27 May - EPO Takes Up Uncertainty as to Adapting Description

The EPO is unique among major patent offices in requiring an applicant to “adapt” the patent disclosure to the claims that have been deemed, after examination or opposition, ready to grant. The EPO requires that the applicant delete from, or otherwise clearly identify, subject matter in the disclosure that is not covered by the claims as amended for grant.

Recent decisions from the EPO Boards of Appeal have gone back and forth on whether there is a legal basis in the European Patent Convention for this requirement. These contradictory decisions, all within the last few months, have created uncertainty as to whether a patent applicant is to comply with the EPO “adaption” requirement or is to argue that the “adaption” requirement goes beyond what an examiner can ask of an applicant. 

The EPO proposes to take up this issue, at least in part, by holding a workshop this June to address the uncertainty and to “provide insight into some of the legal and practical aspects to be considered in relation to the adaptation of the description to the claims before the EPO.” The EPO link to the workshop is at: https://www.epo.org/learning/training/details.html?eventid=14101

Interestingly, the workshop proposes to bring together “experienced EPO examiners and lawyers, members of the Boards of Appeals, national judges and user representatives”, thus adding to the workshop judges from the national courts. This addition of national judges seems to suggest that the adaption requirement is one that the EPO believes impacts the scope of protection of the claims. This of course highlights the importance of this issue to any patent holder interested in enforcing that patent.

We will attend the workshop and, shortly thereafter, provide a report on any developments presented at that workshop.