T 3003/18 - Why the description must be adapted to the claims

Key points

• The EPO frequently requires that the description is amended to be consistent with the claims as granted or as amended in opposition. But why? E.g. the USPTO does not have such a requirement at all (and in fact, US clients may not always know beforehand how strictly this requirement is applied by the EPO).
• In this opposition appeal, the opponent “submitted that these amendments to the description of the patent as granted were not occasioned by a ground for opposition under Article 100 EPC, and that for this reason the amendments were contrary to Rule 80 EPC.”
• The Board: “compared with claim 1 as granted, present claim 1 has been amended to require that the fiber optic connector of the claimed fiber optic plug [is selected from three particular types of connectors], and that this amendment [of the claim] was occasioned by the grounds for opposition of lack of novelty and of inventive step raised under Article 100(a) EPC by the opponents during the proceedings.” The amendments of the description make the description consistent with the amended claim. 
• The Board: “Furthermore, according to Article 101 (3) EPC the amendments to the patent as granted shall meet the requirements of the EPC, and in particular the requirements of Article 84 EPC according to which the claims shall be supported by the description, together with the requirements of Rule 42 (1) (c) EPC according to which the description shall disclose the invention as claimed.” (emphasis added) 
• Rule 42(1)(c) prescribes that “the description shall ... disclose the invention, as claimed, in such terms that the technical problem, even if not expressly stated as such, and its solution can be understood, and state any advantageous effects of the invention with reference to the background art”.
• Article 84, second sentence specifies that “[The claims] shall be clear and concise and be supported by the description.”. The EPO publication of the EPC does not crosslink Article 84 to Rule 42 or vice versa (link). It's the third requirement of Article 84, second sentence, that matters here ('shall be supported by the description'). 
• Article 101(3) specifies that the "the patent and the invention to which it relates meet the requirements of the [EPC]", not that the “the amendments to the patent as granted shall meet the requirements of the EPC”, but perhaps the present Board tries to reflect the holding of G3/14 that “the claims of the patent may be examined for compliance with the requirements of Article 84 EPC only when, and then only to the extent that the amendment introduces non-compliance with Article 84 EPC”
• Upon first reading, the prescriptive part of Rule 42(1)(c) may appear to be the ‘in such terms’ phrase, but the Board leaves out the comma and recognizes an independent requirement that “according to [Rule 42(1)(c)] the description shall disclose the invention as claimed.”
• The 'supported by the description' requirement should of course not be confused with Article 83 EPC or Article 123(2) EPC. 

EPO T 3003/18 -  link



4. Description - Rule 80 and Articles 123(2) and 76(1) EPC

4.1 Amended pages 3 and 4 of the description marked "18:12" correspond to pages 3 and 4 of the description of the patent specification amended as follows:

i) the expressions "according to an embodiment of this invention", "of this invention", and "according to one embodiment of this invention" in the passages in column [0012] and [0014] referring to Fig. 1, 2 and 9 have been deleted; and

ii) the passage in paragraph [0016] reading "[...] depending upon the type of fiber optic connector. Although the fiber optic plug may include a variety of fiber optic connectors including MTRJ connectors, SC-DC connectors, Unicam**TM connectors, SC connectors, LC connectors, and the like, the fiber optic plug 10 of the illustrated embodiment is shown to include an MTP connector by way of example, but not of limitation" has been amended to read "[...] depending upon the type of fiber optic connector, the fiber optic connectors being MTRJ connectors, SC connectors, or LC connectors. The fiber optic plug 10 of the illustrated embodiment is shown to include an MTP connector by way of example, but falling outside of the scope of the claimed invention."

4.2 During the oral proceedings opponent 3 submitted that these amendments to the description of the patent as granted were not occasioned by a ground for opposition under Article 100 EPC, and that for this reason the amendments were contrary to Rule 80 EPC.

The board, first, notes that, when compared with claim 1 as granted, present claim 1 has been amended to require that the fiber optic connector of the claimed fiber optic plug "is an MTRJ connector, SC connector, or LC connector", and that this amendment was occasioned by the grounds for opposition of lack of novelty and of inventive step raised under Article 100(a) EPC by the opponents during the proceedings. Furthermore, according to Article 101 (3) EPC the amendments to the patent as granted shall meet the requirements of the EPC, and in particular the requirements of Article 84 EPC according to which the claims shall be supported by the description, together with the requirements of Rule 42 (1) (c) EPC according to which the description shall disclose the invention as claimed.

In addition, the amendments to the description mentioned in point 4.1 above make clear that only the variants relating to the use of a fiber optic connector of the MTRJ, the SC or the LC type constitute embodiments of the claimed invention, and the amendments only constitute an adaption of the description to claim 1 amended according to the present request of the patent proprietor and according to which "the fiber optic connector [...] is an MTRJ connector, SC connector, or LC connector". Therefore, the mentioned amendments are occasioned and justified by Article 101 (3) EPC, together with the requirements of Article 84 and Rule 42(1)(c) EPC. In addition, none of the amendments go beyond what is required to meet these requirements.

Therefore, the board concludes that the amendments to the description are occasioned by a ground for opposition under Article 100 EPC, within the meaning of Rule 80 EPC, and upon further consideration of Article 101 (3) EPC and the requirements of Article 84 and Rule 42 (1) (c) EPC.

4.4 In view of the above considerations, the board concludes that the description as amended according to the present request of the patent proprietor complies with Rule 80 EPC, under consideration of Article 101 (3) EPC,