EPO Guidelines for examination 2021
Adapting the specification to the claims
1. On March 1st, 2021, the Guidelines for Examination 2021 came into effect. Among the changes, the requirements concerning clarity have been revised. This influences the suppression of inconsistencies between the description and the claims before grant. The new approach is already implemented by the Examining Divisions since 2020.
2. The Guidelines state that the following requirements of the description must be met (F-IV 4.3):
- The description must be adapted to the claims in order to avoid inconsistencies between the claims and the description, where parts of the description give the reader the impression that they disclose ways to carry out the invention although, due to amendments to the claims, the embodiments described in these parts of the description are no longer encompassed by the wording of the claims.
- 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).
In particular, it is not sufficient to use generic statements such as "embodiments not falling under the scope of the appended claims are to be considered merely as examples suitable for understanding the invention" without indicating which parts of the description are no longer covered.
In addition, merely changing the wording "invention" to "disclosure" and/or the wording "embodiment" to "example", "aspect" or similar is not sufficient to clearly state that this part of the description does not fall under the scope of the claimed invention. It has to be explicitly specified that this part of the description does not describe part of the claimed invention.
- Similarly, subject-matter in the description excluded from patentability needs to be excised, by rewording the description indicating that it falls under the exceptions to patentability or prominently marked as not being according to the claimed invention.
Further aspects concern prohibition of features required by an independent claim being described in the description as being optional, or deletion of claim-like clauses. These aspects are now explicitly stated in the Guidelines, but correspond to already established practice.
3. In case the description is not brought in line with the claims, despite being requested to do so, the EPO will schedule oral proceedings (H-V 2.7).
4. The updated practice is likely to put an increased burden on the applicants and might impact interpretation of the claims in national infringement proceedings.
This IP Alert is for information purposes only and does not constitute legal advice.