The EPO has opened its public user consultation on the latest version of the EPC and PCT-EPO Guidelines, which will come into force on 1 March 2023. Users are invited to submit their comments in any of the EPO’s three official languages via an online form by 4 April 2023.

EPO builing in Rijswijk (CC BY 2.0)

The Guidelines for Examination in the European Patent Office  and the Guidelines for Search and Examination at the European Patent Office as PCT Authority are revised every year to bring them into line with current legal and procedural developments. They are primarily aimed at EPO staff, but over the years they have become a much-consulted resource for illustrating the law and practice in proceedings before the EPO to external parties.

Each spring, the EPO invites users to share their views on the latest EPC and PCT-EPO Guidelines in a public online consultation. The input from the survey will form part of the discussions during the 25th meeting of the SACEPO Working Party on Guidelines in May 2023.


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  1. SACEPO is BusinessEurope, large patent applicants.

    European citizens should not be forced to master foreign languages. You cannot force the languages when you participate in a public consultation organized by the European Commission.

  2. It seems that the EPO still has it in for “claim-like” clauses in the description. For situations where such clauses are consistent with the claims, can anyone explain to me which provision(s) of the EPC require the removal of such clauses?

    Looking at the amendments to F-IV, 4.4, it seems that the EPO no longer wishes to (attempt to) justify deletion of such in-scope, claim-like clauses by pointing to Rule 48(1)(c) EPC (“The European patent application shall not contain … (c) any statement or other matter obviously irrelevant or unnecessary under the circumstances”). This is no doubt because a claim-like clause that describes an in-scope embodiment can hardly said to be “obviously irrelevant” or “unnecessary”. Indeed, there are circumstances where retaining such a claim-like clause may be ESSENTIAL, for example where such a clause represents the sole disclosure in the application as filed of the subject matter of the claims.

    However, I am struggling to make sense of what now remains as the EPO’s justification for deleting claim-like clauses:
    “claim-like clauses must also be deleted or amended to avoid claim-like language prior to grant since they otherwise may lead to unclarity on the subject-matter for which protection is sought”.

    Unless I have badly misunderstood Article 84 EPC, I thought that it is only the claims (and NOT the description) that need satisfy the clarity requirement. Also, is it not the case that the claims need to be clear on their own? And in which universe does an IN-SCOPE, claim-like clause cast doubt upon the scope of the claims?

    I have yet to meet a person skilled in the art who has confused claim-like clauses for the claims proper, or been confused by the presence of both in a patent specification. If the EPO is going to base their practice upon the purported existence of such individuals, should they not first take steps to prove that they actually exist?

    Whilst many of us have long been puzzled by the EPO’s rather strained logic on description amendments, their approach to claim-like clauses is bordering on the ridiculous.

    1. I fully agree with your comments!

      Moreover the same EPO Guidelines F-IV, 6.6 suggest to copy the claims (usually by changing “claim” to “example” or “embodiment”) into the description when the description does not fully support the claim: “Where certain subject-matter is clearly disclosed in a claim of the application as filed, but is not mentioned anywhere in the description, it is permissible to amend the description so that it includes this subject-matter.”

      Is there any way for amending the description to include the subject-matter of the claims without religiously copying the claims into the description and without violating Art. 123(2) EPC?

    2. I agree, the much flaunted high-quality of the EPO examiners is mainly reduced to very formal objections like the one you mentioned, or on adaptation of the description, not existing issues with clarity or not supported amendments, etc. made just to upset applicants with little effort and without any real substance behind

  3. The passage in the guidelines about the removal of „claim-like clauses“ relates to the removal of subject matter which is not claimed or no longer falls under the claims. Naturally, there can be no question that „claim-like“ clauses that correspond to the claims do not need to be deleted. On the contrary, one should not forget that Art. 84 is not just about clarity but also about support, i.e. support of the claims in the description. So the wording of the claims should be in the description as well. I agree however that the wording in the guidelines may be misleading if read out of context with the EPC.

    1. I would like to think that no examiner would ever insist upon deletion of clauses that are “in-scope”. Nevertheless, experience teaches me that at least some examiners read F-IV, 4.4 of the GL as requiring deletion / amendment of ALL “claim-like” clauses, INCLUDING those that are “in-scope”.

  4. Dear Concerned Observer,

    If the claim-like clause is such that it represents the sole disclosure in the application as filed of the subject matter of the claims, then there is something wrong with your presentation of the invention in the description.

    If necessity arises, there is no harm under Art 123(2) to incorporate the essential teaching of a claim-like clause into the actual description.

    To my knowledge, claim-like clauses have their origin on the other side of the Atlantic.
    They might be tolerated there, but this is first not a reason for accepting them on this side of the Atlantic.

    The legal basis for not accepting claim-like clauses is to be found in R 42 which defines the content of the description and in R 43 which defines the form and content of claims.

    I fail to see any reference to clause-like claims in the EPC.
    Is this not a good reason not to accept them?

    As the description has to be supported by the claims, cf. Art 84, in which respect do claim-like clauses support the actual claims?

    If for example an independent claim has been limited by incorporating features from a dependent claim or from the description what is the purpose of keeping the originally filed claims as claim-like clauses. I never heard any sound reason for it.

    Even in case of a divisional application they are not useful.

    The EPO is right in requiring deletion of claim-like clauses.

    It is too easy to systematically mix clarity as such, which is one of the criteria of Art 84, from support of the claim, which is a further and distinct requirement of Art 84.

    With due respect, I would thus allow myself to conclude that you have indeed “badly misunderstood Article 84 EPC” in its totality.

    1. With all due respect, I think that you have misunderstood my point. I was discussing the CLARITY requirement. As you have pointed out, this requirement is distinct from the support requirement of Art 84. I am therefore struggling to understand why your comment discusses support for the claims.

      My original comment relates to IN-SCOPE “claim-like” clauses. For the avoidance of doubt, those are clauses that correspond precisely to, or are at least consistent with, the scope of the claims. Frankly, I do not see how the support requirement could be interpreted to mandate the deletion or amendment of such IN-SCOPE (“claim-like”) clauses.

      An “interesting” interpretation of R42, by the way. That rule says precisely NOTHING about which types of clauses represent acceptable definitions of an invention. I therefore fail to see how it is relevant to the present discussion.

  5. Dear Patent Robot,

    I would like to observe that F-IV, 6.6 deals prima facie with dependent claims.

    It is a very old practice to amend the description so that it includes this subject-matter. Indeed it does not offend Art 123(2) to transfer the teaching into the description.

    This is however not a justification for claim-like clauses. I also refer to my reply to Concerned Observer and R 42 and 43.

    1. Thank you, so could you please explain exactly how can I transfer the teaching of dependent claims into the description without using claim-like clauses (“embodiment” instead of “claim”) and without violating Art. 123(2)?

      To make things simple, let’s assume that the decription does not contain anything about the dependent claims.

      P.S.: I am European, not American

      1. Dear Patent Robot,

        If you have filed the claims at the same time as the description and the drawings, then there is no problem as clearly explained in F-IV, 6.6, which I repeat here:

        Where certain subject-matter
        – is clearly disclosed in a claim of the application as filed,
        – but is not mentioned anywhere in the description,
        – it is permissible to amend the description so that it includes this subject-matter.
        Where the claim is dependent,
        – it may suffice if it is mentioned in the description that the claim sets out a particular embodiment of the invention.

        F-IV, 6.6 makes it thus abundantly clear that the recourse to clam-like clauses is superfluous.

        If you have not filed your claims at at the same time as the description and the drawings, then your claims are not part of the original disclosure and have to be vetted under Art 123(2) with resoect to the originally filed description and drawings. In such a situation claim-like clauses are of no help whatsoever as they are prima facie superfluous.

        PS I am European too. My comment was not aimed at any specific nationality or origin of an applicant. It simply states that claim-like clauses have, to my knowledge, found their origin in the US.

        1. So in your opinion the sentence “The dependent claims disclose particular embodiments of the invention.” would satisfy Art. 84 EPC also if the description did not disclose the subject-matter of these claims?

  6. Dear “law sniffer”

    It is a bit easy to bash on examiners. Have you ever asked yourself why examiners are coming up with very formal objections, allegedly not existing issues with clarity or not supported amendments?

    While it is understandable that you can feel upset with such a result, have you ever made an effort and complained about the ever increasing productivity/production targets imposed year after year on examiners?

    Quality at the EPO resumes itself in timeliness. The plan has to be achieved as the budget requires it. If an examiner does not achieve its target he will eventually be dismissed for incompetence. This combined with 5 years contracts and a reduced training time for newcomers going, there is no surprise that examiners simply try to achieve the target. Examiners are also more and more isolated as the upper management does not wish to see all staff turning up every day in the buildings. But the whole action is called “Bring teams together”!

    The quest for plan achievement reminds of Eastern Europe. There also the truth was in the achievement of the plan. If the plan required 100.000 coffee grinders, they were all on the shelves at the end of the year. Whether the coffee grinders were actually capable of grinding coffee was of no importance. In Eastern Europe at the time, consumers were not able to complain.

    In Western Europe it has never been like this. Consumer/clients could complain. However, as long as the “clients” of the EPO do not voice proper concerns about the quality of what is presently delivered, the upper management will consider that everything is wonderful and there nothing to worry about.

    1. @Please chose the right target
      from outside I dont want or have to bother about the reasons behind, we all have our own problems, but if this is the attitude of many examiners (not all!) I can imagine how difficult must be for the upper layers … and in any case I am pleading simply for a shifted focus of the objections or for not doing them, this being rather a gain of your productivity! And avoiding useless argumentations would raise our own too! And be reassured, pressure and yield of performance is higher where I am than where you are, so it cannot be used as an excuse (by anyone!)

      1. Dear Law Sniffer,

        Thanks for your encouraging point of view.
        You have really understood the problem and all the implications.

        Yield of performance is nothing bad as such, but it has to remain reasonable. This is not any longer the case at the EPO.

        Like in most situations, people are adapting to the situation and they play with the system, the same way the system plays with them. What else do you expect?

        You will always find somebody worse or better off than you. The kind of comparison you are making is not helping anyone.

        If you think you could do the job of an examiner much better, why don’t you hire at the EPO? You could then really help in improving the level which is according to you appalling.

        As long as you are not prepared to leave you home country, sever all links with your national system of social care for you and your family, for a work in which you risk being fired at any moment for alleged incompetence, sweeping statements like yours are not welcome. If you are not part of the happy few, you will only get a safe job once you have spent 10 years at the EPO.

        In any case, the situation is not going to improve. Do not forget that the upper management of the EPO is still claiming that the quality of the work delivered is excellent, or at least the best of all IP5 offices. Even at internal level the number of non-conformities of the patents granted with the EPC is at a very high level and does not improve.

        By the way, the best increase in productivity is a search report with only A documents as you need no communication and a direct grant is easy to obtain.
        Any target is then achievable! Is this what you want?

  7. @No need for claim-like clauses
    “something wrong with your presentation of the invention in the description”.

    I beg to differ. The following examples should illustrate why.

    “Claim-like” clauses
    The invention relates to the following embodiments.
    (A) A widget
    (B) A widget according to embodiment (A) further comprising a wotsit.
    (C) A widget according to embodiment (A) or (B) further comprising a thingy.

    “Normal” clauses
    In a first embodiment, the invention relates to a widget.
    In a second embodiment, the invention relates to a widget according to the first embodiment, said widget further comprising a wotsit.
    In a third embodiment, the invention relates to a widget according to the first or second embodiment, said widget further comprising a thingy.

    The subject matter described in the above two examples is identical. However, you will note that the use of “claim-like” clauses can enable multiple embodiments of an invention to be described in a much more concise manner.

    To my mind, this means that “claim-like” clauses are not only useful for describing multiple embodiments, but are positively beneficial in such circumstances.

    Also, given the fact that the above two examples describe IDENTICAL subject matter, it seems to me that forcing applicants to convert the “claim-like” clauses into the “normal” clauses would amount to nothing more than prioritising form over function.

  8. A couple remarks about the revised Guidelines :
    – Recent decision T 1473/19 is a case of (if I may use a medical term) iatrogenic revocation, in which an unfortunate claim amendment brought by the Examining Division at the Rule 71(3) stage (addition of a clause causing ambiguity because of a missing comma) was held new matter by the Board. It should be explicity pointed out in the Guidelines related to Article 84 that the Examining Division must absolutely ensure that amendments to the claims or the description they require from applicant during examination or introduce at the 71(3) stage are not new matter. This is all the more critical as the case law of the EPO is extremely strict in the assessment of new matter, as illustrated in T 1473/19. Another example is the deletion of « substantially » (in e.g. « substantially vertical ») at the 71(3) stage when there is actually no support in the description for a strictly vertical geometry. The EPO’s objective of « timeliness » must never be a « quick and dirty » process. Avoiding iatrogenic revocations should trump any operational efficiency objective imposed on the Examining Divisions.
    – There is a striking contrast in the Guidelines between on the one hand the over-emphasis on inconsistencies between the claims and the description or the ban of such words as « substantially » or « approximately » and on the other hand the scant attention paid to compliance with Article 83 (Guideline F-III 3 is remarkably succinct). Specifically, it is surprising that the revised Guidelines make not mention of recent and important decisions T 161/18 and T 1191/19 of Board 3.5.05 which have held that the lack of information regarding training data in AI cases did not meet the sufficiency requirement. A significant aspect of both cases is that the Examining Division Board had not raised the Article 83 issue.

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