SONN Patentanwälte – IP Attorneys

On the adaptation of the description to the claims

The requirement that the claims are to be supported by the description does not necessarily mean that all the "embodiments" of the description of a patent application have to be covered by the (independent) claims, i.e. that all the embodiments must fall within the scope of those claims (EPO Board of Appeal 24/10/2022, T 2194/19, Error correction/TERAYON).

The purpose of the claims to define the matter for which protection is sought imparts requirements on the application as a whole, in addition to the express requirements that the claims be clear, concise and supported by the description. It is an elementary requirement of a patent as a legal title that its extent of protection can be determined precisely. Whether this is the case for a specific patent application (or an amended patent) can only be decided with due consideration of the description. Claims and description do not precisely define the matter for which protection is sought if they contradict each other (EPO Board of Appeal 16/11/2022, T 3097/19, Key word detection/OMRON).