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Volume XI, Number 127

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Interesting Developments at the EPO

There are changes at the EPO coming that require the specification to better reflect the allowed claims. In applications in which multiple inventions are disclosed, the new rules seem to be requiring editing the specification in some significant ways. In the case of this application, the term “embodiments” was edited to be used in conjunction with only the allowed claims. The specification in this matter is almost 300 pages and the editing performed was quite expensive. Further edits were made to the Summary and Technical Field to make sure they correspond only to the allowed claims.

To help avoid at least some of these costs, it seems that the term “embodiments” or similar (I am not sure if they view “aspects” or “examples” the same way) should be avoided for applications that will be filed in the EP to save costs for clients.

An explanation from Thomas Franks-Moore at Keltie details:

 

“Amendments to the description just before grant are the subject of an upcoming update to the EPO’s Guidelines for Examination and, while the updated Guidelines have not yet been published, their effects are already starting to be felt in how Examiners approach situations like this. The updates to the Guidelines result in amendments to the description being viewed much more strictly in terms of their correspondence to the claims. While this practice has always existed to a certain extent, the EPO has decided to enforce it more aggressively now. With this in mind, there is now a careful balance to be struck between keeping the Examiner happy without and avoiding making amendments that limit the description too greatly. A summary of some of the changes that might be required to different sections of the document is provided below:

  • The technical field should be amended such that it corresponds with the claims currently on file. This may require a narrowing down of the technical field if the claims have been heavily amended in prosecution of the application, or a removal of references to ‘methods’ if the claims no longer relate to a method, for example.

  • The summary of the invention should also be amended to correspond with the current claims. In particular, care should be taken to remove statements in the summary that present alternatives to features that are essential to the invention, or through amendments to the claims have become essential to the invention. If the European application has had the number of claims reduced significantly, either on entry to the European regional phase or throughout prosecution, it may be safest to delete statements in the summary that do not correspond to the claims currently on file. It may be possible to retain more general statements at the start of the summary if these still apply to the amended set of claims.

  • The description of the figures should be amended to remove use of the term ‘embodiment’ from the description of any figure that does not show an embodiment according to the claims. The EPO views use of the word ‘embodiment’ rather strictly, interpreting it almost as shorthand for the phrase ‘embodiment(s) of the invention’, and so use of the term implies that what is subsequently described or shown falls under the scope of the claims. Care should therefore be taken to only refer to drawings covered by the claims as ‘embodiments’, although safer practice might be to avoid use of the term ‘embodiment’ altogether.

  • In the detailed description, use of the term ‘embodiment’ should again only occur when the product or process subsequently described falls within the scope of the claims. If the term ‘embodiment’ has been used when describing the figures earlier on in the application, it should only be when describing these figures in detail that the term ‘embodiment’ is used. Amendments should also be made to ensure that the description does not present the features of any independent claim as optional. As with the summary of the invention, it may still be possible to include the term ‘embodiment’ in more general description of the invention before the figures are addressed in detail, as long as this part of the description is general enough to still apply to the claims as amended.

It should be noted that the necessary amendments at this stage of proceedings need to be considered on a case-by-case basis, as the interrelation between the allowed claims and the description will be different for each application. For longer applications that cover multiple aspects of an invention, or multiple inventions, this will naturally be more problematic than for shorter, single embodiment cases. A useful guiding principle, however, should be to be incredibly careful about overly liberal use of the term ‘embodiment’ when preparing a specification for filing in Europe.”

Guest post from Schwegman, Lundberg, & Woessner P.A. Attorney Rigel Menard.

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© 2021 Schwegman, Lundberg & Woessner, P.A. All Rights Reserved.National Law Review, Volume XI, Number 35
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About this Author

Warren Woessner, Registered Patent Attorney, Schwegman Lundberg Law firm
Shareholder

Warren Woessner is a registered patent attorney and a founding shareholder of Schwegman, Lundberg & Woessner. His practice focuses on chemical patent law, including biotechnology, pharmaceuticals, vaccines, medical treatments, diagnostics, and biofuels and agricultural chemistry, including related opinion and licensing matters.

Warren received his B.A. in chemistry (1966) from Cornell University, his Ph.D. (organic chemistry, 1971) and his law degree (J.D., cum laude, 1981) from the University of Wisconsin...

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