Amendment of EP descriptions for consistency with claims
It is a well known requirement that the description of an EP patent specification should be in line with the language of the claims, that is the description should not contain statements that are contrary to the claims or might render the claims unclear in any way. Typically, when amending the claims during prosecution, the description needs to be updated to meet this requirement, often leading to significant revision of the text and great cost to the applicant, especially in light of the updated 2021 EPO Guidelines at F-IV, 4.4.
However, in T 1989/18, an EP application had been refused for the single reason that the description had not been brought into conformity with the claims and therefore one of the objections raised by the EPO Examining Division had not been addressed. The primary issue was that the description contained some statements that were broader in scope than the claims.
On appeal though, the Board of Appeal was unable to find any legal basis in the EPC for this requirement. Art 84, Art 69, rule 48(1)(c) and rule 42(1)(c) were all considered as potentially having a basis, but none could be found. As a result, the application was allowed to continue.
Until any further update to the Guidelines, the EPO will undoubtedly continue to ask for the description to be updated in light of changes to the claims, but applicants now have something with which to counter this requirement by way of this recent Board of Appeal case.
In practice, in order to prevent unwanted arguments with an examiner, it may well be wise to continue to make some amendments to avoid the worst inconsistencies, but certainly the need to make unnecessary amendments can be challenged.
