Introduction
The Technical Board of Appeal 3.3.04 issued Decision T0056/21 regarding European patent application No. 15700545.5, titled "FC-Region Variants with Improved Protein A-Binding." The case addressed a contentious issue in patent prosecution: whether the European Patent Convention (EPC) mandates that the description of a patent application be adapted to match allowable claims. The Board ruled that no legal basis exists under Article 84 EPC or associated rules for requiring such adaptation. This decision provides critical guidance for patent practitioners navigating the interplay between claims and the description.
Summary of the Invention
The application concerns innovations in biopharmaceuticals, specifically variants of the Fc region of antibodies that enhance Protein A binding. Protein A, commonly used in purification processes, binds to the Fc region of antibodies. The invention aims to improve the efficiency of antibody purification by modifying Fc regions to increase binding affinity, thereby optimizing downstream processing in therapeutic antibody production.
Summary of Decision
Key Legal Issues and Arguments
The applicant, F. Hoffmann-La Roche AG, appealed the Examining Division's decision to refuse the application under Article 84 EPC, citing that the description did not align with the allowable claims. The Examining Division argued that:
The description included subject matter beyond the scope of the claims, creating ambiguity regarding the scope of protection.
The removal of non-claimed subject matter was necessary for clarity, citing the Guidelines for Examination.
Repeated or redundant content in the description contravened Rule 48(1)(c) EPC.
The appellant contended that:
Article 84 EPC does not explicitly require adaptation of the description to allowable claims.
The Guidelines for Examination are non-binding and cannot override the EPC.
Aligning the description with claims undermines the purpose of the description, which is to disclose the invention and its technical context, as required by Articles 78 and 83 EPC.
Board’s Findings
The Board upheld the appeal, emphasizing the following points:
Article 84 EPC: While this article mandates clarity and support by the description, it does not explicitly require the removal of content unclaimed in the final set of claims.
Role of the Description: The description serves to disclose the invention sufficiently for a skilled person to reproduce it (Article 83 EPC). Its primary function is not to determine the scope of protection, which is governed by Article 69 EPC and its Protocol.
Legal Precedents: The Board referred to previous decisions, such as G 2/88 and T 162/82, underscoring that adaptations must have a legal basis within the EPC.
The Board concluded that requiring the adaptation of the description to conform strictly to the claims would improperly extend the requirements of Article 84 EPC. It further clarified that the Guidelines for Examination are not binding legal sources and cannot introduce new requirements not supported by the EPC.
Lessons to Be Learned
This decision reinforces key principles for European patent practitioners:
Role of Claims vs. Description: Claims define the legal scope of protection, while the description provides the technical context of the invention. Clear separation of these roles ensures compliance with the EPC.
Limits of Article 84 EPC: Adaptation of the description to align with allowable claims is not a legal requirement under the EPC. Any demand for such changes must be firmly rooted in explicit provisions of the Convention.
Non-Binding Nature of Guidelines: The Guidelines for Examination are practical aids but cannot impose legal obligations beyond the EPC. Practitioners should critically assess demands for description amendments based on these guidelines.
Consistency with Precedent: Citing established case law remains a robust defense against overly strict or novel interpretations of the EPC by examining divisions.
Conclusion
Decision T 0056/21 provides welcome clarity on the relationship between claims and the description in European patent applications. It underscores that applicants are not legally obligated to adapt the description to conform strictly with allowable claims, reaffirming the limits of Article 84 EPC. This decision safeguards the dual roles of claims and descriptions while preserving the integrity of patent prosecution under the EPC.
Contact
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Legal Disclaimer
The information provided in this blog post is for generalinformational purposes only and does not constitute legal advice. The summary and analysis of the EPO case are based on publicly available information and are intended to offer insights into the decision and its implications. This content should not be used as a substitute for professional legal advice tailored to your specific circumstances. For advice related to any specific legal matters, you should consult a qualified attorney.