EPO technical board of appeal plans to refer questions to Enlarged Board of Appeal

There has been recent debate about whether the established practice of the EPO to require the description to be amended to excise any matter which is not aligned with allowed claims is in fact based on the European Patent Convention (EPC). A technical board of appeal is now intending to refer questions on this matter to the Enlarged Board of Appeal (EBA) for clarification of the law.

In the case at issue (T 0697/22), the Board of Appeal found that a set of claims, amended versus the granted claims, was allowable under the EPC. However, the amendments that had previously been made to the description, and found by the Opposition Division to be consistent with these claims, were held by the Board not to be consistent. At the oral hearing the Board declined to allow continuation of the proceedings in writing so as to allow the proprietor to file further amendments to the description, and also declined to allow them to file such amendments on the day of the oral hearing. So it then became necessary to know whether amendment of the description to match the amended claims was actually necessary under the EPC. Since the Board held that the case law on this issue is divergent, they concluded that it would be necessary to refer questions to the EBA. Accordingly, they continued the proceedings in writing so as to deal with formulation of the questions.

The Board has now issued a communication stating that it is preliminarily of the opinion that the following questions could be referred to the Enlarged Board of Appeal:

1. If the claims of a European patent are amended during opposition proceedings or opposition-appeal proceedings, and the amendments introduce an inconsistency between the amended claims and the description of the patent, is it necessary to comply with the requirements of the EPC, to adapt the description to the amended claims such that the inconsistency is removed?
2. If the first question is unconditionally answered in the affirmative, which requirement of the EPC necessitates such an adaptation?
3. If the first question cannot be unconditionally answered in the affirmative, what are the conditions under which adaptation of the description is necessary to comply with the requirements of the EPC?
4. Would the answer to these questions change if an inconsistency existed between the claims and the description of a European patent application?

The parties in the case have been invited to respond in writing to these preliminarily proposed questions for referral, and the Board intends to issue its decision on the case in late July.

Details of the procedure can be found on the EPO register.

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