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Adding matter by amending the description to exclude embodiments (Ensygnia v Shell [2023] EWHC 1495 (Pat))

Rose Hughes Tuesday, August 08, 2023 - added matter, claim interpretation, description amendments, epo, PatKat, Rose Hughes

The recent High Court decision in Ensygnia v Shell ([2023] EWHC 1495 (Pat)) is highly relevant to the ongoing controversy of claim interpretation and description amendments (IPKat). In Ensygnia v Shell, Miss Charlotte May KC (sitting as Deputy Judge in the High Court of England and Wales) considered how a post-grant amendment which added the phrase that certain embodiments "fell outside the scope of the claims", might affect claim interpretation. The Deputy Judge found that this statement changed the natural reading of the claim language in added matter and infringement analysis. The decision in Ensygnia v Shell is a fresh warning, if one was needed, of the substantial risks of description amendments.

Case Background - Ensygnia v Shell

Customer recognition

Ensygnia sued Shell for infringement of their UK patent (GB 2489332 C2). Shell counterclaimed that the patent was invalid. The patent related to a method for identifying whether a user was authorised to access a service. Claim 1 specified a method comprising a user using their phone to scan "a graphical encoded objection" (e.g. a QR code) "displayed on a display of a computing apparatus". The alleged infringement was Shell's petrol station app which allowed registered customers to purchase petrol using their phone and a QR code displayed on a card at the pump.

The Patentee had amended the description and claims of the patent post-grant (Section 27, UKPA). Particularly, the Patentee amended the claims to specify that the "display" of the computing apparatus displaying the e.g. QR code was a "sign". The Patentee also amended the description to state that some of the embodiments and figures were "outside the scope of the claims", ostensibly to bring the description in line with the amended claims (see amended page 22 of the description).

Legal Background: Principles of claim interpretation

Article 69 EPC provides that the extent of protection of a European patent "shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims". The UK courts have interpreted Article 69 EPC as permitting a construction of the claims that takes account of the inventor's purpose as indicated in the description and drawings of the patent. However, purposive construction does not allow an obviously deliberate limitation in the claims to be ignored. Accordingly, as recently summarised by Lord Justice Arnold, the three key considerations for claim interpretation in the UK are 1) the wording of the claim, 2) the context provided by the specification and 3) the inventor’s purpose (InterDigital v Lenovo [2023] EWCA Civ 105).

The UK approach to claim interpretation under Article 69 EPC contrasts with the EPO's approach. Recent Boards of Appeal have emphasised that the description and figures of a patent should only be referred to when the natural meaning of the claim language is unclear (IPKat) (see also the "catastrophic comma loss cases", IPKat).

Construing the claims in view of the description

The Deputy Judge applied the principles of construction to the word "sign" as used in the claims. Ensygnia argued that the "sign" specified by claim 1 related to a non-electronic static sign, and therefore included in its scope the paper QR codes used by Shell. Shell argued that their petrol pump app did not infringe the claim because the "sign" specified in the claim should be understood as being limited to an electronic display on a computer screen.

The Deputy Judge looked to the description and the inventor's purpose to understand how the term "sign" should be understood. Under a natural reading, the Deputy Judge agreed that the sign on a display forming part of a "computing apparatus" would generally be understood to be an electronic one (para. 152). However, the description of the patent had been amended by the Patentee post-grant to specify that a particular embodiment having an electronic display was "outside the scope of the claims". In view of this passage, the Deputy Judge agreed with Patentee's interpretation that the "sign" specified in the claim did not have to be an electronic display. Applying the principles of claim interpretation, the Deputy Judge concluded that "since the patentee has deliberately limited the claim to a display on a sign, this limitation cannot be disregarded even though it conflicts with some of the teaching of the Patent and does not provide all the advantages of the invention that an electronic display would bring" (para. 154).

Added matter & extended protection

Unsurprisingly, Shell argued that the post-grant description and claim amendments added matter and extended the scope of protection of the patent. In the interests of legal certainty, post-grant amendments must not increase the scope of protection of a granted patent.

For the Deputy Judge, the added statement that the embodiments comprising an electronic display were "outside the scope of the claims", was critical to the interpretation of "sign" in the claims as including non-electronic signs: "Without hindsight, I do not think it would even occur to the skilled reader reading this passage in the context of the application as a whole that the invention could be implemented using a sign that is not electronic or which cannot be changed." (para. 177). The Deputy Judge thus agreed with the Defendant that the statement "outside the scope of the claims" added matter to the application as filed and also extended the scope of protection beyond the patent as granted. The Deputy concluded that the patent should thus be revoked for added matter and extended protection.

The Patentee in this case therefore found themselves stuck in an added matter/claim construction squeeze; the claim construction required to cover the alleged infringement (introduced by the Patentee post-grant) was also the claim construction that added matter.

Final thoughts

In this case, the description amendment was critical for claim interpretation. The Patentee had changed the meaning of the claims by the back-door of description amendments. Such an approach is unlikely to be successful in view of the added matter/claim construction squeeze. None-the-less, the Ensygnia v Shell is a timely reminder of the potential danger of description amendments dictated by the patent office.

The EPO Guidelines for Examination currently state that "[a]ny inconsistency between the description and the claims must be avoided if it could throw doubt on the subject-matter for which protection is sought and therefore render the claim unclear". Specifically, according to the Guidelines "[t]he applicant must remove any inconsistencies by amending the description either by deleting the inconsistent embodiments or marking appropriately so that it is clear that they do not fall within the subject-matter for which protection is sought" (F-IV-4.3).

There has been long-standing concern that the description amendments currently required by the EPO based on these Guidelines could affect the interpretation of the claims in doctrine of equivalent analysis. Ensygnia v Shell highlights that including statements that exclude certain embodiments from the scope of the invention may even affect claim interpretation in purposive construction. A difference between interpretation of the claims pre-grant and post-grant may then invalidate the patent for added matter. This danger is further compounded by the different approach taken by the EPO Boards of Appeal and the UK courts to claim interpretation under Article 69 EPC.

We are now awaiting to see if a Board of Appeal will refer the issue of description amendments and claim interpretation to the Enlarged Board of Appeal (EBA) (IPKat). In the meantime, wise applicants will take care with their description amendments.

Further reading

Claim interpretation

Boeing's comma drama: Commas and taking the description into account when construing a claim (T 1127/16) (12 April 2021)
Another case of catastrophic comma loss (T 1473/19): Interpreting the claims in view of the description (16 Jan 2023)
EPO tries to have its cake and eat it on claim interpretation (T 0169/20) (16 March 2023)
Construing the claims to include technical effects mentioned in the description (T 1924/20) (April 2023)
The risk of pre-grant description amendments (T 450/20) (17 July 2023)

Description amendments

Adding matter by amending the description to exclude embodiments (Ensygnia v Shell [2023] EWHC 1495 (Pat))

Reviewed by Rose Hughes on Tuesday, August 08, 2023 Rating: 5

98 comments:

Max DreiTuesday 8 August 2023 at 09:50:00 GMT+1
This case report puts me in mind of The Law of Unintended Consequences.

I understand that the EPO crusade to "conform" the description strictly to the allowable claims was prompted by its unhappiness with the UK Supreme Court's decision (on what amounts to an infringing "equivalent") in the pemetrexed litigation. Somehow the thinking inside the EPO developed into a view that insisting on strict "conformity" would pump up legal certainty, and streamline and shorten court proceedings, in the rare event of a recalcitrant party nevertheless insisting on bringing their patent dispute before a judge.

In the real world, however, the very FIRST thing an accused infringer has always looked at, in a patent granted under the EPC, is whether the Applicant made any amendment at all after the filing date. Why, because there lies a uniquely attractive "pressure point" that can be used like no other, to squeeze a submission out of the patent owner. With its present obsession on strict "conformity" the EPO is multiplying the number of such pressure points and thereby multiplying the complexity and cost of patent disputes, and increasing rather than reducing levels of uncertainty as to the outcome.

Of course one should always construe the claim in the light of the description. That much is a no-brainer, and done all over the world. But other jurisdictions don't insist like the EPO on strict conformity. Instead they take it in their stride, that the description is what Applicant described as their invention on the filing date of the application. That is the "context" relative to which one construes the words chosen by the Applicant to define their invention, the subject of their patent application. The judges want and need to factor that thought in to their analysis of what the duly issued claim shall be deemed to include within its scope of protection. The pemetrexed case might indeed be a good example of claim construction as intended under the EPC. Time will tell.

But anyway, it seems to me that the pemetrexed case fails as justification for the argument that less than perfect "conformity" is the cause of in wrong decisions in court.

It is said that the EPO finds attractive its insistence on strict "conformity" because it is a way to increase EPO profits. I find that puzzling. I should have thought that profit-hungry EPO management might rather prefer dumping the insistence on strict "conformity" and then telling its Examiners that, with this shift, Examiners ought to be able to double the number of case disposals they deliver each year. What do other readers think?
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Max DreiTuesday 8 August 2023 at 10:41:00 GMT+1
Another thought: the cure (by which I mean, strict conformity) is proving to be much worse than the disease (by which I mean judges, in the opinion of persons of influence inside the EPO, going astray on claim construction).
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AnonymousTuesday 8 August 2023 at 10:49:00 GMT+1
As has been pointed out elsewhere, this case is nothing to do with the EPO.

The titile in this article could be more aptly named Proprietor by own free will attempts to contort claim 1 via description amendments after grant to cover infringement asserted.

The proprietor amended claim 1 as granted to include in in its scope a static sign (such as a poster). The description is not helpful to this interpretation so is changed to say an electronic display with sign is outside the scope of the claims.

The proprietor was successful in forcing their interpretation but got burned since application as filed and patent as granted did not support such an interpretation.

Isn’t this the type of gamesmanship we should all want to avoid? If I read the B spec and decide I am safe, I am not going to be happy going to court to defend against a C spec of the type above, even if the claimant loses.

Those against the EPO’s approach (as well meaning as it may or may not be, and legal basis aside) can no longer point to the authority of the claims and dismiss the possibility that a proprietor won’t seriously argue a claimed feature can be wished away in view of the description.

Is there a middle ground where proprietors have the courtesy of telling the public what the rough scope of their invention may be?
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WeiTuesday 8 August 2023 at 11:52:00 GMT+1
Article 69 EPC had no role in this case about a national patent. Only UK law was applicable.
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Brian CroninTuesday 8 August 2023 at 14:18:00 GMT+1
In my view it is the patent attorney’s job, duty and responsibility to defend our client’s interests by writing clear claims with a corresponding description, and to align the description as necessary with the claims.

It’s not the job, and it has never been the job of EPO officials or national Judges to write or amend claims and descriptions. They take no responsibility for this. All they can do is to take decisions to grant or to refuse, based on the claims and descriptions we provide.

In the case under review, the patentee had an unnecessary claim limitation. They tried but failed to avoid the legal consequence that their claim did not cover the alleged infringement, by forcing a claim amendment through a botched amendment of the description. They could alternatively have argued for a claim interpretation to cover the alleged infringement as a technical equivalent. But that approach probably would have failed too, depending on the way the claim limitation came to be limited.

The point is : aligning the description with the claims, as per the recommended EPO procedure is in conformity with the provisions of the EPC. In my estimation, in 9 cases out of 10, genuine alignment of the description will reinforce the patentee’s protection by reducing the risk of later objections. But no applicant/patentee is obliged to align the description. If, to defend its perceived interest, a patentee chooses to maintain an unaligned description or tries to promote an unjustified claim interpretation, that is the patentees’ choice. They will bear the legal consequence.

Some patentees wait for years as the Case Law unfolds, anticipating some advice on how to do their job. But Case Law decisions come several years too late for a patentee who was the victim of a Case Law decision. Moreover, Case Law followers may find that the principle they followed may have changed by the time their case comes up for decision. In summary, the Case Law we made has been promoted by the EPO to simplify and uniformize decisions. It is useful to our profession, but of limited use, as a way of belatedly learning from other patentees’ mistakes.

In my opinion, we, as a profession, are mainly responsible for the success of the EPO because of the quality input we provided for the EPO to take their decisions. But on the downside, waiting for Boards of Appeal to tell us how we should do our job, or how we should have done our job, is probably one of the major causes how and why the profession has been guilty of creating such a hotchpotch of Case Law despite the EPO’s aim for coherency.
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Henri le SageTuesday 8 August 2023 at 18:10:00 GMT+1
There you have it, anyone dealing with the legal aspects of patent infringement in any European jurisdiction could have seen this coming from miles away. Even the SACEPO on the guidelines warned the EPO for the strict rules on amending the description - but the EPO would not listen. Because they do not deal with any legal aspects of patent infringement. They are just stuck in their own bubble.

It is about time the Enlarged Board puts some common sense in this matter, with legal members from national courts (who are available).

Unfortunately, rumour has it that the Technical Boards of Appeal are too afraid to refer, as this would anger some high placed folks with the Office. And that may jeopardise the proposal for a next five year term at the Board. And the President only cares about throughput times and the next inventor of year award.

Sic transit gloria mundi.
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DXThomasTuesday 8 August 2023 at 20:52:00 GMT+1
My position on the adaptation of the description is well known and does not have to be repeated.
In the decision, Point 1 it is stated that the subject of the debate is European Patent (UK) EP 2 489 332 C2. EP 2 489 332 relates to an “Acetabular cup with rotatable bearing” and has no relation whatsoever with GB 2489332 C2 which relates to “Handling encoded information and identifying user”.
In the decision, Point 4 one reads: “The Patent [GB 2489332 C2 and not EP 2489332] was amended post-grant under s.27 of the Patents Act 1977, and so it is the C specification that is relevant. There were amendments to both the description and the claims”.
The problem is thus a British problem and has nothing to do with European practice. It is no more than an academic exercise to attempt applying this British decision to European practice.
I have thus to agree with Anonymous of Tuesday, 8 August 2023 at 10:49:00 GMT+1 or with Brian Cronin.
I said it before, but the whole upheaval about the adaptation of the description, reminds of the early days of the EPO and the upheaval about reference signs in the claims, which were considered limiting by a British court. T 237/84 put an end on the discussion.
Art 69 applies to the application or to the patent. Once the patent is granted, it does not appear prima facie logical wanting to apply Art 69 to the application having led to the grant. Once the description has been amended in order to support the claim, it is difficult to follow that interpretation of the claims becomes then a constantly moving target.
In T 1203/13, it was held that the mere fact that each passage of the description is preceded by a "may" is not sufficient to disclose a combination or generalisation of features. The conclusion is that if everything is optional, nothing is optional. All features ending in the independent claim cannot any longer be considered optional and the description of the patent as to be adapted correspondingly. Where is the problem?
I noted the statement “Where there is doubt, or a lack of clarity, regarding the meaning of that wording we might turn not only to the description but also (at least to some extent) to prosecution history”.
The logical conclusion of this statement is that the description can be left unamended, but then prosecution history has to come into place of the requirement of adaptation of the description under Art 84. But it would still not allow to attempt an interpretation of the claim on the basis of the description as filed. Otherwise taking into account prosecution history would be meaningless.
I would further observe that Actavis and others v Eli Lilly ([2017] UKSC 48, is the famous pemetrexed case. Taking this case as an example is not correct. The pemetrexed case was no more than an attempt to get read of the “Improver” decision.
Max Drei is probably right when he considers that the pemetrexed case triggered the tightening of the requirement of the adaptation of the description. If in the pemetrexed case, the description would have been properly adapted, it is not sure that the conclusions of the UKSC would have been the same. The pemetrexed case should actually be left alone.
Rather than a referral on the adaptation of the description, a referral about the application of Art 69 in EPO’s procedure seem much more useful.
Any referral bears some danger. The answer to the questions by the EBA depends not only from the form of the questions, but also the way those questions are rewritten and/or interpreted by the EBA. G 1/21 is a good example. The referral made no distinction between OP before the first instance and before the BA, and yet, the EBA limited its reply to OP before the BA. One wonders why? It remains that neither Art 116 and R 115 or 116 make any distinction between first instance and BA.
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Rose HughesWednesday 9 August 2023 at 15:49:00 GMT+1
Probably my fault for not expressly stating this in the post, but with regards to the relevance to Art 69 EPC, please may I refer commentators to Section 125(3) UKPA. I also reiterate the point that divergence on claim interpretation under Art. 69 EPC between the EPO and UK is a problem in-and-of itself.
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Max DreiWednesday 9 August 2023 at 21:09:00 GMT+1
Sharp intake of breath, on reading SG's pithy comment on support and Art 84, EPC.

First reaction was that SG's argument deprives of legitimacy the EPO argument that the description has to be "conformed" to each successive prosecution amendment of the claim.

My more considered reaction is that there is still room for people to cling to their obsessively strict view, that Art 84 EPC "support" is present ONLY when there is no inconsistency whatever, between the description the EPO "intends to grant" and the claims in the form they have acquired on their way to allowance. If there is no fair way to get to zero inconsistency, they say, that's just tough luck on the Applicant; it should have done a better job when drafting the patent application. As to whether that attitude inside the EPO squares with the Art 69 command to balance the interests of the inventor with those of the public, reasonable people will likely disagree.
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BluebottleThursday 10 August 2023 at 09:43:00 GMT+1
Readers of a certain age or upbringing might be familiar with the 1950's BBC radio comedy, "The Goon Show". One of many famous bits of dialogue in that series, between the characters Bluebottle and Eccles, went along the lines which I've reproduced below (for a recording see, e.g., https://www.youtube.com/watch?v=ctM_Rvgjfpo).

From time to time, the arguments put forward for the EPO and its supporters in relation to the alleged requirement for description amendments put me in mind of this exchange:

BLUEBOTTLE: What time is it Eccles?
ECCLES: Err, just a minute. I've got it written down here on a piece of paper. A nice man wrote the time down for me this morning.
B: Oh, then why do you carry it around with you, Eccles?
E: Well, if anybody asks me the time, I can show it to them.
B: Wait a minute Eccles, my good man...
E: What is it fellow?
B: It's writted on this bit of paper, what is eight o'clock, is writted.
E: I know that, my good fellow. That's right, um, when I asked the fella to write it down, it was eight o'clock.
B: Well then. Supposing when somebody asks you the time, it isn't eight o'clock?
E: Ah, then I don't show it to them.
B: Oh... Well how do you know when it's eight o'clock?
E: I've got it written down on a piece of paper!

Simply replace references to "time", "eight o'clock" and "written down on a piece of paper" with "interpretation of the claims", "Article 84", and/or "support in the description" as you see appropriate in order to get the same effect.
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HemingwayThursday 10 August 2023 at 11:33:00 GMT+1
So Bluebottle, is it then your position that adaptations of the description are never required?

I don't remember seeing any comments in this blog (under this post or any of the many related posts) arguing that the EPO's recent very strict approach (suggesting the insertion of explicit disclaimers in the description) is correct. Feel free to refer me to one that shows I am wrong.

What I see are two sides:
- side A acknowledging that the EPO's recent strict approach is not correct but that, in general, the description must be adapted to the claims (or the claims adapted to the description, whichever you prefer) for the application to comply with Art.84,
- side B insisting that side A agrees with the EPO's recent strict approach (and having a rather undefined position on whether amendments to the description are ever required).
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Max DreiThursday 10 August 2023 at 11:38:00 GMT+1
Suddenly, the thought occurs: Ensygnia, by their conduct in the case under discussion, might just have given the EPO a load of grist for their "conforming the description" mill, and given them just the argument they need, to persevere with their crusade.
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Francis HagelFriday 11 August 2023 at 18:47:00 GMT+1
In the discussion about the meaning of « description » in Art 69, I assume that at the time of the drafting of Art 69, the case of substantive amendments to the description had likely not been anticipated and the « description » the drafters had in mind was the description as filed. The word « description » in Art 69 is arguably ambiguous since there are reasonable arguments in favour of the description as filed rather than the (amended) description of the patent. In such a case, the intent of the drafters should be analysed according to VCLT in the light of the Travaux Préparatoires, etc.

The current practice of imposing description adaptations is explicitly justified by the objective of reducing legal uncertainty in the interpretation of claims before national courts, as clear from the press release of July 7, 2022 « EPO practice confirmed on adaptation of description «. This is, however, clearly outside the remit of the EPO.

In addition, the EPO practice shows a distinct lack of consistency. The requirement to impose amendments of substance in the description entails the risk of new matter, whereas the EPO case law is extremely strict on this topic. In short, the EPO on the one hand asserts the objective of reducing uncertainty in national court proceedings (which involve a tiny fraction of granted patents), whereas the current practice generates for the patentee a significant risk of revocation on the ground of new matter in opposition or court proceedings. The Ensygnia vs Shell decision illustrates this risk when the amendment is a declaration that a disclosed embodiment is outside the scope of the claims. It does not matter that the patent at issue was a UK patent, the court’s reasoning would have no reason to be different for the UK part of an EP patent. It is of note that the decision acknowledges Art 69 as an « overarching principle » of claim interpretation.

The applicant is indeed legally responsible for the content of the patent, but I think it is somewhat cavalier for the EPO to raise this argument to justify its lack of concern for the potential implications of description amendments before court proceedings. The EPO is clearly the best placed to assess the risk of new matter, including by drawing lessons from relevant decisions of national courts. This is why I suggest that applicants challenge the description adaptations required by the ED or entered by the ED at the 71(3) stage by requesting that the ED demonstrate that the amendments do not raise a new matter issue.

A warning as to the risk of new matter should also be included in the relevant Guidelines to enhance awareness of the issue by EDs.

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Francis HagelSunday 13 August 2023 at 15:47:00 GMT+1
@Hemingway

My understanding of Art 64 is that it starts after completion of the assessment under Art 69 (see Art 64(2), so I do not find it has relevance to the meaning of the “description”.

Reading literally Art 69, I agree that the description referred to is the description of the patent. But this is not consistent with the assessment of equivalents in which the question is whether “a person skilled in the art would at the filing date (or where applicable the priority date) have understood it, from the description, drawings and the claims, to be excluded from the scope of protection” (AIPPI resolution Q175, 2003).

If the description has been significantly amended, the court may hold that this alters the interpretation the claims and revoke the patent for new matter. This is what happened in the Ensygnia decision. Section 76.06 and 76.07 of the UK MPP sheds helpful light on this issue.

Which leads to the conclusion that the EPO should ensure that an amendment does not raise a new matter issue on the basis of the case law of national courts as to claim interpretation and assessment of equivalents. This seems a requirement for consistency with the EPO's official objective of legal certainty in proceedings before national courts.
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DXThomasSunday 13 August 2023 at 19:53:00 GMT+1
The day I will be shown that the adaptation of the description has actually been detrimental to a proprietor, other than in the present case, where the amendment was made after grant in an attempt to catch a potential infringer, I will be open to change my mind.

One proviso will remains as long Art 84 is as it stands. Art 84 deals with the clarity of the claims as such and their support by the description. According to Art 172, Art 84 can be amended by a diplomatic conference or a common declaration of a all the EPC contracting states in the meaning of Art 31 VCLT. We are however not yet there.

Up to know, I have only been confronted with possible “practical effects” or hypothetical possibilities, but not with hard facts. If an independent claim is amended, for instance by taking features from description or by combining it with dependent claims, any statement that the added features in the independent claims are optional is to be deleted.

If some embodiments are not any longer covered by the amended claims, they cannot represent the invention as claimed. I would not necessarily require deletion, but it has to be made clear what belongs to the claimed invention and what does not belong to it.

As far as I am concerned, the topic is exhausted. I will not reply to any further comment, not because I think I am right, but for the simple reason that we are turning in circles. Let’s at least agree that we disagree. I will be happy with this.
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AnonymousMonday 14 August 2023 at 09:41:00 GMT+1
I struggle to see how this case can be used to show the EPO the alleged danger of its ways.

The case at best shows the risk of adding matter by both claim and description amendments. It should be noted that the proprietor made both willingly in 2019 (before the first hardline iteration of the GLs in 2020?)

The proprietor shifted the scope of protection to catch an infringement. In general claim 1 as granted required an electronic sign. The infringement required a static sign. The description is changed to say an electronic sign is outside scope of claims.

Considering a hypothetical EPO grant, I sincerely doubt the EPO would have either requested or allowed such a description amendment especially given claim 1 as granted requires an electronic device. We can only speculate what would have happened had these changes been requested via central limitation but my gut feeling is it would not have been seen as a limitation and rejected. Were the patent opposed, 123(3) would have put a stop to this amendment.

So I am afraid to conclude that this case might actually help the EPO’s approach by showing why a proprietor should tell us that contradictions to claim wording are not within the scope of the claim, or not later assert claimed features as optional.

To avoid dismissal of being on a side, I should state I don’t like the EPO’s approach either and doubt its legal basis. However, to have a constructive debate, we need to acknowledge that a Proprietor attempting to contort a claim as granted on the basis of the description serves no one well.

In summary, we can’t point to bad EPO for what seems like a well meaning attempt to give the public some certainty and turn a blind eye to how this case was conducted. It’s not an exaggeration to say the proprietor attempted to remove a granted feature from the scope of the claims using the description. That cannot be right.

When we complain about the EPO binding the courts, do we really mean they are binding the proprietor?
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AnonymousMonday 14 August 2023 at 11:17:00 GMT+1
Hemingway asks DX Thomas whether he would be "fine" with the superseded text in the Guidelines or whether, instead, he wants the full rigour of the current Guidelines. For my part, I'm not "fine" with either of them. If you use a word like "embodiment" or "example" that begs the question "Of what?" and what else can the answer be than "The invention"? I mean, in mechanical cases, we see "embodiments" in the drawings whereas in chemical cases we read in the description the text of worked "Examples", all relative to the claimed subject matter.

So I doubt that M. Thomas is "fine" at all with the earlier Guidelines text.

Is there such a thing as a "comparative embodiment" I wonder.
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Francis HagelMonday 14 August 2023 at 15:47:00 GMT+1
When stating that we are turning in circles, Mr Thomas seems to take the role of a self-appointed moderator. I am quite pleased that many interesting comments have followed. If Mr Thomas does not want to contribute other comments, this is of course his personal choice and I respect it.

As to his position that he has « only been confronted with possible “practical effects” or hypothetical possibilities, but not with hard facts », I have to point out that this exactly matches the EPO’s justification for its practice.

The EPO has explained in its press release of July 7, 2022 that its concern was to improve legal certainty in national court proceedings. In addition to the fact that this is beyond its remit, as clear from the case law of the BOAs, this only refers to hypothetical scenarios. A tiny fraction of granted patents are asserted before national courts. On the other hand, when the description has been substantially amended, the fact is that the defendant always argues that there is new matter and the court has to perform a thorough review of the amendments to assess whether they may alter the interpretation of the claims and constitute new matter. This entails great uncertainty, contrary to the EPO’s stated objective, legal expenses and the risk of revocation of the patent.

In addition, the EPO Guidelines assert that any inconsistency between the claims and the description must be removed as this might cause doubt as to the meaning of the words of the claims. Again, this is only a hypothetical. The PCT ISPE Guidelines section 5.29 take the sensible position that inconsistencies need only be removed if they cause doubt (in the present tense) as to the meaning of the words of the claim. In this case, the burden of proof is clearly on the examiner or ED.

@Hemingway
Thank you for your answer. But I disagree with your statement that the notional "skilled person at the filing/priority date" can perfectly well read the claims and description as granted. Of course the claims are the claims as granted. But if we rely on the skilled person at the filing date, the skilled person’s reading of the description must also rely on the description as filed for consistency. Otherwise, the skilled person’s reading may take into account substantial amendments which may alter the interpretation of the claims by the court.

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DXThomasMonday 14 August 2023 at 21:55:00 GMT+1
In view of the numerous comments following my last entry, I feel obliged to say something.

The claims should be supported not only at grant, but also at filing. This is why it is allowed, without infringing Art 123(2) to integrate the wording of claims or even clause-like claims, provided they were present at filing, into the actual description, should some features be only mentioned in the filed claims or clause like claims, but not in the description as filed.

I can agree that it is wishful thinking to think that the policy of the EPO and that of a vast majority of the boards will change in matters of adaptation of the description. I cannot see for a long time a diplomatic conference being convened just in order to amend Art 84. If any diplomatic conference is to be convened, its aim should be to give the boards the true independence they need.

As far the influence of external members of the EBA is concerned, it is clear that they will never form the majority in a panel of the EBA. They might be two, maximum three external members, but never more.

I further doubt that the EBA would be inclined to interpret Art 84 in the way wished by some boards and lots of commenters. As I have said many times, a referral to the EBA can be a dangerous game. The answer to the referral will not necessarily live up to expectations. In many situations, e.g. undisclosed disclaimers, the EBA simply endorsed the established practice. Have the users of the EPC become wiser with G 2/21?

It might be an assertion to refer to the second sentence of Art 84, but it is no more than an assertion that the requirement of adaptation of the description is not what Art 84 says.

I am anything but a self-appointed moderator and I am neither obsessed by a strict line on this matter. I have a private opinion, based on my long experience at the EPO, and I am by no means speaking for the EPO. That my private opinion matches, to a certain extent that of the EPO, is no more than a coincidence.

It is simply exhausting having to repeat the same considerations and to be faced with the same considerations from “the other side”. This is why I think that we are turning in circles.

Without claiming to be right, the type of amendment thought for by Ensygnia, would most probably not have been allowed by an ED acting upon a request of limitation. It is manifest that this amendment of the description is anything but a limitation, as on top of it, the aim was to catch a potential infringer. If the applicant only ever only thought of an electronic sign, why should be allowed to indirectly claim a static sign.

I feel sorry for Rose, but the Ensygnia vs. Shell case was not the best example criticising the EPO in matters of adaptation of the description, or attempting to induce the EPO to change its policy.

I have always been in favour of a reasonable approach in matters of adaptation, but with the best will, it is not possible for me to follow those who claim that, with Art 84 as it stands, the description does not have to be adapted to the claims.

When talking about the adaptation of the description, lots of commenters refer to the Guidelines F-IV, 4.3. I would also recommend looking at Guidelines F-IV, 6.3. Both parts should be read together. A pedantic and extremely formalistic approach is not what is required by Art 84, but simply to claim that the description should not be adapted to the claims goes too far for me.
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Proof of the puddingFriday 18 August 2023 at 17:02:00 GMT+1
It seems that, depending upon one's perspective, the Ensygnia v Shell either supports or undermines the EPO's "strict" practice regarding adaptation of the description.

For those inclined to support the EPO's practice, the UK case demonstrates that an incompletely / improperly aligned description can be used to afford the wording of the claims a meaning completely different to that deemed patentable during prosecution.

For the rest of us, the UK case demonstrates that amendments to the description can change the meaning afforded to unchanged claim language.

Really, these two views are two sides of the same coin. That is, they both recognise the fact that the meaning affording the wording of the claims can be influenced by the content of the description. In this respect, it seems to me that what causes a divergence of views is whether this fact is viewed as either:
(a) a compelling reason to insist upon "strict" adaptation of the description to the claims as allowed; or
(b) cause for alarm about a practice that requires adaptation of the description in the absence of a properly determined (and mutually agreed) meaning afforded to the wording of the claims.

I guess that the side that one picks therefore could have a lot to do with what one perceives as the greater evil, namely either:
1) patentees being able to use an "improperly" amended (or completely unamended) description to argue, in national court proceedings, for an over-broad scope of protection; or
2) patents being either invalidated or afforded an unreasonably narrow scope of protection due to description amendments made to meet the EPO's "strict" requirements.

For me, it is not difficult to pick option 2 as the greater evil. This is because the risks:
- affect potentially every patent granted by the EPO; and
- are enhanced by the fact that the EPO does not properly (i.e. using Art 69 EPC) determine the meaning of the wording of the claims.

On the other hand, option 1 gives rise to risks:
- only for those patents whose claims contain unclear terms (as it is only for those patents that the description will be used to help interpret the claims); and then
- only if a national court is hoodwinked by the patentee's arguments in favour of an over-broad scope of protection (and does not invalidate the patent in view of that broad scope).

As far as I am aware, there is not one single example of the risks under option 1 ever having crystallised in practice. As the EPO's "strict" description adaptation practice is relatively new, this strongly suggests that, even when faced with descriptions containing the kind of contradictions / inconsistencies that are now apparently verboten at the EPO, the national courts are still perfectly capable of delivering fair results.
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Proof of the puddingFriday 18 August 2023 at 17:02:00 GMT+1

Regardless of my observations above, experience teaches me that there are still those that will view option 1 as the greater evil. Whilst I do not expect to be able to change anyone's mind, I would merely encourage those who take that view to take a moment to consider the risks under option 2. This is because doing so might facilitate understanding of the genuine concerns of "the other side". In this regard, the following comments might help to illustrate the basis of some of those concerns.

Under the EPO's current, "strict" practice, applicants are required to amend the description to remove all contradictions / inconsistencies with the allowed claims. But how can any contradictions / inconsistencies be identified if the meaning afforded to the wording of the claims is not first determined?

The true meaning of the wording of the claims can only be determined by reading the claims and description through the eyes of the skilled person (i.e. bearing their c.g.k. in mind) and by careful application of Art 69 EPC and the Protocol thereto.

During prosecution, the EPO never determines the true meaning of the wording of the claims in this way. Does this mean that objections raised by the EPO to alleged contradictions / inconsistencies (between the claims and the description) are improper, in that they derive from a non-EPC interpretation of the claims? Could adapting the description to such a non-EPC interpretation risk adding matter (or affording an unreasonably narrow scope of protection to the claims)?
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DXThomasMonday 21 August 2023 at 19:54:00 GMT+1
Dear Max Drei,
Comment part 1

Whilst I can agree with you that Ensygnia is of little help, this cannot at all be said about the pemetrexed case (EP 1 313 508 B1). The patent has been limited during prosecution at the EPO to the disodium salt of pemetrexed because i) that was the only worked out example, and ii) in the application as filed there was no claim at the "pemetrexed" level of generalisation.

You consider that, had the drafter of the patent included a claim at the "pemetrexed salt" intermediate level of generalisation there would likely have been no litigation and no controversy. I beg to disagree, as the application as filed was silent of any other possibility than pemetrexed disodium.

Indeed, the drafter only presented one example: the disodium salt. During prosecution, the applicant tried to claim pemetrexed in general, but the examiner has rightly said that claiming pemetrexed in general is not directly and unambiguously disclosed and raised an objection under Art 123(2). The corresponding comment of Lord Neuberger and of Sir Robin Jacob that the “examiner was manifestly wrong” is anything but acceptable in view of the case law of the boards about added matter.

Had the applicant originally filed a claim for a "pemetrexed salt" as intermediate level of generalisation, the information contained in the application as filed was insufficient to allow proper support of such a generalised claim and an objection under Art 83 would most probably have been raised. .

It is to be noted that the applicant has never tried to file supplementary data showing that the teaching was more generally applicable, for example with other pemetrexed salts. He could also have tried to file a broader divisional defending pemetrexed as such. I would therefore claim that during prosecution before the EPO, the applicant was not in possession of any data supporting the general teaching he was trying to claim. During examination the applicant was more concerned by the definition of the equivalents/derivatives of Vitamin B12 than by a different pemetrexed salt.

It is also worth remembering that in The Netherlands, the Court of first instance did reject the proprietor’s plea of general applicability in view of its behaviour during prosecution. This decision was later set aside, but nevertheless existed.

When amending the description, the applicant was adamant to distinguish between the subject-matter which is relevant to the invention which is indicated as being that to which “the present invention generally relates” and “the subject matter provided by the invention” which is the subject matter claimed.

An example of the first statement is as follows:
[0005] ….. The present invention thus generally relates to a use in the manufacture of a medicament for improving the therapeutic utility of antifolate drugs by administering to the host undergoing treatment with a methylmalonic acid lowering agent as vitamin B12…..

An example of the second statement is as follows:
[0010] The invention specifically provides the use of the antifolate pemetrexed disodium in the manufacture of a medicament for use in combination therapy for inhibiting tumor growth in mammals wherein said medicament is to be administered in combination with a methylmalonic acid lowering agent selected from vitamin B12 and pharmaceutical derivatives thereof.

The subject-matter claimed was thus limited to the use of pemetrexed disodium as the applicant had not shown that any other salt had been envisaged. The description has thus been amended and the invention limited to what was actually disclosed.

I would infer from the decision of the UKSC that Lord Neuberger wanted to get over the famous “Improver” case law, but offered to the proprietorthe protection for an invention he had not made at the date of filing as the whole filing was exclusively about pemetrexed disodium.

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DXThomasMonday 21 August 2023 at 19:56:00 GMT+1
Dear Max Drei,
Comment part 2

When amending the description, the applicant was adamant to distinguish between the subject-matter which is relevant to the invention which is indicated as being that to which “the present invention generally relates” and “the subject matter provided by the invention” which is the subject matter claimed.

An example of the first statement is as follows:
[0007] Furthermore, the present invention generally relates to a use in the manufacture of a medicament for inhibiting tumor growth in mammals by dministering to said mammals an effective amount of an antifolate in combination with a methylmalonic acid lowering agent.

An example of the second statement is as follows:
[0010] The invention specifically provides the use of the antifolate pemetrexed disodium in the manufacture of a medicament for use in combination therapy for inhibiting tumor growth in mammals wherein said medicament is to be administered in combination with a methylmalonic acid lowering agent selected from vitamin B12 and pharmaceutical derivatives thereof.

Those two statements are thus correct and one could consider that for this part the description has been correctly adapted.

This cannot be said of § [0005]. In this §, it is stated that “Surprisingly and unexpectedly, we have now discovered that certain toxic effects such as mortality and nonhematologic events, such as skin rashes and fatigue, caused by antifolates, as a class, can be significantly reduced by the presence of a methylmalonic acid lowering agent as vitamin B12, without adverse adversely affecting therapeutic efficacy.” The only antifolate for which this surprising and unexpected effect was at all disclosed was pemetrexed disodium.

This can also not be said of § [0016] as granted. In this §, it is stated that “The current invention concerns the discovery that administration of a methylmalonic acid lowering agent such as vitamin B 12 or a pharmaceutical derivative thereof, in combination with an antifolate drug such as pemetrexed disodium reduces the toxicity of the said antifolate drug”.

To me, the wording “such as” in combination with pemetrexed disodium is misleading as it boils down to a clear attempt to generalise pemetrexed disodium. There is no other alternative that pemetrexed disodium ever disclosed. In case of a single example, and in the absence of any data allowing a generalisation, “such as” should not have been allowed as implies, without the faintest support that other pemetrexed salts can be used. This part of the description thus contravenes Art 123(2). The reduction of toxicity was never demonstrated for any other salt than disodium.

The situation is different with vitamin B12 as there is ample support for actually not limiting the teaching to vitamin B12.

The inventive concept was indeed expressed at a level of generalisation wider than just pemetrexed disodium and certainly pemetrexed in general, or even any antifolate. This level of generalisation in § [0005] and [0016] was not supported by the single example given.
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DXThomasMonday 21 August 2023 at 20:42:00 GMT+1
@Proof of the pudding

I have actually never disputed that the only clause by which claims can be interpreted under the EPC is Art 69.

The only question which has arisen in view of the diverging case law of the boards in matters of application of Art 69, is whether it should be applied systematically during prosecution before the EPO or only in limited number of situations, like a claim lacking clarity as such or in opposition.

I have never disguised that my preference goes to the second alternative. If each and every claim has to be weighted by a department of the EPO, be it first or second instance outside the exceptional situations I have mentioned, the examination would be much longer and protracted. I doubt that the patent coming out of it would be at all better as what comes out presently.

If we adopt the first possibility, i.e. systematic application of Art 69 at the EPO, a lot of case law can be binned: all case law relating to the notion of directly and unambiguously disclosed, i.e. relating to novelty, added matter and identity of invention when a priority.is claimed.

Your desire of a perfect evaluation of all possible meanings of a feature in a claim is thus neither realistic nor feasible. Each independent claim contains a certain degree of generalisation. If this generalisation is supported by the disclosure as filed, I do not see any problem. In the absence of support, there are problems, not only under Art 84 but also under Art 123(2).

When interpretations become speculative, this is a sign that there is a problem, in general of Art 123(2).

I would like to refer here to my comments to Max Drei about the pemetrexed case. I refer here to the level of generalisation in § [0005] and [0016] of the patent as granted which was not supported by the single example given. Those two § were not correctly adapted as they went far over what had been the actual contribution to the art at the date of filing and clearly and unambiguously disclosed. During the whole prosecution the applicant never tried to show that the teaching could be generalised.

Considerations applied by a national court are out of the reach of the EPO which has to insure that the whole of the EPC is taken care off and not just Art 69. I am thinking here of Art 54, 84, 87 and Art 123(2). I understand the desire of an applicant to push the boundaries of its contribution to the art as far as possible, but there are limits which should not be trespassed. .

If for you any feature in a claim can only have a “roughly approximate meaning” you simply want to push the boundaries further than the actual contribution to the art.

In the pemetrexed case the contribution to the art at the date of filing was clearly limited to pemetrexed disodium and the presence of a methylmalonic acid lowering agent. It did not apply to antifolates as a class.

It not clear to me how a possible limitation to what has actually been disclosed can imply added matter in post grant proceedings before a national court. I am still waiting for the first example of this kind.

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Max DreiMonday 21 August 2023 at 22:58:00 GMT+1
Dear Daniel, thank you for taking the time to set out your assessment of the pemetrexed case. Bearing in mind that I don't do chemical cases and that my education in chemistry ceased at university first year level, I should probably say no more, lest my remarks reveal greater depths of my ignorance. Nevertheless, I can't resist a short comment in reply.

I had in mind that i) sodium and potassium are so closely adjacent in the Periodic Table that it would be more than plausible that if the disodium salt works, so will the di-potassium salt too, and ii) a patent application containing (in the application as filed) a claim at the level of generality just wide enought to include di-poassium and other equally plausible alternatives to sodium, but not much more together with iii) a description that rendered it plausible that the disodium salt would not be exclusively the only salt with a therapeutic effect. I like to think that with such drafting, the litigation would not have occurred.

I don't know why there was no claim at this intermediate level of generality. I guess because in the drafting jurisdiction, it didn't matter. But I like to assume that the EPO does not refuse all claims except those that are limited to the exact molecule of a worked Example in the description as filed. Is there not a realtionship between Art 83 EPC and what is plausible?

I like to think that I know why Applicant refrained from advancing belatedly a claim at the required intermediate level of generality in prosecution or in a divisional. Better never to try, than to try and be brought down by, respectively, Art 123(2) or 76 EPC. As we have seen, in that assessment, Applicant was 100% correct.
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Anon Y. MouseTuesday 22 August 2023 at 10:02:00 GMT+1
And so once again the pemetrexed decision comes up, and once again we go off on a series of tangents that have, at best, marginal relevance to the actual issue of concern.

We all understand that DXT seems to be particularly aggrieved by the pemetrexed decisions - or perhaps just by the decision of the UK Supreme Court? It would be interesting to know whether the decisions of other national courts in this litigation are also so upsetting to you, and if so why.

However, let's try to get the discussion back on track:

It is completely irrelevant what a retired judge said, in a different forum, about a decision which he was not involved with.

It is completely irrelevant why certain claims or statements at various levels of generalisation were present, or not present, in the pemetrexed application as originally filed.

It is completely irrelevant whether or not the EPO was right to object under Article 123(2).

It is completely irrelevant what amendments were made during prosecution, and why.

What is relevant is the content of the patent as granted by the EPO and what influence, if any, the granted description had on the interpretation of the granted claims.

With that in mind, can we please try to refocus on the actual problem?
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Francis HagelWednesday 23 August 2023 at 15:24:00 GMT+1
A couple more observations.

Regarding the interpretation of claims during prosecution, T 1705/17 states : “A claim should be interpreted in a technically sensible manner and be given the broadest, technically reasonable interpretation and should be construed by a mind willing to understand, not a mind desirous of misunderstanding. Thus, the skilled person should only rule out interpretations which are illogical or which do not make technical sense”. Is this not the principle generally accepted under the case law of the EPO ?

As to pemetrexed , it may be misleading to only refer to the decision of the UK Supreme Court. This disregards the fact that the European courts unanimously decided along the same line as the UK Supreme Court.
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