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ARTICLE · 05 NOVEMBER 2024

A Rollback On Referral To The EBA Regarding Adaptation Of Description

Jones Day
Jones Day
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The European Patent Office ("EPO") currently requires applicants to adapt descriptions to allowable claims. This practice is risky, expensive, and not clearly grounded in the law.

GlobalIntellectual Property
Olga Bezzubova
Olga Bezzubova
Thomas Bouvet
Thomas Bouvet
Andreas Holzwarth-Rochford
Andreas Holzwarth-Rochford
Gerd Jaekel
Gerd Jaekel
Ping Li
Ping Li
Alastair McCulloch
Alastair McCulloch
Christian Paul
Christian Paul
Dorothée Weber-Bruls
Dorothée Weber-Bruls
Author LinkedIn connections

In Short

The Situation: The European Patent Office ("EPO") currently requires applicants to adapt descriptions to allowable claims. This practice is risky, expensive, and not clearly grounded in the law.

The Result: A technical board of appeal of the EPO ruled that the long-established practice of adapting patent descriptions to the allowable claims has no legal basis in the European Patent Convention ("EPC"), and it rolled back on a potential referral to the Enlarged Board of Appeal ("EBA").

Looking Ahead: In rendering decision T 56/21, Technical Board of Appeal 3.3.04 has produced the most thorough and convincing arguments yet as to why this requirement has no legal basis and should be abandoned by the EPO. This decision is legally binding only on the case concerned but could influence the EBA on related—and precedent-setting—case G 1/24.

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