Prior to grant of a European patent application, examiners frequently ask for the description to be tailored for consistency with the subject subject of the allowable set of statements. This grew to become a much more onerous exercising following an update to the EPO Tips for Evaluation in March 2021, which set out a substantially higher array of conditions in which the description should really be adapted. A the latest final decision from an EPO Board of Attraction deemed irrespective of whether there was legal foundation for refusing an application if the description was not adapted to the topic make any difference of the statements.
Area F-IV, 4.3 of the EPO Recommendations for Evaluation concerns inconsistencies amongst the description and the claims. It states that any inconsistency between the description and the statements must be prevented if it may perhaps toss question on the extent of security and for that reason render the declare unclear or unsupported below Post 84 EPC (clarity and conciseness).
An attraction was lodged in 2018 next the inspecting division’s choice to refuse the software. The inspecting division discovered the established of promises to be allowable, but that amendments made to the description did not meet up with the requirements of Short article 84 EPC. The amendments consisted of insertions of the wording “In a person embodiment of the invention”. The inspecting division deemed the amended description to relate to matter-subject which was broader than the matter-matter of the allowable claims, and took the see that the scope of protection was unclear.
Part F-IV, 4.3 (iii) of the EPO Suggestions for Assessment was current in 2021 to reflect the wording of an earlier selection (T 1808/06) which states that, in purchase to satisfy the prerequisite of Report 84 EPC, “[r]eference to embodiments no more time protected by amended statements ought to be deleted, unless of course these embodiments can fairly be viewed as to be helpful for highlighting certain elements of the amended subject-make a difference. In these kinds of a scenario, the reality that an embodiment is not lined by the promises ought to be prominently said.” This up-to-date wording has caused many communications to be issued by the EPO where by only the adaptation of the description has been needed in reaction.
The Board of Appeal thought of numerous parts of the EPC that may give rise to the authorized need for amending the description.
Short article 84 EPC states “The statements shall outline the subject for which safety is sought. They shall be very clear and concise and be supported by the description.”
The Board of Enchantment observed that Write-up 84 EPC only mentions the description in the context of the more requirement that it should guidance the claims the specifications of clarity and conciseness only implement to the promises. The Board of Enchantment decided that the established of promises of the appealed application had been distinct in themselves and supported by the description. As a consequence, the clarity of the promises is not impacted if the description consists of subject matter-subject which is not claimed, and consequently the specifications of Report 84 EPC are fulfilled.
The Board of Charm also regarded Policies 42(1)(c) and 48(1)(c) EPC. Rule 42(1)(c) EPC demands that the description discloses the creation in this sort of phrases that the technological difficulty and its answer can be understood. Listed here, the Board of Charm made a decision that the passages of the description objected to by the analyzing division do not impair the knowledge of the technical issue and its remedy as established forth elsewhere in the description, and as a result that the requirements of Rule 42(1)(c) EPC ended up achieved.
Rule 48(1)(c) EPC requires that a European patent application shall not comprise any statement or other matter clearly irrelevant or unnecessary below the situation. In this article, the Board of Attraction famous that the purpose of Rule 48 EPC as a full is to reduce the publication of matter opposite to morality or community purchase, and that there is a basic acceptance that an software should really not be refused even if the software as submitted contained these issue. The wording of Rule 48 EPC implies an buy of offensiveness for this kind of issue, with clearly irrelevant or unneeded make any difference becoming ranked the least expensive. As Rule 48 EPC is silent on any lawful effects for an software that contains definitely irrelevant or unneeded make any difference, the Board of Attraction decided that the reason of Rule 48(1)(c) EPC simply cannot be to keep a patent specification cost-free of pointless details and to make sure that its written content relates only to what security is sought, and hence that Rule 48 EPC simply cannot serve as a legal basis for the refusal.
The Board of Charm as a result made the decision that there are no legal provisions of the EPC to refuse an application where embodiments disclosed in the description are of a extra typical nature than the subject matter-make any difference of an impartial declare.
This conclusion contradicts the earlier choice (T 1808/06) on which the existing wording of the EPO Pointers is centered. In T 1808/06, the opponent appealed the selection to manage the patent in amended type on the grounds that an inconsistency among the promises and the description and drawings gave rise to objections under Post 84 EPC. Right here, the Board of Enchantment made the decision that the description will have to be tailored in buy for the statements to be supported by the description.
In contrast, the existing choice states that the promises are supported by the description basically by the matter issue of the promises staying present in the description. In fact, the present conclusion suggests that subject matter make any difference in the description can be referred to as “embodiments of the invention” even if it falls outside the house the scope of the statements. This is shocking, considering the fact that Boards of Attractiveness are supposed to refer circumstances to the enlarged Board of Enchantment where by there is a deviation of legislation.
It is very clear that the features of the impartial claims need to be existing in the description in get for the statements to be supported, but other necessities as to the written content of the description below Post 84 EPC are unclear.
A number of preceding selections have relied on Rule 48(1)(c) EPC as a lawful foundation for requiring the description to be tailored to the issue-make any difference as claimed. Indeed, section F-IV, 4.4 of the EPO Tips states that claim-like clauses must be deleted from the description simply because they guide to a deficiency of clarity as to the scope of defense, and are irrelevant and needless and hence contravene Rule 48(1)(c) EPC. This selection indicates that there is also no legal provision of the EPC to item to claim-like clauses in the description.
This choice will be welcomed by numerous functions, as adapting the description can be a time-consuming training and the up to date wording of the EPO Rules for Examination has resulted in added communications becoming issued by the EPO, slowing down assessment proceedings. This determination seems to provide legal foundation for resisting significant scale adaptation of the description in purchase for an application to continue to grant.
The 2022 update of the EPO Tips for Assessment will appear into impact in March 2022. A dedicated workshop with regards to the adaptation of the description was held in November 2021, with a stick to-up meeting planned, so an update to this portion of the EPO Guidelines for Assessment was already getting considered. We therefore await with desire now to see how the 2022 EPO Guidelines for Examination will be current in check out of this final decision.