In advance of their entry into force on 01 March 2021, the European Patent Office (EPO) has published a draft version of the updated Guidelines for Examination. With these changes to the Guidelines, the EPO is looking to align the Guidelines with the most recent case law of the Boards of Appeal.
One change to the Guidelines of significant relevance to all applicants concerns the need to amend the description of a patent application to align with the claims. Whilst there has always been a requirement to avoid inconsistencies between the claims and the description, the EPO has added further requirements to the Guidelines in this March update.
From 01 March 2021, the Guidelines at Part F, Chapter IV, 4.3 (iii) will state:
‘Embodiments in the description which are no longer covered by the independent claims must be deleted (for example if the description comprises an alternative for at least one feature which is no longer covered by the amended claims) unless these embodiments can reasonably be considered to be useful for highlighting specific aspects of the amended claims. In such a case, the fact that an embodiment is not covered by the claims must be prominently stated (T 1808/06).’
Therefore, where an embodiment included in the description does not fall within the scope of the claims, the Guidelines now state that such embodiments should be deleted or ‘prominently stated’ as not being part of the claims. Such a situation may arise, for example, where the claims of a patent application have been reduced in scope during examination.
The Guidelines go as far as to suggest marking embodiments that do not fall within the scope of the claims as ‘not covered by the claimed invention’. Furthermore, the Guidelines also clarify that the use of more generic wording suggesting embodiments within the description but not the scope of the claims are ‘examples suitable for understanding the invention’ will not be acceptable, unless accompanied by an indication of precisely which parts of the description no longer relate to the claims.
Given these changes to the Guidelines, applicants may need to extensively revise the description of an application before patent grant. This change in procedure places an extra burden on applicants who must give any modifications careful thought, especially as the removal of embodiments from the description may limit the scope of the claims given post-grant interpretation.
Of particular concern will be those embodiments that, while not falling within the claims’ literal scope, might be considered to infringe the claim as an ‘equivalent’. Where embodiments are marked ‘not covered by the claimed invention’ in the description, it would be challenging to argue they are infringing equivalents in subsequent litigation.
Finally, Part H, Chapter V, 2.7, of the updated Guidelines now states that if ‘the applicant does not amend the description as required despite being asked to do so, the examining division’s next action will be to issue summons to oral proceedings’. Therefore, summons to oral proceedings may become more commonplace if Examiners are not satisfied with an applicant’s amendment of the description, especially as Examiners now have the convenience of convening any such oral proceedings by videoconference.
If you have any questions regarding these changes to the EPO Guidelines, please get in touch.
