It is rare for a Board of Appeal decision to spark widespread interest on (business and/or IP-related) social media. This was different last week, when many patent practitioners enthusiastically posted about T 0056/21 of 04 October 2024.
The headnote of this decision reads:
“In examination of a patent application, neither Article 84 nor Rules 42, 43 and 48 EPC provide a legal basis for requiring that the description be adapted to match allowable claims of more limited subject-matter.”
Some have suggested that T 0056/21 will significantly change the EPO’s practice when it comes to adaptation of the description. This will remain to be seen.
Roche’s IP department and the counsel handling T 0056/21 deserve praise for seeking clarification on this issue. This even more so, as the adaptation of the description appears to be very dear to some examiners in light of the quality discussions. And Board 3.3.04 is to be applauded for reasons of the decision that are not only comprehensive, but are guided by what the drafters of the EPC had in mind when it comes to clarity.
Not everyone reading the various posts on T 0056/21 might be aware of the fact that the same applicant (Roche) has previously pushed this matter to the Board of Appeal. The previous appeal has resulted in T 1989/18 of 16 December 2021. While the latter decision does not have a headnote, the reasoning in points 4-13 of T 1989/18 reaches conclusions similar to those in the headnote of T 0056/21. T 1989/18 did not appear to do much to alter the EPO’s practice as regards the adaptation of the description. Hopefully, Roche (or other applicants) will continuetheir commitment to resolving the question of whether, and if so to what degree, an adaptation of the description to amended claims is required. At least in US proceedings, all IP stakeholders appear to be comfortable working with a description that is not modified in light of claim amendments during prosecution.