Disclaiming the unclaimed or not?

In decision T1989/18 , the Board of Appeal has held that a patent application may not be refused solely because the description is more general than the subject-matter of the claims. Fellow European Patent Attorneys I spoke to and of whom I have read their interpretations via social media are very positive, but we're not out of the woods, yet.

?Already for a long time, the European Patent Office requires the description of a patent application to be amended to conform with the claims intended for grant. And in the same way, the description of a patent of which claims have been amended during opposition is officially to be amended. This requirement finds in any case no literal basis in the European Patent Convention, but is elaborately described in the (external) guidelines for examination issued by the European Patent Office. These guidelines are, indeed to provide guidance for examination, but they are no legal basis.

Furthermore, this requirement to amend the description is not consistently enforced by each examiner. Some examiners require no, or only minor, amendments to the description while others request the amended claims to introduced into the introduction or summary section of the description. In the other extreme, many examiners require you to delete any parts of the description with subject-matter that is not claimed or to literally indicate, in the description, that particular subject-matter of the application does not fall within the scope of the claims.

As the scope of protection of a European patent is to be interpreted in the light of the description, one slip of the pen may have severe consequences. This is particularly the case if some (claimed) embodiments are entangled with other (non-claimed) embodiments in the description and the examining division requires you to disclaim non-claimed embodiment. As the scope of protection is determined by national courts, independently of one another, any amendment to the description may be interpreted in different ways in different countries. After all, the European Patent Convention is only about the examination, grant and validity of patents, not about the scope of protection and the enforcement of patents.

So you will understand that the Board of Appeal considering there is no legal basis for deleting matter from the description, for explicitly excluding mater from "the invention" or to otherwise modify the description following amendments of the claims meets a warm welcome by both applicants and patentees on the one hand and of practitioners on the other hand, European patent attorneys and lawyers alike.

In the case to which the decision relates, the examining division considered that the description related to subject-matter that was broader than that of the (allowable) claims. The applicant failed to comply with a request to limit the description and as a result, the examining division refused the application. As I am an electrical engineer and the applicable patent application is in the field of biotech, I will not go into the substantive details. I have tried to understand this, but I have some colleagues who understand this much better than I do and I may provide a more detailed assessment later, with them. Fortunately, the decision does not go into the details and provides a very general assessment of the case, such that the decision is generally applicable to other fields of technology as well.

The Board of Appeal firstly considers that the main Article over which the examining division has refused the application relates to the claims and not to the description. Article 84 requires the claims to be clear and to be supported by the description - and not the other way around. This means that the examining division may refuse a claim as it would not be supported by the description, but they may not refuse a description because it would not be supported by the claims. Right so, I'd say, Article 84 clearly goes only one way: it is about the claims, not the description.

Second, the Implementing Regulations require that the application discloses the invention such that it can be understood. In view thereof, the Board of Appeal fails to see a reason for requiring that the description be brought in line with the claims intended for grant and to delete parts of the description related to unclaimed subject-matter. However, and there lies the caveat, this applies in the absence of an objection of lack of unity and as a general rule. The Board of Appeal does not mention what may be required if there is an objection of non-unity. I will address this and potential consequences thereof at the end.

Third, the Board of Appeal investigates whether any subject-matter broader than subject-matter of the independent claims would qualify as 'prohibited matter' under Rule 48. Such prohibited subject matter is divided in three categories: "statements or other matter contrary to "ordre public" or morality; statements disparaging the products or processes of any third party or the merits or validity of the applications or patents of any such party (...); any statement or other matter obviously irrelevant or unnecessary under the circumstances."

I think the Board of Appeal has correctly decided that none of Article 84, Rule 43(1)(c) and Rule 48 provide a basis for refusal of a patent application not amended to bring the description in line with the description in line with the claims intended for grant - irrespective of how it is to be brought in line with the claims.

But now for the non-unity caveat, as it seems to be very clear the Board of Appeal deliberately left an opening there by stating that "in the absence of an objection of lack of unity (...), the board fails to see how the above-mentioned provision could be the legal basis for requiring the applicant, as a general rule, to bring the description in line with claims intended for grant, and to remove passages of the description that disclose embodiments which are not claimed." I seriously wonder why the Board of Appeal left this opening - in particular as they do not provide legal basis for this statement. Do they want to leave one opportunity open for the examining division to be able to require the applicant to amend the description?

If the examining division intends to use this opening, we may see an increase of non-unity objections in the near future, unless the examining division dispenses with the requirement to amend the description to conform with the claims intended for grant at all.If this happens, this brings us from the frying pan into the fire: this also means that quite some subject-matter of non-unity claims will not be searched and requires a further search, with payment of additional fees. Not a very attractive option, with the European Patent Office being about the most expensive patent office in the world.

And so I come to the question whether, and if so how, the European Patent Office, as a first instance for examination of patent applications and patent oppositions, will adapt its practice to this decision.

Yes, the first question is whether the European Patent Office will consider this decision when adapting the guidelines. In external guidelines issued March 2021, the section on amending the description following amendments of the claims - section F-IV 4.3(iii) - has been amended substantively and significant additions were made as to how a description is to be amended following such amendments of claims. One of the added parts indicates that subject-matter not claimed is in the description to be literally specified as not being part of the claimed invention. A requirement that has now by a higher instance been determined as being without legal basis and that cannot be a basis for refusal of a patent application when not being complied with.

With a proper sense of legal conscience, the only way for the European Patent Office to proceed is to delete section F-IV 4.3(iii) from the next release of the guidelines. If not, I quite some new (additional) appeal cases aimed at this point. Because changing "invention" to "disclosure" is one thing. But to explicitly indicate that certain text in your application does not fall within the scope of protection of the claims is another issue and is generally three steps too far for any patent practitioner, either European patent attorney or lawyer. And as the substantive work to such appeal on this issue only is fairly limited, I expect quite some applicants to pay that fee for appeal. Unless the European Patent Office is wise and reasonable enough to respect this decision of the Board of Appeal, which I indeed expect of a professional organisation like the European Patent Office.

Another option may be a referral to the Enlarged Board of Appeal, as other Boards of Appeal have in the past ruled in favour of the requirement to amend the description to conform to claims intended for grant, albeit not very explicit.