The recent decision in T 0169/20 draws together two threads of Boards of Appeal case law on the relationship between the claims and description of a patent. The decision directly addresses the question of the role of the description in interpreting the language of the claims. The answer to this question has practical consequences, as it is critical to both the question of claim interpretation for patentability and added matter analysis (IPKat) and to the ongoing controversy of description amendments (IPKat).
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| Eating cake |
Claim interpretation and description amendments
The legal basis for description amendments is reliant on an interpretation of the EPC that requires the claims to be necessarily read in view of the description. According to this interpretation, even if the claims are themselves clear, the description of the invention in the specification should be taken into account. If there is a contradiction between how the invention is described in the claims and the rest of the specification, it is argued that a skilled person reading the patent would be confused as to what the invention actually is (see T 1024/18, IPKat).
The Boards of Appeal on the other side of the "description amendment" debate argue that it is the claims that define the invention. Accordingly, if the claims are clear in-and-of themselves, language relating to the invention in the description can and should be ignored. Consequently, if the description defines a term used in the claims in an unusual way, this does not change the normal, clear meaning of the term in the claims. According to this view, language in the description that contradicts the claims can therefore be ignored (see T1989/18, IPKat).
Claim interpretation and catastrophic comma loss
In both of the cases of "catastrophic comma loss" (T 1473/19, T 1127/16), the patentee fell into the inescapable added matter trap following the loss of a single comma in the claims (IPKat). The matter defined by the claims was irreparably broadened by the loss of a comma that changed the meaning of the claims to cover subject matter that did not appear anywhere in the description and thus lacked basis (Article 123(2) EPC). The question on appeal in both cases of catastrophic comma loss was whether the description could be used to interpret the claims to avoid an interpretation of the claims that added matter. The patentees in both cases argued that a skilled person reading the patent would have read the claims in view of the description and interpreted the claims accordingly. The Boards of Appeal in both cases rejected this argument, finding that "[o]nly the claims determine the extent of protection" (T 1473/19, r. 3.16).
Squaring the circle of claim interpretation (T 0169/20)
T 0169/20 directly addresses the issue of claim interpretation. The patent EP2892992 related to a detergent container, and was opposed on the grounds of lack of novelty and inventive step. Claim 1 of the Main Request on appeal related to a "container for a detergent comprising a detergent composition ...the detergent composition having a fluid phase and containing a second container...". The interpretation of this phase was critical to whether the claims could be considered inventive.
The Patentee argued that the claim could only be interpreted as meaning that the second container specified in the claims was contained within the fluid phase of the detergent composition. The Board of Appeal disagreed, and found that there could be another interpretation. The claim did not explicitly specify that the second container had to be contained within the fluid phase. As such, for the Board of Appeal, the claim could therefore be read as including embodiments whereby the second container was contained in a different phase (e.g. solid powder phase) of the detergent.
The question became whether the description could be used to support the patentee's interpretation of the claims, or whether the description should be ignored in view of the clear interpretation of the claims absent any recourse to the description.
The two provisions cited as relevant to interpretation of the claims are Article 84 EPC and Article 69 EPC. Article 84 EPC stipulates that the claims "shall define the matter for which protection is sought, and shall be clear, concise and supported by the description". Article 69 EPC states that "the extent of the protection conferred by [a patent] shall be determined by the claims, but that nevertheless, that the description and drawings shall be used to interpret the claims".
In the present case, the Board of Appeal first resoundly rejected any role of Article 69(1) EPC in claim interpretation for the purposes of evaluating patentability. The Board of Appeal drew the familiar distinction between the "scope of protection" conferred by the claims (Article 69 EPC), and delimitation of the invention by the claim language (Article 84 EPC) (r.1.2.3).
Turning to Article 84 EPC, the Board of Appeal also rejected the argument that Article 84 EPC (or any of the pertinent Rules) provides legal basis for consulting the description if the claims are already clear: "when the wording of a claim is clear for the skilled person, the supporting role from the description is neither necessary nor justified [...]The support of the description should be resorted to only in case of need, since it is the wording of the claims which defines the matter for which protection is sought (i.e. the invention) and it would not be justified to seek help in understanding a subject-matter which is in itself clear.
In the case in question, the Board of Appeal concluded that the language of the claim was clear without recourse to the description, and thus rejected the patentee's construction of the claim language. The claims of the Main Request were therefore found to lack inventive step.
However, it was also the Board of Appeal view that the requirement in Article 84 EPC for the claims to be "supported by the description", also provided basis for the function of the description as "a support for understanding the subject-matter of the claims". Furthermore, for the Board of Appeal, the supporting role of the description "is only possible to the extent that there is a correspondence between the description and the subject matter of the claimed invention, so that the technical explanations in the description can serve to illustrate the meaning of the claimed features and not to limit or modify their scope with respect to what a person skilled in the art would understand when reading them." The Board of Appeal concluded from the supporting role of the description with respect to the claims thus required "the description be adapted to disclose the same invention as the claims [...] as an aid for understanding the claims".
The Board of Appeal was therefore clearly at pains to point out that its rejection of any role for the description in the interpretation of otherwise clear claim language, did not mean that the description should not be amended in line with the claims.
Final thoughts
The decision in T 0169/20 makes an admirable attempt, but in this Kat's view ultimately fails, at reconciling the EPO's description amendment requirement and the recent decisions disallowing recourse to the description claim interpretation in added matter and patentability analysis. The flaw in the EPO's reasoning is crystalised if one considers the case of an unusual definition provided in the description of a common word used in the claims. In such a case, does the definition in the description change how the claims should be interpreted?
According to one line of reasoning in T 0169/20, a definition in the description should have no role in interpreting the claims: "when the wording of a claim is clear for the skilled person, the supporting role from the description is neither necessary nor justified". However, according to the second line of reasoning in T 0169/20, definitions in the description should be amended so as to not contradict the claims. The concern is that the description should be amended so that these contradictory statements do not "modify [the scope of the claims] with respect to what a skilled person in the art would understand when reading them". To this Kat, these two positions appear directly contradictory. Either the language in the description can influence how a skilled person would interpret the meaning of clear language in the claims, or it can not. The EPO can not have its cake and eat it.
Reviewed by Rose Hughes
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Thursday, March 16, 2023
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It is unfortunate that the Boards of Appeal keep making up sweeping new principles of claim interpretation based on fairly poor case studies.
ReplyDeleteIn this case, the BoA is right that the claim does not clearly specify that second container is contained within the fluid phase - it can be anywhere within the claimed detergent composition. On the other hand, it is apparent from numerous parts of the description that the second container is contained within the fluid phase, e.g.:
"Preferably the gas comprises air. Alternatively the gas may comprise one or more of nitrogen, carbon dioxide, oxygen or a halogen or an admixture thereof. With the gas content preferably the second container has a lower overall density than the fluid phase. With this arrangement it has been found that a number of advantages are realised. A principle advantage is that it precludes adherence of the second container to the (bottom) of the container. In doing so, in use, the second container is easily extracted from the container and additionally the possibility of residue build-up (by poor or no extraction) is prevented.
A supplementary advantage impacts on the production process. As the second container has a lower overall density than the fluid phase this allows for the filling of the container with fluid and the second container without danger of the presence of the second container causing any overfilling of the container. This would otherwise affect negatively on sealing of the container and soiling of the production machinery."
The BoA could have decided this case on its facts without trying (and failing) to marry up two conflicting lines of case law.
Interestingly, it seems that, had the claim been amended to refer to one or more of the effects of the difference in density, as opposed to just the difference in density itself (Auxiliary Request 1), Claim 1 would have made it clear that the second container had to be in the fluid phase and the outcome would have been different.
And so the Boards go yet further down the rabbit hole!
ReplyDeleteAccepting the reasoning of the Board in T169/20 leads to some perverse conclusions.
For example, consider the situation where a non-claimed invention is defined using one or more terms for which the description provides mandatory, "unusual" and narrow definitions. Now consider what the consequence might be of introducing a claim to that invention without including the "unusual" definition(s) in the claim.
According to the reasoning in T169/20, the new claim (even if its wording precisely matched that of the embodiment disclosed in the description) would:
(a) add subject matter if the wording of the claim was clear on its own; but
(b) not add subject matter if the criteria for interpreting the claim in the light of the description were satisfied.
However, the main problem with this conclusion is that the criteria mentioned in (b) would require the EPO to perform arguably subjective assessments (see, for example, "necessary to understand the claim", "including the definition of the unclear feature would prejudice the readability of the claim" and "the definition of the unclear feature should be readily recognisable in the specification").
Relying upon subjective assessments to determine whether subject matter is clearly and unambiguously disclosed is hardly the most sensible corner into which the EPO could have painted itself.
The Board's reasoning regarding the role of Art 84 EPC also seems to be self-contradictory in places.
Regarding "supported by the description", the Board opines that:
"the wording of this provision explicitly limits the role of the description to an aid for understanding the subject-matter to be assessed under patentability, while implicitly confining this role to the exceptional cases where such support is both necessary and possible".
However, having concluded that "The support of the description should be resorted to only in case of need", the Board then opines that:
"this support is only possible to the extent that there is a correspondence between the description and the subject matter of the claimed invention, so that the technical explanations in the description can serve to illustrate the meaning of the claimed features and not to limit or modify their scope with respect to what a person skilled in the art would understand when reading them".
In other words, the Board would have us believe that the "support" requirement means that: (1) only in selected cases can the interpretation of the claims be affected by the description; but
(2) in all cases there must be strict correspondence between the claims and the description, to avoid the latter modifying the skilled person's interpretation of the former.
It does not take a genius to spot the inconsistencies between these two points.
Good stuff, Rose, thanks. Your reference to eating cake set me thinking.
ReplyDeleteThe Board flags up a point which to me is important and can serve to justify the EPO's harsh line on "conforming" the description. See the Decision at para 1.3.3 and its mention of a patentee getting a reward for deliberately ambiguous drafting. So, it is not just the EPO that wants its cake and to eat it too. So do those zealous lawyers who love bifurcation of the claim into a narrow meaning when defending against validity attacks and a wider one when pursuing infringers. Perhaps we can all agree, that this form of cake eating is something to be discouraged, starting at the EPO.
When trying to square the circle in the area of claim interpretation "in the light of" the description, I wonder whether the doctrine of "insolubly ambiguous" in US case law (no longer in fashion over there though) has a role to play. What I mean is, to divine what is the subject matter of the claim, you take the claim as it is. it is permitted to turn to the description ONLY when the claim, to the skilled reader, is insolubly ambiguous. These will be rare cases, right?
https://patentlyo.com/patent/2013/09/is-insolubly-ambiguous-the-correct-standard-for-indefiniteness.html
Poor Art. 84 EPC. Such a short provision, yet the EPO makes it do such heavy lifting!
ReplyDeleteWell is it really a contradiction? The claims are central and decissive. If a claim is clear in itself, you cannot use the description to interpret it. If the description is not clear in view of the claims (e.g. by a contradiction), it has to be amended, as otherwise, the description does not support the claims.
ReplyDeleteYes, there is a contradiction. It relates to the situation where the claims are clear in themselves. In that instance, the Board:
Delete- would not permit the description to be used to interpret the scope of the claims; but
- would nevertheless take the position that the description could modify the skilled person's interpretation of the claims ... and so needs to be brought into strict compliance with the claims.
In other words, depending upon whether it was considering claim scope (eg for added matter or novelty purposes) or support by the description, the Board would take contradictory positions on the issue of whether the description can be used to interpret the claims.
A84 does not require the description to be clear in view of the claims. The word support in A84 does not imply there must be a one-to-one relationship between the claims and the description. Can a description support multiple different independent claims? Can a bridge support multiple different cars? Can you support multiple different sports teams? As SG says, the meaning of A84 has been stretched by the EPO.
DeleteOskar, what disturbs me about your comment is its supposition that either something is "clear" or it is not. No claim ever written has been 100% "clear (although chem/bio probably comes closest and mech eng the most problematic). Lawyers will always find an argument that the degree of clarity in the claim in view is less than 100%. Clarity is one of those things that is approached asymptotically. Quite different in character from patentable novelty. Is not that why Art 84 was excluded from availability to opponents for vlidity attacks? There would never ever be an opposition that did not include an Art 84 attack on the claims.
DeleteInstead, clarity should be acknowledged by EPO ED's (and TBA's) when synthetical propensity says that the claim is "clear enough" to be fit for purpose.
I prefer my "insolubly ambiguous" test. There will be such claims, from time to time. But not often. And when they present themselves, the ED should object to them under Art 84, EPC.
For what it is worth I agree with MaxDrei' remarks on this. The underlying problem with the EPO appears to be a determination to find fault with the patent or application in suit if at all possible, rather than to accept that a claim and associated description can be understood to define a new and inventive invention:" Part I – General and institutional provisions
ReplyDeleteChapter I – General provisions
...
(3)The task of the Organisation shall be to grant European patents. This shall be carried out by the European Patent Office supervised by the Administrative Council. The ED and TBA seem to think they are there to find new ways to refuse the grant of patents
I am really struggling to see any contradiction there, the decision simply states that the support by the description can only be used to the extent that there is a correspondence . If a term has a different meaning in the description, the description cannot be used as a support (although it could be used to amend the feature). This does also not seem to imply that all divergences between claims and description should be removed under Article 84 EPC, provided (I guess) that there is no indication that such information relates to the invention... but simply that the divergent parts of the description do not provide a valid support for claim interpretation.
ReplyDeleteIt must be remembered that as doctrine of equivalence becomes increasingly important in litigation in the EPC countries, then what the description says also must be taken into account a lot more (compared to the literal meaning of the claims). Therefore the EPO is performing a vital service to the Courts for making sure the description is in conformity with the claims, and not influencing the equivalence scope in an incorrect manner. Yes, amending the description is tedious, but it does increase certainty of the equivalence scope
ReplyDelete@Santa
DeleteAs confirmed by T169/20, the EPO does not consider Article 69 EPC during examination. It therefore does not determine the scope of protection, let alone what might be considered to be an "equivalent" of the claimed invention. So why would the EPO then take it upon itself to worry about matters concerning application of the Protocol to Article 69 EPC?
Article 69 EPC either applies to examination proceedings or it does not. The EPO cannot have it both ways.
Insisting on application changes, without legal basis (at least according to some boards), that may cost applicants scope in national courts is an utterly shameful state.
DeleteThe EPO does not consider equivalents, as they are in no position to do so.
So, "Santa" I wonder who you are, to make such a statement. A paid shill for EPO management would be my guess. Here's why.
ReplyDeleteThe importance of this "vital service" delivered by the EPO to courts trying infringement actions can be judged by the fact that i) no other Patent Office in the world performs it, even though ii) (nearly) every other Patent Office in the world is under the thumb of the courts of the jurisdiction in which it operates. Where did the EPO get the idea to perform this "vital service" I might ask. Not from anybody outside the EPO Ivory Tower, was it?
I am not a patent judge. But if I were to be, and required to pronounce on the Doctrine of Equivalents, what would help me most would be i) claims that are clear in themselves and ii) enabled over their scope by a specification which is delivers exactly the disclosure it had on the filing date of the patent application. Then I would be able to see clearly, from the B publication, how much scope the Applicant chose to surrender during prosecution at the Patent Office.
That said, I think the EPO is right to i) seek as default a 2-part claim and ii) expand the introductory paragraphs of the specification to include a brief but accurate summary of the prior art most relevant to patentability.
If you think I am wrong, tell us, please, how it is that strict conformity inceases certainty, in the process of DoE. Surely not in the recent widely litigated pemetrexed case which many cite as the reason for EPO intransigence on conformity. You appear to think that it is "a given". Not to me though. And not to most patent litigators either, I suspect.
Dear Max Drei,
DeleteWith due respect to your experience and knowledge, accusing somebody to be a “paid shill for EPO management” is going a trifle too far. Your message would be much more convincing without this accusation.
I would not claim that the EPO is delivering a “vital service” when it insists on the adaptation of the description to the claims, as this is at the very least presumptuous.
If the EPO wants to deliver a “vital service”, it should better react to the criticisms raised by the IPQC about the quality of the patents delivered. But the EPO prefers to deny reality.
The EPO might be the only office requiring a certain tidying of the description to bring it in conformity with the claims, but this is due that it works according to legal provisions which have been decided when the convention was signed and ratified, even after the revision in 2000. Those legal provisions have been interpreted with a large chunk of case law from the BA and the EBA. 3 decisions to the contrary will not change much.
The description is not amended in some countries, within or outside Europe. But then the file prosecution has to be taken into account. What is not acceptable is that people do not want to amend the description, but also not accept that file history is to be taken into account.
Courts in Europe are very reluctant to go into the file history. There is thus only one way to clarify the situation: delete from the description any statements which are in flagrant contradiction with what is claimed. In this respect, I can agree with Rose: you cannot have your cake and eat it.
It is difficult to see in how far the EPO tries to have its cake and eat when it comes to claim interpretation.
DeleteWe are actually in presence of two lines of case law. One could even go as far as to find that they are diverging.
According to the first line of case law the claims have to be interpreted with due regard to the description, and even Art 69(1) is applicable when interpreting the claims in order to assess patentability. As examples of this line of case law, it is possible to quote T 16/87, T 1167/13, T 2773/18 and the more recent T 1473/19.
This first line of case law corresponds to the position of the German Federal Court (BGH). According to its established case law, an interpretation of the patent claim is always required and may not be omitted even if the wording of the claim appears to be unambiguous.
In the decision X ZR 43/13, the GFC added that the principle, that in the event of contradictions between the claim and the description, the claim takes precedence because it is the claim and not the description that defines and thus also limits the protected subject matter. This does however not preclude an understanding of the patent claim from the description and the drawings that differs from that conveyed by the mere wording of the claim.
According to the second line of case law, if the claims are clear on their own there should be no recourse to the description in order to interpret the claims. That claims are never 100% clear, cf. Max Drei, is not at stake here, but looking at a claim with synthetical propensity, should help weeding out interpretations which would never be considered by the skilled person. This is valid not only as far as clarity is at stake, but also when it comes to sufficiency. Next to the present decision T 169/20, it is possible to quote T 197/10, T 1646/12, T 1514/14 and T 2475/18.
Art 69(1) should however be applied in opposition when determining under Art 123(3), cf. T 1279/04.
It would thus be interesting to hear the EBA on the following questions:
1) Should Art 69(1) and its protocol exclusively be used when determining the extent of protection under Art 123(3)?
2) Can Art 69(1) and its protocol be used when assessing the patentability requirements under Art 54, 56, 83 84 and 123(2)?
3) If the answer to question 2 is positive, which conditions should apply?
In view of the developments with respect to the support of the description by the claims, it is possible to consider that T 169/20, does not approve the contrary decisions T 1989/18, T 1444/20 and T 2194/19 according to which the description does not have to be adapted to the claims.
The above considerations do however show that we could end up with problems when it comes to novelty, added subject-matter or validity of the priority, should Art 69(1) and its Protocol be applicable outside the determination of the scope of protection. With a rather “flexible” or even no adaptation of the description to the claims, the situation would be worse.
@Santa
ReplyDeleteI agree with @Maxdrei. It is outside the EPO’s remit to try to interfere with the handling of infringement cases by national courts, and tomorrow by the EPC. This is well established in the case law of the BOAs and I see T 169/20 as a major stride in that it has set the record straight on this issue, by stating that the application of Art 69 by the EPO is exceptional. This removes the « legal certainty » concern which the EPO has put forward to justify its practice of requiring the adaptation of the description after claim amendments.
As to the interaction of the description with the claims, T 169/20 makes it clear what we all know i.e. the description provides information which is necessary for skilled persons (and practitioners) to understand the claims, to make sense of the terms of the claims, understand their interrelations. But this is to be distinguished from the interpretation as referred to in Art 69.
Regarding the Pemetrexed saga, it is of note that there has been a striking unanimity of European national courts as to the outcome. I have elaborated on the subject in a paper I published this week in epi information (but T 169/20 is not discussed as it was published after I wrote the piece).
As previous comments have pointed out, the EPO is isolated in its practice, which is why I have suggested in this paper to include the topic into the scope of the EPO’s « Convergence of practice » programme, with the goal of finding common ground with the European national patent offices.
While there is ample scope to disagree over the extent to which description adaptation should be required, I think we can all agree that the EPO has created a total mess of the situation. The heated arguments that arise this topic are Exhibit A for this.
ReplyDeleteWe now have a situation where if you limit the claims, you have to go back and amend any part of the description that was originally broader. In many cases, this will be permitted - the basis for the description amendments will be the same as the basis for the claim limitation. However, given the often swingeing amendments that are being made the pre-condition of grant, it is inevitable that some of these amendments will be considered to add subject matter.
So while description adaptation is for now just the patent prosecutor's nightmare, we will soon be in a position where no EPO notice of opposition will be complete without a side-by-side analysis of the description as filed and as granted and a 10 page submission from the opponent on why the description amendments add subject matter. What happens then? Can the proprietor reverse them, or would this violate Article 123(3) EPC by broadening the interpretation of the claims, or Article 84 EPC by introducing an inconsistency between the description and the claims. Do we have to delete huge chunks of the description? What impact will this have on Article 83 EPC?
The same will appear in the national courts and in the UPC. So what is a fad introduced by some faceless official in a few versions of the Guidelines will dog patent litigation across Europe for at least the next 20 years.
Nobody will thank the EPO for this.
It is all the more tragic because we all know that this is totally unnecessary. The national courts have decades of experience of interpreting claims which are narrower than the accompanying description and, save for extreme cases, are perfectly competent at arriving at technically sensible interpretations of the claims that take into account the field of technology, the level of understanding of the skilled person, the language of the claims themselves, the teaching in the description, and accepted principles of claim interpretation in other European courts. The EPO does not need to put its hand on the tiller.
Well said.
DeleteIt would be nice if, just once, the EPO would acknowledge the possibility that their practice at least arguably generates legal risks for applicants that accede to demands for "strict" alignment between the claims and the description.
However, listening to and understanding (let alone publicly acknowledging) "contrary" positions does not seem to be within the skill set of the EPO's current management. Exhibit A: the EPO's ridiculously dismissive responses to serious and well-founded concerns regarding the ST.26 conversion requirements for divisionals of pre-July 2022 applications.
Upon reflection, I think that the EPO's contradictory approaches to clarity and support have a simple explanation. That is, it seems to me that the EPO is interpreting the requirement for the claims to be "supported by the description" as referring to:
ReplyDelete(1) support by the whole of the description (see, for example, T1024/18); and
(2) support for the subject matter defined by the wording of the claims.
We can debate the first point until the cows come home. Personally, I am persuaded that the "majority" case law on that point is wrong, and that support is indeed a de minimis requirement (as confirmed, for example, by old case law indicating that the support requirement can be met when the subject matter of an original claim is copied and pasted into the description).
However, I think that it is on the second point where the EPO's approach truly comes unstuck. This is because the "majority" case law on the support requirement seems to demand complete alignment between the description and the claims without stopping to consider precisely which subject matter should be "supported" in the sense of Article 84 EPC.
The three requirements set out in the second sentence of Article 84 EPC (clarity, conciseness and support) simply refer to "the claims". But what does this mean? Is it:
(a) the wording of the claims; or
(b) the matter for which protection is sought (as per the 1st sentence of Article 84 EPC)?
The EPO's approach clearly assumes that the answer is option (a). However, combined with the "support by whole description" approach, this means that the EPO will insist upon certain disclosures of a description either being deleted or marked as "not the invention as claimed" without ever having considered whether those disclosures in fact support the claimed subject matter under option (b).
To my mind, there are good reasons to conclude that option (b) is the correct answer. Of course, interpreting support in the sense of option (b) above would mean considering Article 69 EPC for all (clarity and support) matters under Article 84 EPC. I can therefore understand why the EPO might not want to do that. But having effectively made the decision to leave Article 69 EPC matters to national courts, the EPO should apply the same logic to other matters where Article 69 EPC is clearly relevant ... which include matters of support.
Thank you for all your comments. I'm sorry I don't have the time to respond to each in detail. My comment comes from my experiences in the UK trying to advise clients on equivalence scope. I think we are at the early stages of development of our UK case law on this, but inevitably we need to look at what the description says to see what the technical effect and problem is. I believe when the applicant must make some sort of judgement on how subject matter in the description relates to the allowed claims, it is potentially helpful to third parties. I believe the EPO has an eye on how equivalence scope case law develops across Europe, and probably realises it is its own strict view on added matter that has led to a greater leniency developing on equivalence (i.e. greater scope being allowed) in recent years. The EPO is probably looking to have some influence on how equivalence scope is decided based on its view of technical effect, and potentially one avenue that is being explored is to engineer into the amended description how equivalence should be determined. If I am correct on this, I do think it is helpful to third parties, as I believe 'equivalence' renders infringement scope to be so unpredictable that a lot of work done by the EPO to issue good clear fair claims is undermined.
ReplyDeleteSanta, thank you for your explanation. You are entitled to your opinion. With regard to the current state of case law in the UK, I can certainly sympathise with the difficulty of advising clients upon equivalence scope. However, what you are essentially asking for is for Article 69 and its Protocol to be struck from the EPC.
DeleteWhilst it might increase the challenges that third parties face in determining their FTO, I think that Article 69 and its Protocol serve the important function of balancing certainty for third parties with a fair reward for the disclosure of an invention. In this regard, might I suggest that you instead focus your attention on the question of how UK case law regarding equivalents might (need to) be improved. My own suggestion on that point would be to revert to assessing equivalents based upon the knowledge of the skilled person at the priority date of the patent. What do you think?
Thank you for Proof of the Pudding. I apologise for the briefness of this reply as your comment raises very interesting issues. So just to summarise my previous point, I believe that the EPO does care about how its practices impact on litigation, and will 'behind the scenes' try to change practice and case law to minimise difficulties in litigation, and at this time I believe EPO Board Members and national court judges are probably discussing concerns about unpredictability of equivalence scope and how to fix this (possibly by the way the description is amended). Turning to your comment, in my experience equivalence scope is decided vis a vis the infringement, i.e. it is essentially specific to the infringement in question. Therefore deriving 'better rules' for it is difficult, and it will need to happen by empirical development of case law. So now the question is what experiments to perform in which parts of the system to see if it fixes the unpredictability. Changes to amending the description is a good place to start, as it is essentially 'harmless' in terms of minimal damage to patentee and third parties (and of course provides entertaining case law!). Anyway, that is my opinion on what the powers that be might be doing/considering at the moment. Thank you again
DeleteSanta, thank you for your explanation.
DeleteMy view is that the EPO's "new" description adaptation practice is far from being "harmless" (to patentees). See my detailed comment addressed to Anon below.
In any event, do you not think it odd that the EPO has changed its practice simply in order to "fix" alleged problems with the case law of national courts? Indeed, is this situation not made more absurd by the fact that the alleged "problem" relates to a matter (determining extent of protection, in particular by reliance upon Article 2 of the Protocol to Article 69 EPC) that is not the EPO's concern?
Thank you Proof of the Pudding. All the people making comments are saying interesting valuable things on the relevant legislation and case law. But there are many more factors that come into play as to why patent practice develops as it does. Those factors are not always visible to the public. Judges look at factors such as policy, future consequences of their comments, economic factors, etc, but they say nothing about them in their decision. Everyone's agreed public intentions end up as the Protocol to Article 69, case law, etc. As the comments here demonstrate that is all 'the people on the ground' have to work with, and it must be kept as simply as that to keep the system working (i.e. you cannot look at economic conditions and policy issue whenever you are deciding on added matter in claim 4, for example). You talk about the 'EPO's concerns'. For the EPO to function properly to enhance economic activity, it must have some interaction with those that monitor the effective functioning of the patent system. Those will be informal behind the scenes conversations with national legislators, civil servants, etc. In my comments I am putting forward a suggestion as to what the behind the scenes factors might be. If the EPO ever said this publically it would be criticised for going beyond its remit, and so it would never do so.
DeleteSanta, thank you for your interesting contribution.
DeleteAs one of those "people on the ground", it is hard for me to assess whether "behind the scenes" discussions take place in the manner that you describe. What I will say, however, is that what you describe strikes me as the most plausible explanation that I have yet seen for the EPO's decision to get ultra-strict with their description adaptation practice.
I will also make two further observations, both of which concern the rule of law.
Firstly, even "informal" discussions between (quasi-)judicial bodies and (the minions of) executives or legislatures are capable of breaching one of the most fundamental rule of law principles, namely the doctrine of the separation of powers. Such breaches happen where the discussions lead to agreements, whether informal or otherwise, to interpret the legislation in a particular (and not necessarily legally justified) manner.
Secondly, for such "behind the scenes" discussions to have any practical use, there must also be a breach of another fundamental rule of law principle, namely the independence of the judiciary. That is, whilst the EPO's judiciary may have sympathy with the objective of enhancing economic activity, allowing that objective to influence their decision-making would breach their obligations under Article 23(3) EPC ("In their decisions the members of the Boards shall not be bound by any instructions and shall comply only with the provisions of this Convention").
From a purely practical point of view, I would ask: why is it that it always seems to be the EPO that is put upon to clear up messes made by others (such as legislatures or national courts)? Are the national courts and patent offices not sufficiently biddable in this regard?
A case in point would be the interpretation of Article 53(b) EPC. Applying all of the permissible methods of interpretation to that provision, both the EBA and a (Dutch) national court reached a conclusion that was politically inconvenient for EU politicians. A sensible response to that situation would be either to let the matter play out in the national courts (and, ultimately, the CJEU), or to pass new (EU and/or EPC) legislation. Instead, and purely for the sake of expediency, the EPO's executive and judiciary were pressed upon to cook up a half-baked and distasteful solution.
Whilst the solution ultimately delivered may have relieved the pressure on EU politicians, it has done so at the expense of the rule of law and the legitimacy of the patent system in Europe. With the EPO's description adaptation practice, I see things heading in very much the same direction.
Thank you Proof of the Pudding. Very interesting. Separation of powers exists to the extent it is monitored, and so for human rights issues, etc, yes it does exist in a meaningful way in European institutions. But here we are talking about things which cannot be monitored properly by outside observers. There won't be any monitoring group that will understand how the EPO needs to be separated from other government, EU or judicial bodies, and so there is nothing to stop interference with what the EPO does. Turning to your second point, the EU is gradually bringing the EPO under its influence, and there is nothing the EPO can really do about. So when we see the EPO coming up with 'solutions' to issues that the EU wants sorted out in a particular manner, it is pretty clear where the political pressure is coming from. I won't go into the specific issues of Biotech Directive, etc. Whether or not one agrees with all the policies of the EU Commission it has an ongoing program of 'centralising' all institutions, and the EPO is clearly seen as important within that. The EPC and EPO case law won't be allowed to get in the way of that, and the process will be gradually continue, with the role of national patent offices and national courts diminishing.
DeleteSanta, thank you again for your contribution.
DeleteIt has been evident to me for some time that the EU institutions and governments of EU Member States can be somewhat unreliable when it comes to upholding rule of law principles. Therefore, whilst I have no way of independently verifying what you describe, it would not surprise me to learn that those institutions and governments are prepared to ride roughshod over the rule of law when they think that nobody is watching.
For me, the most important take-home message is that (quasi-)judicial bodies set up under international law seem to be far more susceptible to political interference than equivalent bodies established under national laws. I guess that I should not be particularly surprised if this conclusion turns out to be true. This is because everyone involved will presumably be able to rely upon immunities that apply to international organisations, and so will not fear any blow-back from taking actions that would be clearly unlawful in other circumstances.
I do wonder, however, what the non-EU EPC Member States think about the possibility that the EPO is susceptible to undue influences from EU institutions and governments. The UK government, for example, might be expected to take exception to EU institutions and governments shaping the EPC to their own ends, and by underhand means. The UK IPO has so far proven to be fundamentally supine with regard to such (EU) political interference in the EPC. However, as the reasons for this are not entirely clear, there is no guarantee that even the most generous of cooperation budgets can ensure such docility in the long term.
Thank you Proof of the Pudding. As I've said to MaxDrei in an earlier comment, I believe that 'informal communications' between the EPO and others is a good thing. The EPC and EPO case law cannot provide the necessary dynamism that is needed to keep the patent system 'fit for purpose'. The sad part is that it would be too complex to bring policy matters into case law. Looking into the future and the bigger picture, we live in a rapidly changing world where huge amounts of economic disruption are on the way for reasons such as climate change, bank collapses, etc, but we have a patent system that will not help the resilience of the research community when things become tougher for them.
DeleteAs for the UK IPO it is not given the resources that would allow it to meaningfully influence the EPO. That is to do with how UK governments treat civil servants and government institutions, and end up rendering them close to dysfunctional
I believe that we shall just have to agree to differ on whether "informal" communications between the EPO and EU institutions / governments are, on balance, a good thing. Whilst I can concede that they have their place, I am deeply unhappy about the prospect that those communications might end up with the EPO being pressured to "fix" a perceived problem in the system. Also, the total absence of effective oversight makes the situation far worse, at least from the perspective of democratic accountability / legitimacy.
DeleteFrom a completely pragmatic perspective, I would also point out that the EPO is only one cog (albeit an important one) in a complex system. There will be times when the system needs adjustment to make it run better, or to cope with new developments. However, it is completely implausible that the relevant adjustment can be (or can best be) made by "tweaking" the EPO case law / practice part of the system. Also, over-reliance upon that mechanism of adjustment can lead to legislators becoming too lazy to make adjustments that can achieve far more than even a "dynamic" interpretation of the EPO's case law.
Santa, just to let you know that my last comment inadvertently omitted words from each of the last two sentences. What I meant to say was:
Delete"it is completely implausible that the relevant adjustment can be (or can best be) made only by "tweaking" the EPO case law / practice part of the system. Also, over-reliance upon that mechanism of adjustment can lead to legislators becoming too lazy to make adjustments to the legislation that can achieve far more than even a "dynamic" interpretation of the EPO's case law".
I would also add that, in addition to being horribly undemocratic, relying upon the EPO to adjust its case law and practice in response to perceived economic needs opens up the patent system to (even more) potential abuse by lobbyists.
Rule 28(2) EPC is a case in point. That rule, along with other changes to EPO practice on the patenting of plants and animals, embodied the top item on the 2017 wish-list of the plant breeder's lobbyists. Whether through force of logic and/or other means, those lobbyists managed to get the European Commission, the EU Council and the European Parliament "on side" with their aims and objectives. Whilst that kind of activity is par for the course, what happened next is most definitely not. That is, instead of focusing their efforts on legislative adjustments at the EU level, the Commission and the Parliament pressured the EPO (and its Administrative Council) into passing a new EPC Implementing Regulation.
There are crucial differences between new EU legislation and new EPC Implementing Regulations. With regard to the legislative process, the passing of a new EPC Implementing Regulation involves far less transparency and far less (public) debate. It also eliminates the need for any kind of investigation into the potential (economic) impact of the proposed change. In short, it is a lobbyist's wet dream, as it allows "legislation" to be put into place without having to deal with any inconvenient questions or facts about what it seeks to achieve.
Thank you Proof of the Pudding. I believe far more in the capabilities of EPO Board of Appeal members than legislators, in essence because legislators are too far removed from the system to know how the laws impact on getting and defending a patent. Of course it's good that you disagree. But you are also pushing the problems elsewhere (to legislators etc) when the EPO is best placed to reengineer itself as needed. I hope it will become much more like a Supreme Court in due course with policy issues impacting on everything it does. When the 'Just Patent Law' blog started up, I found it very interesting that it explicitly excluded 'politics' from its remit. Clearly people want to keep patent ideas distinct from other matters. That is understandable, but the 'messiness' of the real world is also very real, and I believe the EPO should be much more involved in the politics and economics of technology.
DeleteSanta, it very much sounds as though you are turned off by the messy realities that are an inescapable feature of democracy and the rule of law, and are instead drawn to the idea of a more ordered EP patent system in which the EPO and its Boards (and presumably also the UPC) become the de facto rulers of some form of benign dictatorship.
DeleteI think that it is fair to say that I have a very different perspective. It is not that I am blind to the problems with getting legislators and supreme courts involved in patent law. Far from it. Indeed, that is the worst possible system that I can imagine ... except, that is, for all of the others.
For example, do you really think that it would be a good idea to hand both legislative and interpretive powers to one body? The separation of powers principle has been developed for a reason, you know. And to hand such powers to an international body comprising unelected and unaccountable individuals who benefit from immunities that render them essentially untouchable? I do not believe that anyone in their right mind would conclude that doing that could possibly end well.
In a further decision, T 821/20, published on 20.03.2023, the board held that it is neither necessary nor justified to interpret the claim in the light of the description.
ReplyDeleteIn this respect the Board cited T 169/20 (points 1.4.3 and 1.5), see above, and T 1127/16, point 2.6. 1), which held that where the claim language is clear and technically reasonable in the underlying technical context, there is no justification for relying on the description to restrict the scope of the claim by excluding interpretations which are both reasonable and technically sensible in the technical context of the patent.
For the board it would be tantamount to rewarding ambiguous claim drafting by allowing the proprietor to rely on the description to narrow the claim's subject matter to his or her liking rather than clarifying the claim's subject matter.
The board did not enter the discussion on the adaptation of the description to the claims, but it can be taken that any discrepancy between the claim and the description should not be interpreted in favour of the proprietor.
It remains that the present decision shows once more that a referral to the EBA in order to clarify the situation whether or not the description is to be taken into account when interpreting claims is highly necessary.
Whether the question of the adaptation of the description to the claims should also be discussed during this referral remains open. A decision on the interpretation of the claims with or without recourse to the description could indirectly give an answer to the question of the adaptation of the description to the claims.
@ Proof of the pudding
ReplyDeleteWhen Proof of the pudding is persuaded that the "majority" case law on adaptation of the description to the claims is wrong, it would be interesting to know which case law he is referring to.
I have strong doubts when he claims that the support requirement can be met when the subject matter of an original claim is copied and pasted into the description.
I refer to T 1039/08 in which the applicants/appellants held that the fact that the description stated that "Aspects of the invention are set out in the accompanying claims" meant that the claims are supported by the description (page 4, third paragraph of the statement setting out the grounds of appeal).
For the board, this purely formal statement does not qualify as a proper description of the claimed subject-matter. The definitions in claim 1 are much more general and, in fact, do not specify any of these aspects. The description therefore does not provide support for a method defined in the general terms of claim 1.
In a more recent decision, T 758/13, the board held that the purely formal support by the description through repetition of the mention of a claimed feature does not meet the requirements of Art 84 for support of the claims.
In an even more recent decision, T 2483/16, the board held that a purely formal support, e. g. a verbatim repetition in the description of a claimed feature, is not sufficient for fulfilling the requirement of support by the description. The board also referred to T 127/02 and T 1048/05.
In T 1694/12, the board reminded that Art. 84 stipulates that the claims must be supported by the description. According to established jurisprudence of the Boards, this requirement means that the subject-matter of the claim must be taken from the description and it is not admissible to claim something which is not described. I would conclude a contrario, that what is described must correspond to what is claimed.
The board added that the requirement of support by the description reflects the general legal principle that the extent of the patent monopoly, as defined by the claims, should correspond to the technical contribution to the art in order for it to be supported, or justified (see T 133/85, OJ EPO 1988, 441). This means that the definitions in the claims should essentially correspond to the scope of the invention as disclosed in the description. In other words, if the claims are restricted, this restriction should appear in the description.
In T 2080/10 the board found no less than three occurrences for lack of support of the claims by the description. For instance, a specific passage in the description did not provide support within the meaning of Art 84 for the broad scope of the claim. Conversely, when the claim is limited in scope, the description cannot contain any statement by which the scope could be extended beyond what is actually claimed.
In T 2196/11, the board held that AR 7 and 8 were not supported by the description. In those AR, a feature which was previously in dependent claim 6 was combined with claim 1 as granted. The description in the patent, § 0006, states which features are provided according to the invention, whereas § 0011 states that the feature which has been introduced from granted claim 6 is merely a feature "according to an additional embodiment" of the invention. Moreover, this feature is in contradiction with the feature referred to in another additional embodiment (see § 0010) which states that the high density zones continuously extend in one (the longitudinal) direction. It is thus evident that even if it were assumed that the claims of the requests 7 or 8 were allowable, the lack of amended description pages which were consistent with the amended independent claim of either request contravenes at least Art 84 according to which the claims should be supported by the description.
What else is there to add?
@Anon
DeleteAs I made clear, I was simply expressing my own opinion. You are welcome to disagree. Indeed, CLBA at II.A, 5.1 outlines the line of case law that you cite to support your view (though I note that it also supports "dissenting" case law that you did not mention, such as T1020/03).
However, you seem to have entirely missed the point of my contribution, which was to discuss precisely what it is in "the claims" that should be "supported by the description".
According to the CLBA:
"Many boards further stress that the requirement for the claims to be supported by the description was intended to ensure that the extent of protection as defined by the patent claims corresponds to the technical contribution of the disclosed invention to the art.
It is a debatable point whether the "technical contribution" principle has much relevance to Article 84, 2nd sentence. This is because it seems to me that this principle has much more to do with Articles 83 and 56 (especially with regard to claim breadth and "plausibility"). I would also vigorously dispute that this principle can be relied upon to turn the plain meaning of Article 84, 2nd sentence on its head, from "what is claimed must be described" to "what is described must be claimed".
Regardless, there is a bigger problem with the Boards' reliance upon that principle to derive a requirement for "strict" adaptation of the description. On the one hand, the Boards espouse a principle based upon correspondence between the "technical contribution of the disclosed invention" and "the extent of protection as defined by the patent claims". On the other, however, the Boards refuse to determine the extent of protection conferred by the claims (as per Article 69 EPC and its Protocol). That disconnect seems to me to cast serious doubts upon the validity of the EPO's description adaptation practice ... and suggests that the EPO would be better off leaving descriptions well alone, or at least not requiring applicants to label disclosures as being either "in" or "out" of a scope of protection that has not been determined.
@ Proof of the pudding
DeleteI certainly did not miss the point of your contribution, which was to discuss precisely what it is in "the claims" that should be "supported by the description". You started by claiming that it is enough to repeat verbatim the claims in order for the description to support the claims. This statement of yours is not correct. See the decisions quoted. You carefully avoided to comment on this point.
You attempt to continue confusing the issues by quoting T 1020/03. This decision is an old decision about first and second medical indications. In this decision, in point 10 of the reasons, the board dealt with the support of the claim by the description in this specific case. At the end of point 10, the board simply stated that Art 84 cannot be invoked to compel an applicant to limit the scope of his claims directed to a first or further medical use if these are considered too broad in comparison with the use disclosed in the description. To conclude that the description does not have to be adapted to the claims is nowhere to be found in this decision and is going a trifle too far.
In CLBA, AII, 5.1, 10th edition 2022, at the beginning of this chapter, it is specified that “the requirement of support by the description means that the subject-matter of the claim must be taken from the description and it is not admissible to claim something which is not described”.
From this statement, I would conclude, contrary to you, that in order to be supported by the description that there has to be a two-way relationship between claims and description. What is claimed has to be described and what is claimed cannot be found in a more generalised form in the description. But this is what you actually would like to do.
It is only further down that comes your quote: “Many boards further stress that the requirement for the claims to be supported by the description was intended to ensure that the extent of protection as defined by the patent claims corresponds to the “technical contribution” of the disclosed invention to the art”.
I fail to see how this statement can be turned the way you turn it. This statement does not allow a different conclusion from the one which can be drawn from the statement at the beginning of the chapter A,II, 5.1. The “technical contribution” in the description has to be commensurate with what is claimed. If the claims are limited during examination, the description cannot give the impression that the “technical contribution” is greater than what is claimed.
Contrary to you, I am of the opinion that "what is claimed must be described" and "what is described must be claimed". When a national court applying Art 69(1) and its protocol defines its own doctrine of equivalents, it is perfectly entitled to do so.
As far as Art 69 is concerned, it is only be applied at the EPO in opposition/appeal on opposition when deciding whether the amended claims comply or not with the requirements or Art 123(3).
Any other application of Art 69(1) and of its protocol during prosecution of an application would water down the very clear line of case relating to what has been directly and unambiguously disclosed in an application/patent or in the prior art. This applies to novelty, added subject-matter as well as identity of invention when it comes to validly claim priority.
It would create a great deal of confusion. That as proprietor you would like to be able to leave some doubts about the extent of protection or disclosure is understandable. That you would not be pleased with this stance when you are a third party or an opponent is also understandable. In other words, you cannot have your cake and eat it.
I have never seen a division of first instance or a board, when requiring to adapt the description to the claims, to come up with requirements relating to the scope of protection that has not been determined.
There has to be a two-way relationship between claims and description, and in spite of three recent decisions to the contrary, it is rightly so. There is not much more to add.
@Anon
DeleteI do not "carefully avoid" the majority case law on description adaptation. It is just that, whilst I disagree with that case law (but instead side with T1989/18), I do not wish to waste any more time discussing arguments for and against the alleged "what is described must be claimed" requirement.
From your most recent contribution, it seems that you are of the view that the description must be aligned with the wording of the claims (as opposed to anything else, such as "the extent of protection as defined by the patent claims"). Is that correct?
In any event, I would ask you to accept as a fact that there are others, such as I, who genuinely, and not due to any sinister motivations, believe that aligning the description in this way can have the effect of preventing national courts from reaching their own conclusions on which embodiments of the original description fall within the extent of protection conferred by the claims.
This is not just because of the Protocol to Article 69. It is because, during examination, the EPO rarely if ever takes the time to weigh (competing) expert evidence and/or detailed arguments upon the meaning of key terms in a claim. Examiners simply do not have the time to consider the wording of the claims in such depth. It is therefore inevitable that, at least on occasion, examiners will inadvertently misconstrue the wording of the claims. (Indeed, there is abundant evidence from the outcomes of opposition proceedings to suggest that it is fairly common for examiners to not fully appreciate the true meaning of certain terms in the claims.) It is also inevitable that, on occasion, neither the applicant nor their representative will spot the fact that the claim has been misconstrued by the EPO.
With the EPO's "old" description amendment practice, such errors, even if commonplace, rarely caused any lasting damage. However, the same cannot be said for the EPO's new practice, which effectively requires all embodiments of the description to be labelled either "the claimed invention" or "not the claimed invention". This is because, if there has been a misunderstanding as to the precise scope of the claimed invention, there is a good chance that at least some of the "in" and "out" labels have been wrongly applied.
So what happens when an embodiment of the description falls within the scope of the claims upon their proper interpretation, but has nevertheless been labelled as "not the claimed invention"? Would a national court ignore the label, or instead treat it as an effective disclaimer of the relevant claim scope? If national courts chose the former option (ie ignoring the label), this would surely make it pointless for the EPO to continue with their efforts on adapting the description. However, if the national courts chose the latter option, this could have disastrous consequences for the patentee (including inadequate reward for their disclosure of the invention and possible invalidity due to the "label" adding subject matter to the description).
With such potential pitfalls from the EPO's "new" practice, I suppose that an important question to answer is whether (in number and severity) those outweigh the potential pitfalls of the EPO's "old" practice. It is too soon for the pitfalls of the "new" practice to have played out in national courts. However, the opposite is true for the "old" practice, which was in place for decades. From this perspective, I am mystified as to what drove the change from "old" to "new". This is because, having searched high and low, I have failed to locate a case where a "wrong" (or arguably unfair) decision of a national court could in any way be attributed to the EPO's "old" practice. I wish I had confidence that things will work out the same way for the "new" practice.
@ Proof of the pudding
Delete@ Proof of the pudding
I never said that you "carefully avoid" the majority case law on description adaptation. You disagree with it, which is your good right.
When confronted with a series of decisions showing clearly that the mere repetition of the claim wording in the description was not to be considered as support under Art 84, 2d sentence, you carefully avoided taking position on this case law.
As usual, you came back with a new series of arguments.
That, at least on occasion, examiners will inadvertently misconstrue the wording of the claims cannot lead to the conclusion, that, in general, the description has not to be adapted to the claims.
To conclude that it is pointless for the EPO to continue with their efforts on adapting the description is a step you would like to see carried out, but cannot be followed with the wording of Art 84, 2d sentence, as it stands, and as it has been considered by a majority of case law.
It is here necessary to remind that the EPO and its boards of appeal cannot be taken responsible for decisions of national courts and vice versa.
National courts are free in their interpretation and can define their own doctrine of equivalents. This does not withhold the EPO to apply the EPC.
I would trust a national court to come to the right conclusion should an ED or an OD have occasionally misconstrued a claim.
@Anon(DXT)
DeleteIf there is anything that I wish to "carefully avoid" it is getting side-tracked on an issue that was not the focus of my contribution. Perhaps with the exception of a few, subtle points, it will not surprise you to learn that I am inclined to disagree with the conclusions of the cases that you cite. However, if divergence from the conclusions of even a long line of "majority" case law makes an interpretation of the EPC "wrong", then someone better tell the EBA that their services are no longer required.
You are clearly convinced that Article 84 EPC requires adaptation of the description, and that any downstream consequences of that practice are not the EPO's concern. Whilst the latter point is in principle a logically defensible position, problems arise when the EPO radically changes its practice, as it has done on description amendments. In such instances, the change in practice is unlikely to gain public acceptance in the absence of a compelling explanation (such as an EBA ruling).
For me, the most compelling interpretations of legal provisions always pay due attention to the purpose served by the provision(s) in question. In my view, such an approach helps to avoid interpretations that, whilst arguably defensible from some perspectives, lead to absurd (or unfair) results that do not satisfy the purpose of the relevant provision(s).
In this regard, and whilst your trust in national courts is admirable, I believe that there are already numerous examples of cases (including the "catastrophic comma loss" case) where an inadvertent error by the ED has, where not spotted by the applicant, led to disastrous downstream consequences. It would therefore be foolish to dismiss or minimise the possible risks stemming from such inadvertent errors. More pertinently, it surely cannot be the (or a) purpose of Article 84 EPC to force applicants to make legally (highly) risky amendments to the description ... at least not without potentially greater legal risks have been identified as arising should the description not be amended.
To be clear, the description adaptation practice I am talking about here is the requirement to delete (or label as "not the claimed invention") those embodiments that the ED believe fall outside of the scope of the claims. For me, such practice is simply unacceptable, for all of the reasons that I have described.
I too trust national courts to reach sensible decisions. And I trust them to reach those decisions without having to be spoon-fed the ED's view on which embodiments of the original description fall within the scope of the claims and which do not.
In a comment it has been alleged that the "majority" case law on adaptation of the description to the claims is wrong. It would be interesting to know which case law is referred to.
ReplyDeleteI have strong doubts when it is claimed that the support requirement can be met when the subject matter of an original claim is copied and pasted into the description.
I refer to T 1039/08 in which the applicants/appellants held that the fact that the description stated that "Aspects of the invention are set out in the accompanying claims" meant that the claims are supported by the description (page 4, third paragraph of the statement setting out the grounds of appeal).
For the board, this purely formal statement does not qualify as a proper description of the claimed subject-matter. The definitions in claim 1 are much more general and, in fact, do not specify any of these aspects. The description therefore does not provide support for a method defined in the general terms of claim 1.
In a more recent decision, T 758/13, the board held that the purely formal support by the description through repetition of the mention of a claimed feature does not meet the requirements of Art 84.
In an even more recent decision, T 2483/16, the board held that a purely formal support, e. g. a verbatim repetition in the description of a claimed feature, is not sufficient for fulfilling the requirement of support by the description. The board also referred to T 127/02 and T 1048/05.
In T 1694/12, the board reminded that Art. 84 stipulates that the claims must be supported by the description. According to established jurisprudence of the Boards, this requirement means that the subject-matter of the claim must be taken from the description and it is not admissible to claim something which is not described.
The board added that the requirement of support by the description reflects the general legal principle that the extent of the patent monopoly, as defined by the claims, should correspond to the technical contribution to the art in order for it to be supported, or justified (see T 133/85, OJ EPO 1988, 441). This means that the definitions in the claims should essentially correspond to the scope of the invention as disclosed in the description. In other words, if the claims are restricted, this restriction should appear in the description.
In T 2080/10 the board found no less than three occurrences for lack of support of the claims by the description. For instance, a specific passage in the description did not provide support within the meaning of Art 84 for the broad scope of the claim. Conversely, when the claim is limited in scope, the description cannot contain any statement by which the scope could be extended beyond what is actually claimed.
In T 2196/11, the board held that AR 7 and 8 were not supported by the description. In those AR, a feature which was previously in dependent claim 6 was combined with claim 1 as granted. The description in the patent, § 0006, states which features are provided according to the invention, whereas § 0011 states that the feature which has been introduced from granted claim 6 is merely a feature "according to an additional embodiment" of the invention. Moreover, this feature is in contradiction with the feature referred to in another additional embodiment (see § 0010) which states that the high density zones continuously extend in one (the longitudinal) direction. It is thus evident that even if it were assumed that the claims of the requests 7 or 8 were allowable, the lack of amended description pages which were consistent with the amended independent claim of either request contravenes at least Art 84 according to which the claims should be supported by the description.
What else is there to add?
Remarkable, I think, how many swimming pools of ink are being used, to debate the pro's and con's of "conforming" the description to the allowable claims. The issue certainly arouses strong feelings.
ReplyDeleteIf I understand it right, the EPO feels duty-bound to insist on strict conformity. Duty, that is, to the infringement courts of Europe, to deliver to them issued patents that their judges can construe accurately, and thus do justice between the parties. The EPO seems to think that unless it delivers a patent free from all ambiguity, the judges will go astray and hand down a defective decision. See pemetrexed, for example, say all those EPO insiders. What more evidence do you want or need? We have to save the judges from themselves, thinks the EPO. We are the experts, with 50 years of experience as opposed to UPC courts, with none.
No wonder the community of patent litigators on these blog threads (both in house and in private practice) are getting so hot under the collar. They are wondering how much experience there is, within the EPO, of adjudicating infringement proceedings.
On that point, I'm thinking of the external members of the EBA. Is it them, whispering in the ear of the EPO? But they are judges, right, not litigators. I think they have no experience of the patenting process. It could be that, well-meaning, they urge the EPO to be tough on conformity, but they have no experience of the consequences of such urgings.
In the USA, there is widespread criticism whenever somebody is appointed to a position where they influence the course of patent law but have no experience of serving clients who are inventors, Applicants or opponents.
Well, folks, "Santa" has set an interesting hare running, hasn't he? Both Proof of Pudding and I now suspect that EPO intransigence on "conforming the description" is the result of huddles between EPO management and unidentified persons who suppose that such conformity is a sine qua non for the efficient administration of justice, going forward, by the new "unified" patents courts of Europe. That, without it, the judges will inevitably go astray.
ReplyDeleteI could never understand why the EPO, in house, should get so worked up and so hot and bothered about strict conformity. After all, i) they themselves are wise enough and experienced enough not to get fooled by the blandishments of cunning advocates of patent owners and their opponents, and ii) it's hard to turn the hugely time-consuming business of insisting on strict conformity into a money-making exercise for the EPO. But if the EPO President has indeed been nobbled by these shadowy outside influencers from Brussels (or wherever) that would explain the "party line" on conformity within the EPO, because it is coming down from the President himself.
I'm beginning to sound like a conspiracy theorist, aren't I?
Fact is though, most every other Patent Office in the world receives its guidance on patent law from the courts who sit in judgement of the administrators at the Patent Office. Only the EPO is free from marching orders delivered by a supervisory court. Wholly free to do what it thinks is needed to safeguard the EPO, after having taken counsel from whatever behind-the-scenes advisers the President chooses to grant access to his left ear.
In short, strict conformity is yet another artefact of the UPCA, isn't it?
I might also add that only international bodies such as the EPO are immune from the legal consequences of breaching the rule of law.
DeleteWith its primary patent granting authority and (soon) primary patent court being established under international law, the EU is now very likely to see "political" influences having a far greater impact upon the development of patent case law and practice. Whilst this might sound like a marvellous prospect to those in the EU's ivory towers, the principles of the rule of law are there for a reason. I therefore do not see this ending well for the EU.
One might even call it "breaking news". On his own excellent blog, IP.Appify, Daniel X.Thomas reports this week on T1093/21, where Applicant Nestle, in "conforming" the description, made unfortunate amendments which resulted in the patent getting revoked. The blog item includes as a comment:
ReplyDelete"A further possible conclusion, would be that it is better not to adapt the description to the claims."
How about that?
Thank you MaxDrei. I just want to put 'on record' that I believe there are good things that emerge from EPO insiders talking to other institutions, whether it's the EU, national courts or government civil servants. Also there are good impacts that the UPC, and its case law, will have on EPO practice. The test of a good patent is how it does in litigation and how it serves the interests of the research community (patentee and also third parties). The more 'feedback' we have in the system which then impacts EPO practice, the better
ReplyDeleteDear Max Drei,
ReplyDeleteI found it only fair to inform about this decision. It does certainly not warrant the label “braking news”.
This decision shows that when the description is adapted, the adaptation has to be correct. No more, but no less.
It would have found it fair if you had not simply picked out what suits your cause.
I have indeed said: "A further possible conclusion, would be that it is better not to adapt the description to the claims."
:
The first conclusion, which you did not quote, is however quite different:
“This decision could lead to the conclusion that when the description is adapted to the claims, the adaptation has to be correct by all means. This is the right approach.”
I have certainly not changed sides!
I further find the last comment as well quite important:
“However, this decision shows once more that a decision of the EBA on whether or not the claims have to be interpreted taking into account the description during prosecution in examination or opposition is urgently needed.”
In my humble opinion, such a referral appears more important to me than a mere referral on the adaptation of the description.
The readers will find the whole report on this decision and an explanation as to how the board came to its decision on the following link:
https://blog.ipappify.de/t-1093-21-interpretation-of-the-claims-adaptation-of-the-description-to-the-claims/
If the only patent expert in the world supporting the new practice of the EPO admits that "it is better not to adapt the description to the claims", I think that the issue is crystal clear.
ReplyDeleteUnfortunately, the EPO is still promoting the new practice but some EPO applicants are already filing national to avoid this issue.
I can imagine that in the next years the ratio European/national will drop significantly (also because of the UPC). Italy has opened the PCT national phase and other European countries might follow (France? Netherlands?).
Daniel, I am sorry that you find my comment less than fair to you. My quote from your blog was intended to attract attention to your blog. My quote begins with the words "A further possible conclusion....". This would arouse the curiosity of the reader, I thought, to find out what other conclusions you mention in your blog item. Readers who take the quote as an admission, that you have changed sides, and have recanted from your position that descriptions have to be conformed, are not very good at assessing evidence, are they?
ReplyDeleteAs to my "cause" I don't have one. I too am (more or less) retired so have no personal axe to grind any more. My blog postings are often deliberately provocative. I want to get others to comment, and to learn from them. As "Santa" says, the more feedback the better. I suppose that also means "the more lobby activity, the better" but, on that, I'm not so sure. Meanwhile, I can relate to both sides of the argument about conforming the description and am deeply curious how the EBA can navigate to an outcome that works.
As to the mischief of picking out for a quote less than the "correct" number of words, you might enjoy a smile to read that Patent Robot has just dubbed you "the only patent expert in the world".
"the only patent expert in the world"..."supporting the new practice of the EPO" ;)
DeleteThe EBA decision G 2/21 reported yesterday in Rose’s post on this blog brings food for
Deletethought concerning the requirement for adaptation of the description. G 1/22 clearly presents the application as originally filed as the cornerstone of inventive step assessment in this statement quoted by Rose :
"A patent applicant or proprietor may rely upon a technical effect for inventive step if the skilled person, having the common general knowledge in mind, and based on the application as originally filed, would derive said effect as being encompassed by the technical teaching and embodied by the same originally disclosed invention."
Bearing this in mind, it appears utterly inconsistent for the EPO to require any substantive adaptation of the description. Such amendments cannot have any effect if the basis for the assessment of inventive step is and remains only the application as originally filed, as strongly emphasised in G 2/21.
Frankly, what is the name of the game for the EPO practice ? Is it to weigh in on the interpretation of claims and the assessment of equivalents by national courts, as acknowledged in T 1024/18 and in the EPO press release of July 2022 ? As pointed out by several previous comments and the established case law of the BOAs, this is outside the EPO’s remit.
Besides, assuming an amendment of the description is effective in the context of judiciary proceedings implies that it has the potential to alter the interpretation of the claims by the court. But this in itself can be held inadmissible new matter by the court (see UK MPP section 76).
MaxDrei and Proof of the Pudding, just to finish off my contribution to this thread I would point to the oral arguments happening at the US Supreme Court in Amgen v Sanofi - see https://ipwatchdog.com/2023/03/27/truth-leaks-justices-struggle-science-sanofi-welcomes-end-functional-genus-claims-amgen-oral-arguments/id=158343/
ReplyDeleteThe questions raised by the judges are seen as naive or lacking scientific and patent expertise, but are important policy matters in terms of what scope of monopoly to give to functional definitions. It's refreshing to see such a public debate on policy on claim scope, though of course it is a little simplistic, etc