5.3. Bringing the description into line with amended claims

In T 977/94 the board decided that if the patentee amended the claims, it was essential that the description be adapted to them, because of its fundamental importance. An invention was only claimable to the extent that it was supported by the description (Art. 84, second sentence, EPC 1973), and the claims were interpreted in the light of the description (Art. 69 EPC 1973). It was thus necessary to check that the essential elements of the invention claimed were also described as such in the description. See also T 300/04, T 1399/17.

In T 295/02 the board found that an inconsistency between a claim and the provisional description was not a valid reason to refuse the application. The inconsistency arose from an amendment in the claims and the appellant was prepared to adapt the description to conform to a definite allowable set of claims.

In T 1808/06 the board recalled that, in order to meet the requirement of Art. 84 EPC that the claims have to be supported by the description, any disclosure in the description and/or drawings inconsistent with the amended subject-matter should normally be excised (see also T 1883/11, T 1252/11, T 237/16). Reference to embodiments no longer covered by amended claims must be deleted, unless these embodiments can reasonably be considered useful for highlighting specific aspects of the amended subject-matter. In such a case, the fact that an embodiment is not covered by the claims must be prominently stated (see also T 987/16). Reference to Art. 69(1) EPC was not an appropriate justification for a less stringent adaptation of the description and in so far misleading as it could be understood to suggest a direct applicability of its contents at the examination or opposition stage. This was clearly not the case as Art. 69(1) EPC related to the scope of protection (see in this chapter II.A.6.3.2). It was only in situations where the removal of inconsistencies was not possible for procedural reasons (e.g. no amendment possible of the granted version) that – purely as an auxiliary construction – Art. 69(1) EPC could be invoked for an interpretation of the claimed subject-matter.

In T 1989/18 the board held that the description could not be relied upon to resolve a clarity issue in a claim, nor could it give rise to any such issue if the definition of the subject-matter in a claim was clear per se. In particular, if the claims were clear in themselves and supported by the description, their clarity was not affected if the description contained subject-matter which was not claimed. Art. 84 EPC could not serve as a legal basis for a refusal in such circumstances. When assessing clarity, Art. 69 EPC was of no relevance since it was only concerned with the extent of protection conferred. In the absence of an objection of lack of unity under Art. 82 EPC, the board failed to see how R. 42(1)(c) EPC could be the legal basis for requiring the applicant, as a general rule, to bring the description in line with claims intended for grant, and to remove passages of the description that disclosed embodiments which were not claimed. A number of decisions have relied on R. 48(1)(c) EPC as a potential legal basis for requiring the description to be adapted to the subject-matter as claimed. However, the board, taking into account the wording and history of R. 48(1)(c) EPC, considered that this provision could not serve as a legal basis for the refusal of an application if the description was not adapted to the claimed subject-matter.

In T 1024/18 the board disagreed with decision T 1989/18. The board recalled that the established case law of the boards of appeal had interpreted the requirement of support by the description as requiring the entirety of the description to be consistent with any claims found to meet the requirements of the EPC. That this was the established case law of the boards could also be gleaned from the explanatory remarks to Art. 11 RPBA 2020 which deal with the case where remittal to the department of first instance is still provided for the purpose of adaptation of the description. The board found that the requirement in Art. 84 EPC that the claims be supported by the description included the requirement that the description be consistent with the claims not only in part but throughout. The board confirmed that when amendments were made to the claims, the description had to be made consistent therewith in the sense that a reader was not presented with any information conflicting with the wording of the claims. It stated that embodiments of the invention which were not consistent with the claims therefore had to be deleted or had to be clearly identifiable to the reader, for example by rewording of relevant passages to indicate that such passages were not, or were no longer, part of the invention. T 1024/18 was followed in T 2378/13, T 2766/17, T 1968/18, T 2293/18, T 2685/19, T 3097/19, T 121/20, T 1516/20.

In T 1444/20 the board observed that nothing suggested that the claims of the main request were not clear in themselves to a person skilled in the art. Moreover, it considered that the claim-like clauses included in the description under the heading "Specific embodiments of the invention" could not be mistaken for claims, since it was evident that they were a part of the description text, and they were not denoted as "claims", either. Thus, there was no reason why the presence of those clauses in the description should affect the clarity of the claims. The board pointed out that if claim-like clauses in the description did not result in a lack of clarity of the actual claims, Art. 84 EPC could not provide the justification for removing them. The board further noted that the entire section "Specific embodiments of the invention" related to the same subject-matter as the claims. Thus, this section provided additional support for the claims in the description, as also required in Art. 84 EPC. Regarding the removal of the "Specific embodiments of the invention" from the description as "redundant" subject-matter, the board followed T 1989/18. It rejected that R. 42(1)(c) and 48(1)(c) EPC provided a legal basis for the obligation to bring the description in line with the claims of the main request, and to remove passages of the description that disclosed embodiments which were not claimed. Confirmed in T 1426/21.

In T 2194/19 the board was of the view that the requirement that the claims are to be supported by the description under Art. 84, second sentence, EPC does not necessarily mean that all the "embodiments" of the description of a patent application have to be covered by the (independent) claims. The board further rejected that R. 42(1)(c) EPC could be the legal basis for establishing such a broad requirement for an adaptation of the description to the claims. In T 3097/19 the board disagreed with the conclusions of T 2194/19 and it considered necessary that embodiments said to be "of the invention" fall within the scope of the claims.

In T 2391/18 the board dealt with an alleged inconsistency between the claims and the description, which was already present in the granted version. Since Art. 84 EPC is not a ground for opposition, the board held that the requested amendment to the description was not "occasioned by a ground for opposition" within the meaning of R. 80 EPC. Moreover, applying the considerations of the Enlarged Board in G 3/14, the board concluded that the claims of the patent could be examined for compliance with the requirements of Art. 84 EPC only when, and then only to the extent that the amendment introduced non-compliance with Art. 84 EPC. See also T 1477/15, T 454/20.

According to the board in T 2178/17, the filing of a description adapted to a set of claims found by a board of appeal to meet the requirements of the EPC does not generally constitute an amendment to a party's appeal case, even less so when, as in the case at hand, the amended description consisted solely of the deletion of the references to no longer existing claims. Therefore, its admittance into the proceedings was not subject to the board’s discretion under Art. 13(2) RPBA 2020. In T 1968/18 however the board held that the filing of an adapted description during the oral proceedings before the board resulted in an amendment of the patent proprietor's appeal case, but at the same time it considered that adapting the description to the claims which were found to be allowable constituted exceptional circumstances within the meaning of Art. 13(2) RPBA 2020. Thus, the board decided to admit the amended description.