The European Patent Convention has long required that the description of a European patent application be amended before grant to account for any developments that occur during examination of the application.
For example, applicants are often asked to acknowledge the prior art documents cited during examination in the background description of the application, or to amend any definitions of the “invention” in the description to correspond with the invention defined by the granted claims.
However, recent changes to the EPO’s Guidelines for Examination have placed an even greater emphasis on the requirement for the description of the patent application to be clear what is – and what is not – within the scope of the claimed invention.
Changes to the guidelines
Until now, it has generally been possible to remove inconsistencies between the claims and the description by removing certain terminology, such as the words “invention” and “embodiments”, in relation to features that are not covered by the claims, and instead referring to these features as forming part of the “disclosure”, or as being “examples”.
However, the updated Guidelines for Examination explicitly state that embodiments in the description that are not covered by the independent claims must be deleted, unless they can reasonably be considered to be useful for highlighting specific aspects of the amended claims. If such subject matter is not deleted, then the fact that an embodiment is not covered by the claims must be “prominently stated” (the Guidelines suggest the wording “not covered by the claimed invention”).
What does this mean for applicants?
More care must now be taken when amending the description.
Firstly, if the description does not meet the requirements set out in the Guidelines, then we can expect to receive objections. Indeed, we have already experienced the scenario whereby an additional examination report has been issued, solely to raise objections against the description, because the change to the Guidelines occurred between filing our previous response and the application proceeding to grant.
Secondly, the granted claims, which define the scope of protection afforded by the patent, are interpreted in the context of the granted patent as a whole. It is therefore important to take care when amending the description, because the amendment(s) could alter the interpretation of the claims, and in turn whether the claims can be successfully enforced against infringing products.
How does this change our approach?
In view of these changes to the Guidelines, what was previously a relatively straightforward task, now requires a much more considered approach. Whilst this will take more time, and cost more in the short term, this investment is essential, for example to avoid receiving additional examination reports (which adds more cost in the long term), and to ensure the resulting granted patent is of optimal value.
In particular, these changes to the Guidelines mean that we would generally look to amend the description earlier and more thoroughly throughout examination than before. This is because there will often be a mismatch between what we would choose to keep when asked to bring the description into conformity with the claims, and the amendments an examiner would make when given the same task. If the examiner makes amendments to the description, then we would be required to argue against those changes. By being proactive in making changes to the description early in the examination process, the applicant stands a better chance of their preferred version of the text being allowed.