EPO Guidelines 2022 – Minimal update re amendment of description
The 2022 EPO Guidelines have been released and have been updated, albeit in a very limited way, to soften slightly the EPO’s position on the requirements surrounding amendment of the description.
Section F-IV, 4.3 of the Guidelines, which refers to description amendments, has been extensively re written, but the substance of the guidelines has not changed. It is still a requirement of the Guidelines that “there must not be inconsistency between the claims and the description. Parts of the description that give the skilled person the impression that they disclose ways to carry out the invention but are not encompassed by the wording of the claims are inconsistent (or contradictory) with the claims”. This will continue to require potentially significant revision of the description during prosecution, especially if the claims have been revised.
The EPO have stated that certain embodiments which are not covered by the claims can remain as long as a specific statement identifying those embodiments, such as "Embodiments X and Y are not encompassed by the wording of the claims but are considered as useful for understanding the invention", is included. General statements that do not indicate specific subject matter will now be permitted.
There is, however, a slight relaxation in that “for borderline cases where there is doubt as to whether an embodiment is consistent with the claims, the benefit of the doubt should be given to the applicant” – whether this will in practice result in any lessening of the requirements, only time will tell.
Thus, the changes to the Guidelines will likely have little impact on the increasingly onerous requirement to ensure that the description is updated – if an applicant disagrees with the EPO’s requirements on this aspect of prosecution, then they will need to try to rely on the recent decision in T1989/18 (see here).
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