9 Mar 2022

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).

If you would like to discuss the content of this article further, then please contact Tony Smee or your usual Slingsby Partners representative.


Tony Smee


News & insights

20 May 2022

Does new case law contradict (again) the EPO’s position on description amendments?

The decision in T 1989/18 released earlier this year raised hopes that the EPO’s increasingly onerous stance on description amendments might be due to relax, only for subsequent case law (T 1024/18 and T 0121/20) to affirm the EPO’s current position.

Read more

14 Apr 2022

Slingsby Partners engages with design and engineering students at Middlesex University

Slingsby Partners is delighted to have been involved for the second year running in providing pro-bono information and advice for up-and-coming designers and engineers at Middlesex University in relation to intellectual property.

Read more

01 Apr 2022

G1/22 and G2/22 – Entitlement to claim priority

Two questions have been referred to the Enlarged Board of Appeal regarding the entitlement to priority of a Euro-PCT application where the PCT application was filed naming different applicants for different contracting states.


Read more