The forthcoming decision of the Enlarged Board of Appeal of the European Patent Office (EPO) deals with the adaptation of the description in the light of the patent claims and their interpretation. Essentially, this concerns the following:
- adaptation of the description: in Germany and before the EPO, it is common practice to adapt the description of a patent application to the patent claims, which is not common practice everywhere in the world. This adaptation is intended to facilitate the interpretation of the claims, in particular before ordinary courts.
- relevance of the description: The description is regularly used by courts to interpret the patent claims. Since 2021, the EPO’s examination guidelines have required that disclosures in the description that do not fall under the patent claims should either be deleted or marked.
- inconsistent practice: The Boards of Appeal of the EPO have different views on the necessity and scope of description adjustments, which leads to uncertainties and a need for clarification
- referral to the Enlarged Board of Appeal: Board T 439/22 referred fundamental questions to the Enlarged Board of Appeal concerning the interpretation of the claims and the role of the description. These questions concern the application of Article 69(1) EPC and the Protocol thereto when assessing patentability and whether definitions in the description should be considered when interpreting the claims.
- significance for practice: The clarification of these questions is crucial as the grant of European patents is not an end in itself and the subject-matter examined must be the same as the subject-matter relied upon by the national courts as a basis for monopoly protection.
The decision of the Enlarged Board of Appeal will therefore have far-reaching effects on the practice of patent granting and the interpretation of patent claims.
MSP will of course inform you as soon as a decision has been made.