EUROPEAN UNION
February 12, 2025
Decision T56/21 (link) of the EPO Board of Appeal stands as one of the most favorable decisions for patent holders in recent years and comes as a result of decades of controversy, appeals and court battles between the EPO, patent attorneys, applicants and lawyers.
Until now, the EPO was the only one of the world's major patent offices (known as IP5, including also Japan, USA, China and Korea) that required applicants to adapt the description to the allowed claims before issuing the Decision to grant.
The problem with this requirement is that it entails risks for the applicant and increases the technical work needed, which increases costs and total prosecution time.
Furthermore, from our point of view, it implies greater uncertainty for both owners and competitors and forces the applicant, in most cases, to excessively limit the application. That is why we, patent attorneys, as legal representatives of applicants before the EPO, have always been trying to get around this requirement.
Now, this decision, which is more than 90 pages long, goes further in the idea that there are no grounds in the law to request the adaptation of the description.
We remain, however, with an eye on the Enlarged Board of Appeal (EBoA), hoping the outcome of decision G1/24 (oral proceedings scheduled for next month) will bring some light on whether a patent can serve as its own dictionary and how the relationship between claim interpretation and the description and figures of the patent should be addressed.
Let's hope that these decisions finally put this controversy to rest.
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Click here to view EPO Decision T56/21
Click here to view Decision G1/24