Onerous EPO Guideline For Description Amendments Remain

In the February edition of the CIPA Journal we reported on decision T 1989/18, published in December 2021, which found there to be no legal basis for refusing an application on the grounds that the description had not been amended in correspondence with the allowed claims.

Now, in recent Board of Appeal decisions (starting from T 1024/18) the decision in T 1989/18 has not been followed and the requirement for amendment of the description in correspondence with the allowed claims is enforced. Unusually, the Board in T 1024/18 was expanded to add two legally qualified members. The conclusions of this five-person expanded Board appear to carry extra weight.

The requirement for description amendments before the EPO is unusual in the context of global patent prosecution. It can place a heavy burden on the applicant and their representative to interpret the scope of the claims and description, a task that has traditionally been reserved for national courts