EPO Guidelines consultation

On 15 April 2022, CIPA’s Patents Committee submitted a response to the EPO’s consultation on the latest version of the EPC and PCT-EPO Guidelines. The response addresses sections F-IV 4.3(iii) and G-II 5.6 of the Guidelines.

Guideline F-IV 4.3(iii) – Description amendments

‘The extent of the protection conferred by a European patent or a European patent application shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims.’

EPC Article 69(1)

1. This interpretation of the claims in the light of the description and drawings is a matter for national Indoing so, they generally apply their own individual doctrines of equivalents or their view of the overall inventive concept. These are not a matter for the EPO. However, amendments to the description dictated by EPO Examinersduring the examination process may have an effect. That is why professional representatives are concerned that over the last couple of years, the EPO’s attitude to such amendments has become very much stricter than it historically has been, perhaps with the unintended effect of fettering the national courts.

2. This is exacerbated by the examination practices of some Examining Divisions. Historically, when requiringamendment of the description, an Examiner might have specified issues which should be considered. But reasonable amendments made by the applicant were generally accepted.

3. Recently, however, this has Examiners have evidently been instructed to be more particular about how the description should be amended. Some even make significant description amendments at the Rule 71(3) EPC stage, without prior consultation, leaving applicants with an awkward decision about whether to disapprove the text proposed for grant. (We note that the original intent was that such Examiner amendments should only be for correcting minor errors about which there was unlikely to be disagreement.)

4. It also leads to a recent disagreement in decisions of the Boards of Appeal:
   • T 1989/18 (Reasons 5) considered that the ‘support’ aspect of Article 84 EPC means simply that ‘the subject-matter of the claim must be taken from the description’;
   • T 1024/18 (Reasons 1.6 to 3.1.10) disagreed, considering that ‘when amendments are made to the claims… the description must be made consistent therewith in the sense that a reader is not presentedwith any information conflicting with the wording of the claims’ (see 3.1.10).

5. This disagreement could only be resolved by the Enlarged Board of However, we do wish tonote that neither case requires or approves the hardening of examination practice described in paragraphs 1–3 above.

6. T1024/18, Reasons 3.1.10, for example, merely refers to the EPO’s longstanding ‘common practice when makingclaim amendments’, not to the recent changes in that practice. The description must be consistent with the claims, in the sense that it does not conflict with their wording.

7. It is perfectly possible to ensure that the description contains nothing inconsistent or conflicting with the claims, without insisting on the deletion of large amounts of disclosure (which the applicant may have many legitimate reasons to want to keep).

8. The previous ‘common practice’ (pre-2021) was that unclaimed subject matter could be retained as part of thedisclosure, provided it was not stated to be ‘of the invention’ or an ‘embodiment’, or similar. So, it was possible to amend references to such subject matter to being merely ‘disclosed’ or ‘described’ (rather than ‘provided’ / ‘of the invention’, etc). This was relatively straightforward to do.

9. The 2021 version of the Guidelines expressly forbade that strategy, resulting in Examiners insisting on (and inserting) explicit statements about things being ‘unclaimed’ or ‘not part of the invention’. While the latest 2022 version has welcome amendments (such as giving applicants the benefit of any doubt), it is still much closer to the2021 version than the previous ‘common practice’, and is unlikely to change the way Examiners approach these issues. Such statements are very unhelpful and could have undesirable and unpredictable consequences.

10. For example, the national courts are free to adopt variable interpretations of what the term ‘invention’ actually means (there is no definition in the EPC). The EPO assumes that the invention equals the literal claimed subject matter, but many countries’ jurisprudence also includes principles such as an overall ‘inventive concept’,doctrines of equivalents, An explicit statement that an embodiment is, for example, ‘not encompassed by the wording of the claims’ fetters the freedom of the national court to decide whether it is or is not.

11. However, we are not aware of any actual instance of a national court, or a third party, being unable to interpret a claim properly (i.e. in accordance with the relevant, applicable, national law and with Article 69 EPC), merely because the description contained some extra disclosure. The EPO should trust the national courts to cope withinterpreting the The judges are perfectly capable of ignoring disclosure in the patent which is irrelevant to the claims. We are also concerned that there is not, and cannot be appropriate training at the EPO for examiners to exercise their judgement on this point. Yet further we do not believe it is possible to point to consistency of practice across national courts such that a description amendment would have common effect in any case.

12. Official statements about the scope of the claims in the European patent could also be invoked by challengers in non-European jurisdictions, e.g. USA, as implying something about the enforceable claim scope Professional representatives need to be mindful of such issues.

13. We would therefore welcome further changes to the Guidelines that recognise these issues. However, they must go hand-in-hand with a change in the instructions and training given to Examiners, reversing the recent hardening of practice.

Guideline G-II, 5.6 – Antibody inventions

We submit there is a significant gap in this section.

Applicants commonly attempt to secure claims for an antibody that ‘cross-competes’ with a reference antibody (such as an exemplified antibody, but sometimes drafted more broadly, which just exacerbates the issue). Even if the reference antibody can be considered inventive, in most if not all cases there is no reason to consider that antibodies that cross-compete with the reference antibody will have the same inventive properties.

Even where the reference antibody’s inventive properties can be attributed to binding to a specific site on the antigen (and hence, for example, preventing the antigen binding to another protein), the fact that antibodies can be large molecules means that steric inhibition permits antibodies to cross-compete even while binding distinct sites on the antigen. Adding claims to cross-competing antibodies is usually just technically unjustified broadening. Examiners often raise objections, but don’t always and these claims can cause considerable problems to third parties. It would be useful to have a section of the Guidelines to point to in third party observations.

This is related to the existing section of the Guidelines on antibodies defined by reference to the epitope (section 5.6.1.6), but it should be explicitly recognised that antibodies that cross-compete don’t need to bind to the same or overlapping epitopes and so the reasons why definition in terms of the epitope can (sometimes) be legitimate don’t apply to cross- competing antibodies.

Date Published: 20 April 2022