In a keenly-awaited decision (T 0056/21) issued today, Technical Board of Appeal 3.3.04 (Pregetter, Bühler, Luis Alves) has unexpectedly decided not to refer to the Enlarged Board of Appeal questions about the legitimacy of the European Patent Office’s long-standing practice of requiring that the description of European patent applications be amended before grant for consistency with the allowable claims.
This is a controversial area of EPO practice, and a referral to the Enlarged Board of Appeal was widely expected after a preliminary opinion from the Board indicated that it intended to make such a referral.
The Board has, however, held that there is no basis for this requirement in Art 84 EPC, nor in Rules 42, 43 and 48, which have often been cited in support of this practice.
