Following T 1989/18 according to which the description does not have to be adapted, T 1444/20 approves T 1989/18 and also quotes R 42(1,c) and R 48(1,c).
The decision of the ED
In the communication under R 71(3) the applicant was informed that the division intended to grant a patent whereby pages 29 to 41 of the description were to be deleted.
According to the decision under appeal, the set of claims 1 to 12 met the requirements of the EPC.
The description pages did not contain added subject-matter [Art 123(2) EPC].
However, pages 20 to 28 of the description contained numbered claim-like clauses, and this gave rise to a lack of clarity within the meaning of Art 84.
The applicant’s position
The applicant did not agree with the amendments proposed by the ED and the application was refused.
For the applicant, the embodiments listed on pages 20 to 27 of the description could not be mistaken for claims. They also related to the same subject-matter as the current claims. Hence, there was no reason for objection under Art 84 against this section of the description.
The board’s reasoning
The board held that the numbered embodiments listed on pages 20 to 27 of the description under the heading “Specific embodiments of the invention” cannot be mistaken for claims, since it is evident that they are a part of the description text, and they are not denoted as “claims”, either. Rather, the description refers to them as embodiment, item, immunoassay, method or use.
For the board there is no reason why the presence of the section “Specific embodiments of the invention” in the description should affect the clarity of the claims.
The entire section “Specific embodiments of the invention” relates to the same subject-matter (defined by the same method steps) as the current claims and may be taken to provide additional support for the claims in the description, as also required in Art 84. if they are considered as an additional support they should be expressed accordingly.
According to the decision under appeal (see page 7), the “specific embodiments” recited on pages 20 to 27 of the description belong to different claim categories (immunoassay, method or use) and this must result in either lack of clarity or lack of conciseness.
For the BA, this objection fails simply because Art 84 relates to the claims and not to embodiments mentioned in the description.
The BA relied as in T 1989/18 to R 42(1,c) and R 48(1,c) and considered that neither of those rules can serve as a legal basis for the refusal of the present main request.
The BA criticises the Guidelines
The BA added that the Guidelines for Examination in the EPO (version of 11 November 2019), in point F-IV, 4.4, are inconsistent in that they acknowledge, on the one hand, that claim-like clauses may (or may not) give rise to a lack of clarity, but require, on the other hand, that such claim-like clauses must always be removed.
The board held that if claim-like clauses in the description do not result in a lack of clarity of the actual claims, Art 84 cannot provide the justification for removing them.
We have now a second decision considering that the description does not need to be amended at grant. In both cases we are in presence of the same applicant.
It looks very academic, not to say pedantic, that since the special embodiments are not not denoted as “claims”, clause-like statements could remain in the description. Clause-like claims should not necessarily be deleted, but clearly marked as not being part of the description of the invention.
In opposition (R 80) and limitation adding a new depend claim based on this clauses is not admissible any way, so one can also query the usefulness of such clauses.
If it is for possible litigation at national level in the future, it is not the role of the EPO to cater for all possible amendments or the various way the DoE is applied by national jurisdictions.
Both decisions come from pharma/biotech Boards and are in clear contradiction with the majority case law illustrated for instance by T 1024/18 (3.2.06), T 1399/17 (3.3.09) or T 1941/18 (3.5.02).
According to T 2178/17 (3.2.07), the adaptation of the description is not an amendment of the grounds of appeal relied on by a party and Art 13(2) RPCR20 does not apply.
I will not disguise that I have great sympathy with the boards considering that the description ought to be adapted.
Should the last sentence in Art 84 be deleted, then I would fully agree that the description should not be adapted. But we are not yet there, and the majority line of case law takes rightly this point into account.
How to come out of this divergent case law
One possibility would be for the President to ask for an opinion by the EBA. In view of the policy decision expressed in the Guidelines, I do not expect such an opinion to be required.
As long as there are only two decisions on this topic which clearly go against the long lasting case law, I doubt that boards supporting the latter will refer a question to the EBA.
Art 20 RPBA20 was not applied
It is also worth reminding of the existence of Art 20 RPBA20 which has been sovereignly ignored by both boards.
Both boards might have explained why they considered that the description does not have to be adapted, but the argumentation fails to convince as exemplified by the majority line of case law.
At least the President of the EPO should have been informed of the Board’s decision.
There is nothing in the register to attest this.
A corresponding Art existed already in the RPBA07, so that BA cannot claim they never heard about this Art.
Why are the BA behaving like this? They should at least abide by the RPBA20.
General problem with the BA
With the extremely large discretion offered to the boards by the RPBA20, the fate of an application/patent depends too much on the board dealing with the appeal.
This is neither correct nor acceptable.
Filing an appeal should not boil down to playing lottery with an application/patent.