Many readers will be all too familiar with the EPO’s somewhat draconian approach in relation to description amendments. For the uninitiated, an update to the EPO’s Guidelines for Examination in March 2021 precipitated a significant change in EPO practice in cases where there are perceived inconsistencies or contradictions between the claims and the description, which typically result from the claims having been amended during prosecution. In such cases, the Guidelines now require the description to be amended to address any such issues prior to grant, which can potentially involve quite extensive changes to the description. This quirk of EPO practice is sometimes referred to as “adaptation of the description” or the “description amendment requirement”.
As an example, if claim 1 originally defined an apparatus comprising features A+B, and was then amended during prosecution to claim feature C in combination with A and B (i.e. A+B+C), then the current EPO Guidelines say that the description must be amended to remove any suggestions that feature C might be optional. For instance, statements along the lines of “in some embodiments, the apparatus may comprise C” should either be deleted entirely or amended to simply state “the apparatus comprises C”. However, it is not uncommon for more extensive changes to be needed to satisfy the EPO examiner, particularly when the amended claims now exclude large parts of the original description or drawings. Read more