Compulsory Amendment of Description and Drawings

EXCO/FR22/RES/002

STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY

www.ficpi.org

Resolution of the Executive Committee

Cannes, France, 25 to 29 September 2022

“Compulsory Amendment of Description and Drawings”

FICPI

, the International Federation of Intellectual Property Attorneys, broadly representative

of the free profession throughout the world, assembled at its Executive Committee at the
World Congress held in Cannes, France, 25 to 29 September 2022, passed the following
resolution:

CONSIDERING

the practice of the European Patent Office (EPO) to require applicants and

proprietors to remove from the description and drawings of European patent applications or
patents (e.g. at the end of opposition proceedings) subject-matter which is not specifically
recited by the claims,

NOTING

that the Guidelines for examination in the EPO (“Guidelines”) allow applicants and

proprietors to either remove from the description and drawings subject-matter which is not
covered by the claims, or to alternatively present such subject-matter not as embodiments of
the invention but as background art or examples useful for understanding the invention, in
order to avoid potential inconsistencies between the claims and the description/drawings
(Guidelines F-IV.4.3(iii)),

NOTING

that there is a critical difference between subject-matter that falls outside the

wording of the claims on the one hand and subject-matter that falls within the wording of the
claims but is not explicitly recited as such in the claims on the other,

NOTING

that, pursuant to Article 69 (1) of the European Patent Convention (EPC), while the

extent of the protection conferred by a European patent or a European patent application
shall be determined by the claims, the description and drawings shall be used to interpret the
claims,

“

Compulsory

Amendment of Description and Drawings”

EXCO/FR22/RES/002

STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY

www.ficpi.org

NOTING

that the practice of the EPO is inconsistent with all of the other IP5 Offices, as well as

the vast majority of the Offices of the EPC Contracting States,

NOTING

that decisions T1444/20 and T1989/18 made clear that no provision of the EPC, not

even Art. 84 EPC, requires to delete or mark subject-matter which is not covered by the claims,
however not followed by decisions T1024/18, T121/20, T2293/18, T2766/17 (as also
mentioned in the Case Law of the Boards of Appeal 2022, II. A. 5, 5.3),

NOTING

that decision T1989/18 supersedes decision T1808/06, which does not contain any

thorough analysis of Art. 84 EPC and justifies the deletion of unclaimed subject-matter only in
view of the guidelines (“to avoid inconsistencies”),

AFFIRMING

that users benefit from harmonisation of practices and procedures at the IP5 and

EPC national Offices,

ACKNOWLEDGING

the position of the EPO in its press release of July 7, 2022 and the reference

to T1024/18, T121/20, T2293/18, T2766/17 and T1516/20, which is confirming the current
practice of the EPO,

WELCOMING

that the EPO has conducted and established various discussions and user

interactions to discuss the topic of adaptation of the description and within these discussions
also the topic of compulsory amendments of descriptions and drawings,

WELCOMING

that the EPO has invited FICPI in the bilateral meeting in July 2022 to prepare

and provide a list of examples, which should be allowable under Article 84 EPC, where no
compulsory amendments of descriptions and drawings are required,

ADVISING

that amendment of the description and drawings can require substantial additional

work by applicants, proprietors and/or their representatives, leading to significant increased
costs,

ADVISING

that the removal of subject-matter from the description and the drawing may

adversely affect the position of an applicant or a proprietor at a later state, in particular in
court proceedings,

“

Compulsory

Amendment of Description and Drawings”

EXCO/FR22/RES/002

STRENGTHENING THE PRACTICE OF THE INDEPENDENT IP ATTORNEY

www.ficpi.org

URGES

the EPO to refrain from requesting the removal of any subject-matter from the

description and the drawings of European patent applications or European patents, provided
that the presence of such subject-matter does not throw doubt on the extent of protection.