of the European Patent Office in force since March 1, 2022.

Decision T1444/20 cites and agrees with T 1989/19, finding that “claim-like clauses” in the description, referenced as “specific embodiments of the invention“, need not be deleted for the claims to comply with Article 84 EPC. In a more detailed analysis of Rule 48(1)(c) EPC, the Boards held there was no legal basis for a requirement to ament the description in the line with allowable claims prior to their grant, the Boards of Appeal in T1444/20 concludes that the wording and the history of this rule suggest that the restrictive use that was being given was not that of its intended purpose. The Boards agrees in this regard with the analysis provided in decision T 1989/18 of 12.16.2021, Reasons 9 and 10, [9. (…) Rule 48 EPC is based on Article 21(6) and Rule 9 PCT, which provide that the international application may not contain matter contrary to morality or order, derogatory or obviously irrelevant statements or unnecessary matter (… ); 10. (…) In the judgment of the Boards of Appeal, however, the purpose of Rule 48(1)(c) EPC cannot be to keep a patent specification free of information and to ensure that its content relates only which protection is sought, for various reasons].

Thus, the recent decision and the new EPO Guidelines follow the same line of interpretation, as revealed by the modification in Part H – Chapter V-2.7 “Bringing the description into line with amended claims”: “If the applicant does not amend the description as required despite being asked to do so, the examining division’s next action may be to issue a summons to oral proceedings; for the time limit, E-III, 6(iii) applies.”

This modification clearly differs from the previous wording of the EPO Guidelines, where the description had to be adapted so that the claims were supported by the description (Article 84 EPC). This will undoubtedly prevent applicants from having to delete specific embodiments of the invention when their wording is not identical to the wording of the claims. Again, patent drafters play an important role in the drafting clarity of a patent application so that it is not unnecessarily limited in its grant.

In conclusion, the recent jurisprudence of the Boards of Appeal is in the same line as the new EPO Guidelines, which transfer to the Examination Division, and thus to the examiners, the decision on whether the specific embodiments with claim-like clauses are kept in the description and, consequently, their clarity will be essential.

Article by Sònia Girona.