We have moved one step closer to a referral to the Enlarged Board of Appeal on description amendments. As previously reported, in appeal case T 56/21 the Board of Appeal invited the applicant (Roche) to request a referral to the EBA on the question of compulsory adaptation of the description in line with the claims. The applicant has subsequently submitted their request for a referral. We now await final confirmation from the Board of Appeal.
Amending the description: Why do we care?
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| Amending the description |
However, amending the description is a risky business for patentees and applicants. To begin with, description amendments may add matter and lead to the inescapable added matter trap post-grant (IPKat). Additionally, amendments to the description may adversely impact claim interpretation post-grant in both invalidity and infringement proceedings (IPKat).
The EPO is the only major patent office that requires strict adaptation of the description in line with the claims. The EPO's approach to adaptation of the description is also curious in view of its general approach to claim interpretation. Unlike the UK courts, there is considerable Board of Appeal case law supporting an approach to claim interpretation that does not require reference to the description (IPKat). Particularly, the Boards of Appeal can be perfectly happy to ignore contradictory language in the description for the purposes of claim construction. According to a number of recent Board of Appeal decisions, if the language of the claims is clear per se, then the description can be ignored. However, if the description is to be ignored in cases of contradictory meanings between the description and the claims, why then is it necessary to amend the description? (IPKat).
A hint as to why EPO is so bullish on the issue of adaptation of the description was provided at the recent CIPA Congress 2023. At CIPA Congress this year, Steve Rowan (EPO Vice-President) spoke about the EPO's current focus on patent quality. Mr Rowan emphasised that it is down to both the patent office and applicants to ensure the continued quality of granted European patents. This included, for example, ensuring conformity between the claims and the description of granted EP patents.
Roche shoulders the burden
Despite the disharmony on the issue among the Boards of Appeal it has never been clear that we would get a referral on description amendments. The risks of amending the description before grant of a patent can be mitigated (albeit expensively) by filing a divisional application, so as to at least keep an application pending should the granted patent fall down for added matter. The down-stream consequences of description amendments on claim interpretation may also only become clear years after grant. The Board of Appeal in the case in question noted that a referral to the EBA would delay grant, and therefore left it to the applicant to decide.
The applicant, Roche, has now submitted their response requesting the referral. Roche also suggests some clarifying amendments to the question proposed by the Board of Appeal. Roche's proposed questions are as follows:
1. Is there a lack of clarity of the claims or a lack of support of the claims by the description within the meaning of Article 84 EPC if a part of the disclosure of the invention in the description and/or drawings in the specification (e.g. an embodiment of the invention, an example or a claim-like clause) is not encompassed by the subject-matter for which protection is sought as defined in the claims ("inconsistency in scope between the description and/or drawings and the claims")?
2. If the answer to question 1 is "yes", can an application consequently be refused based on Article 84 EPC if the applicant does not remove the inconsistency in scope between the description and/or drawings and the claims by way of amendment of the description ("adaptation of the description").
Roche also submits that the referral should relate to adaptation of the description in all forms of proceedings, i.e. including opposition proceedings.
In support of their referral request, Roche identifies conflicting case law on the issue of description amendments. T 1989/18 (IPKat, Board 3.3.04, same applicant and Board as T 56/21), T1444/20 (IPKat, Board 3.3.01) and T 2194/19 (IPKat, Board 3.5.03) all found a lack of legal basis for the requirement for the description to be amended in line with the claims. T 3097/19 (IPKat, Board 3.5.06) on the other hand, disagreed with these decisions and found that the requirement for the description to be amended in line with the claims does have legal basis.
Roche also argued that it was difficult to reconcile the practice of the EPO with the case law on clarity requiring the claims to be clear in themselves without the need to refer to the description for interpretation (IPKat). Finally, Roche further attached a resolution from FICPI (the International Federation of Intellectual Property Attorneys), which outlines the danger and burden to applicants of the EPO's description amendment requirement.
Final thoughts
The mere fact of a referral to the EBA does not of course mean that we would then necessarily receive clarity on the issue of description amendments. The EBA does have a habit of rephrasing the questions referred to it in order to avoid issues of general application beyond the facts of the case at hand (G 1/21, IPKat) or of providing self-confessedly vague advice even when it does answer the question (G2/21, IPKat). Even if the EBA were to give a clear answer on description amendments, the answer it gives may not be to everyone's liking. The EBA may find in favour of the requirement, or even reason itself into adopting an stricter approach that would then have to be applied by the Boards of Appeal. A case of being careful what you wish for?
Further reading
Claim interpretation
- Boeing's comma drama: Commas and taking the description into account when construing a claim (T 1127/16) (April 2021)
- Another case of catastrophic comma loss (T 1473/19): Interpreting the claims in view of the description (Jan 2023)
- EPO tries to have its cake and eat it on claim interpretation (T 0169/20) (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) (July 2023)
- Benefits and pitfalls of functional patent claims (and why the UK is out of step with the EPO on claim construction): Astellas v Teva [2023] EWHC 2571 (Pat) (Nov 2023)
Description amendments
- Board of Appeal finds no legal basis for the requirement to amend the description in line with the claims (T1989/18) (Dec 2021)
- Can amending the description to summarize the prior art add matter to the patent application as filed? (T 0471/20) (Jan 2022)
- EPO Board of Appeal toes the party-line on description amendments (T 1024/18) (April 2022)
- Board of Appeal case law against the description amendment requirement starts to mount up (T 2194/19) (16 Nov 2022)
- Another Board of Appeal enters the fray on description amendments (T 3097/19) (Nov 2022)
- Board of Appeal poised on the brink of a referral on description amendments (T 56/21) (July 2023)
- Adding matter by amending the description to exclude embodiments (Ensygnia v Shell [2023] EWHC 1495 (Pat) (Aug 2023)
Reviewed by Rose Hughes
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Monday, November 27, 2023
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Posts
Cue comments from those for and against description amendments that generate lots of heat but remarkably little light.
ReplyDeleteI have lost count of the number of times that I have attempted to analyse the (purported) legal basis for the EPO's current approach to description amendments. I have also lost track of the number of different perspectives from which I have considered the interpretation of Art 84 EPC. However, what I can recall with great clarity is the extreme difficulty that I have always faced in getting those who support the EPO's current practice to engage with, and to demonstrate a full understanding of, how things look from those different perspectives.
Such difficulties have, it seems to me, hindered the establishment of common ground between the opposing camps (namely points upon which the camps both completely agree and points upon which both camps agree that reasonable minds might differ). The reasons why such difficulties arise are not entirely clear to me. However, one factor seems to be suspicion of the motives of "the other side". Another factor seems to be a reluctance to critically assess the validity of certain (implicit) assumptions or conclusions from case law of the Boards of Appeal (and, particularly, from "majority" or "long-established" case law).
Judging by the changes to the Guidelines in recent years, the latter factor seems to me to be particularly prominent within (influential circles at) the EPO. Which begs the question: will the EBA adopt a truly neutral and objective approach, by carefully and methodically interpreting the relevant provisions of the EPC ... or might their reasoning instead be tainted by assumptions that they might not even realise that they are making? For this reason, I agree with Rose that a referral to the EBA on description amendments is definitely a case of being careful what you wish for.
The potential referral to the EBA has been commented on another blog.
ReplyDeleteMy position is well known and I do not wish to continue the discussion.
It is highly likely that a referral to the EBA will come in the future.
It will thus be interesting to see how the questions will be formulated and what be the answer of the EBA.
As the potential questions might have a direct influence on the grant of patents, any amendments to the description by an ED under F-IV, 4.4 and Art 84 (support), will delay the procedure not only in the present case, but in lots of cases.
It will thus be interesting to see whether the grant procedure will be stayed as it is usual when a referral is submitted to the EBA.
In case of a stay, it would imply a quite drastic drop of the production of final actions by examining and opposition divisions, even from the boards.
It is not sure whether the upper management of the EPO and of the boards will appreciate being put in such a situation.
We leave in interesting times!
There is no question that, if a referral is made to the EBA, a stay should be imposed in all cases where the decision depends entirely on the outcome of the referral.
DeleteSee the CLBA at V.A 11.6.15 (https://www.epo.org/en/legal/case-law/2022/clr_v_a_11_6_15.html):
"Where a decision of the examining division depended entirely on the outcome of proceedings before the Enlarged Board of Appeal on a legal question or point of law raised under Art. 112 EPC 1973 ‒ and this was known to the examining division ‒ the further examination of the application had to be suspended until the matter had been decided by the Enlarged Board of Appeal. Failure to do so amounted to a substantial procedural violation under R. 67 EPC 1973 (T 166/84, OJ 1984, 489). See also chapter V.B.2.5.3 "Stay of first instance proceedings following a referral"."
However, given the potentially dramatic (negative) effect upon the EPO's "production" figures, I agree that it is far from clear whether a stay of proceedings will be granted (either ex officio or upon request) in relevant cases, or whether the legal principle set out in T 166/84 will instead be consigned to the waste bin.
For once I can agree with you that a stay should be ordered. In view of its direct impact on the working of the EPO and the ensuing backlogs, reasonable doubts are permitted that it will actually occur.
DeleteEven if a department of first instance might commit a SPV by not staying a case, and that a party might later recover its appeal fee, the procedure will be even more delayed due to the passage via the boards. In the meantime, it would also boil down to the temporary freezing of substantial financial resources. Even big applicants with deep pockets might suffer.
The best solution would be that, should the referral be deemed admissible, a quick decision by the EBA. That the EBA will take into account, what is after all, a minority opinion among the boards, and decides a change of paradigm, as it decided with the validity of priority claims, is not very likely.
Since G 4/19 (a shameful decision) I no longer trust the EBA.
ReplyDeleteInteresting. Of all the EBA's decisions, I would not have identified G4/19 ("Double patenting") as being "shameful".
DeleteCare to share your reasons for finding G4/19 to be so distasteful?
Personally, I would have thought that, if one were seeking exemplars of "shameful" EBA decisions, then one need look no further than G2/19 ("Right to be heard and the correct venue for oral proceedings"), G3/19 ("Article 164(2) EPC / Pepper") or G1/21 ("Oral proceedings by videoconference").
How cannot be shameful a decision which violates art. 52(1) EPC ("...SHALL grant...") and is based instead on art. 125 EPC which does not have much to do with double patenting, and even if this had been the case, then it should have allowed double patenting as most EPC member states allow double (European/national) patenting (e.g. Germany, France, Italy and many others)?
DeleteMoreover, the same EPO allows double patenting when applicants are not exaclty the same.
Furthermore, it is clear already from the TP that double patenting was a matter left to national law, so G 4/19 deprives EPC member states to get double patents, if their national law allows.
Anyway, I agree with tou that G 2/19 is also shameful, while G 3/19 and G 1/21 are on the borderline.
Well, I can conclude with a high degree of confidence that you and I have very different definitions of what constitutes a "shameful" decision of the EBA.
DeleteAs far as I can see, the EBA in G4/19 merely answered the question referred by interpreting the EPC according the methods permitted under the VCLT, and provided detailed (and understandable) reasoning for the conclusions that they reached when applying those methods.
One can perhaps question whether all relevant interpretative methods were applied in a comprehensive and methodical manner. One can certainly question whether, when applying those methods, the EBA reached the correct conclusions. However, there appears to me to be nothing wrong in principle with the EBA's approach to answering the questions referred.
On the other hand, my reason for labelling G2/19, G3/19 and G1/21 as "shameful" decisions is that, in my view, they contain reasoning that is plainly illogical and/or conclusions that cannot be justified. Indeed, G3/19 is arguably the worst of the three. In that case, the EBA:
- demonstrated partiality by rewriting the questions referred in a manner that was transparently designed to provide a plausible argument for answering questions that were clearly inadmissible;
- reinforced their obvious partiality on the matter by deciding admissibility by reference to alleged (though clearly manufactured) "divergence" upon a point of law to which even the rewritten question did not refer;
- arguably ignored (or at best improperly applied) the interpretative methods permitted under the VCLT; and
- ultimately arrived at a conclusion that clearly violates the hierarchy of laws (and effectively renders Article 164(2) EPC otiose).
In this respect, I cannot for the life of me understand why anyone would view such a deeply flawed (and highly political) decision as being only "borderline".
G 3/19 certainly is flawed and highly political (the EPO president wanted to make a favor to some parties of the European Parliament) but still within the borders of the EPC (G decisions can be overturned, due to Art. 112(3) EPC), since Rule 28(2) does not violate any article of the EPC, so that art. 164(2) EPC should not apply in this case.
DeleteOn the other hand, G 4/19 blatantly violates art. 52(1) EPC, so that no "interpretation" whatsoever can save it.
At any rate, I guess that we agree that the EBA (the Guardian of the EPC) can no longer be trusted, how sad.
Robot, whilst it seems that neither of us has full confidence in the EBA, we shall have to agree to differ with regard to the interpretation of the EPC in G4/19.
DeleteMany applications claim inventions that are novel, inventive and susceptible of industrial application. However, for good reasons (such as lack of sufficiency or addition of subject matter) the EPO does not grant all of them. I therefore believe that it was reasonable for the EBA to conclude that rejection of an application may, in some circumstances, be based upon grounds other than violation of Article 52 EPC. Whether double patenting is one of those grounds is a question that then needs to be answered - which I think the EBA did reasonably well.
Proof, the problem is that double patenting is no ground for rejection according to the EPC (as well as the TP, which should be taken into account for any possible "interpretation"): imagine three identical European applications, two in the name of Meril India and one in the name of Meril Italy, all filed on the same day.
DeleteAccording to which article of the EPC two of these three applications will lead to the grant of a patent and one will be refused?
Robot, section B of G 4/19 contains 60 (sixty!) paragraphs that are dedicated to the question of whether, using principles of interpretation according to the VCLT, a prohibition against double patenting can be derived from Article 125 EPC. Thus, putting aside the question of whether the EBA's reasoning is correct, the answer to your question is Article 125 EPC.
DeleteRegarding your assertion that "Rule 28(2) does not violate any article of the EPC", let me say that this is a debatable point. This is because reaching that conclusion presupposes that:
- the AC can introduce a new Implementing Regulation; and
- that new Implementing Regulation can change the interpretation of a provision of the Convention.
An Implementing Regulation that changes (as opposed to merely refining or clarifying) the interpretation of a provision of the Convention clearly "conflicts" with that provision, especially if that interpretation had previously been established / confirmed by the EBA.
The EBA's decision in G 3/19 tried to side-step this fact by arguing that they were relying upon a "dynamic" interpretation of the EPC. However, despite much discussion of national laws and an Interpretative Note from the Commission, there is no getting away from the fact that, in G 3/19, the sole basis for overturning the prior (EBA) interpretation of the Convention was the new Implementing Regulation.
A principle underlying Article 164(2) EPC is the provision of a form of democratic accountability. That principle is reflected in the fact that Article 164(2) EPC aims to ensure that only a collection of national legislators, in the form of a Diplomatic Conference, and not an administrative body such as the AC, can wield the power to the change the (interpretation of) key provisions of patent law. The decision in G 3/19 clearly violates that principle ... and hence, in my view, also violates Article 164(2) EPC.
The prospect of a referral, and a stay, with its likely hugely negative effect on management's precious "production" statistics, is surely seen on the top floor of the EPO as an "appalling vista", intolerable at any price.
ReplyDeleteUK readers will recall that expression from Lord Denning's notorious speech in 1980 refusing to admit a petition from the wrongly-imprisoned Birmingham Six (because if their petition were to be admitted and then succeed if would mean that there had been a scandalous and egregious miscarriage of justice which would destroy the confidence of the English in their system of administration of justice).
My suspicion is that, in the event of a referral, EPO upper management will simply give instructions to DG 1 to ignore T166/84 and instead to carry on regardless. After all, nobody will thereby suffer any harm, will they? And then, as the next step, it will set about engineering a creative EBA decision that legitimates established practice. What's going to stop that happening, I wonder.
In cases T450/20 and T367/20, the Board of Appeal relied upon the description to interpret the claims of a patent. In both cases, the description relied upon had been amended compared to the application as filed.
ReplyDeleteThis means that, when considering the possible (negative) consequences of description amendments, it is important to bear in mind that such amendments can contravene Article 123(2) EPC by either:
(a) introducing new matter into the description itself; or
(b) changing the interpretation of the claims such that they relate to subject matter not clearly and unambiguously disclosed in the application as filed.
It is perfectly possible to conceive of amendments to the description that:
- do not add matter under option (a) above; but
- add matter under option (b) above.
For example, an amendment might delete passages that provide crucial context for the interpretation of an unclear term that appears in the claims.
So when can we expect EPO examiners to start conducting checks for added matter introduced under option (b) above?
The answer, I suspect, is no time soon. This is because added matter under option (b) above really only arises when the claims contain an unclear term ... which is, of course, a situation that no examiner should tolerate. However, we all know that examiners are imperfect and that it is commonplace for patents to be granted with claims that contain at least one unclear term.
This of course leaves applicants bearing the unenviable burden of trying to ensure that no amendments to the description inadvertently add matter under either of options (a) and (b) above. It also leaves them bearing all of the risk in case anything goes wrong.
Frankly, this strikes me as being absurd. After all, the EPO examiner will have interpreted the claims in the light of the description of the application as filed. Does this not mean that, from the perspective of legal certainty (ie ensuring, to the extent possible, that the claims are interpreted in the same way both before and after grant), the best thing to do would be not to amend the description at all?
@ Proof of the pudding
ReplyDeleteThe problem with T450/20 and T367/20 is, like with T 1989/18 and the potential T 56/21, that the same legal member was at work.
As far as the application of Art 69 in procedures before the EPO is concerned, the case law is more diverse. In another blog, I mentioned some case law.
No recourse to the description in order to interpret the claims is to be found in T 175/98, T 515/19, T 2370/16, T 1778/17, T 1583/17, T 21/16, T 1853/19, T 19/18 or T 1989/18.
Systematic interpretation of the claims in the light of the description under Art 69 is to be found in T 16/87, T 416/87, T 684/95, T 587/95, T 942/96, T 275/10, T 1473/19 or T 450/20.
Recourse to the description only in case of ambiguity, cf. T 481/95, T 169/20.
Use of Art 69 only in opposition when assessing Art 123(3), cf. T 1271/05, T 131/15 or T 42/22.
Use of Art 69 only when assessing IS, cf. T 274/94.
The list does not claim to be exhaustive, but it shows the different approaches.
It appears important for the EBA to clarify the matter of application of Art 69 in procedures before the EPO. However, a systematic recourse to Art 69 in all procedures may weaken the very clear case law of the EBA on the duality novelty/ added matter, especially if the concept of “encompassed” is used.
Rather than to have a referral on the adaptation of the description to the claims, I find that a referral on the applicability of Art 69 at the EPO would much be more useful.
I can agree that there are diverging lines of case law regarding the (extent of the) applicability of Article 69 EPC to proceedings before the EPO. I can also agree that it would be nice if the EPO could harmonise their practice on this point.
DeleteHowever, I do not think that a referral on Article 69 EPC is the answer to our current problems. This is because it is difficult to imagine that mere clarification of the EPO's practice on Article 69 EPC will determine the outcome of many (if any) cases.
For example, how might such clarification resolve disputes over whether it is necessary to adapt the description to allowable claims, and, if so, which provision of the EPC provides the legal basis for this requirement?
At best, clarification of the role of Article 69 EPC would simply narrow the scope of such disputes.
For example, if Article 69 EPC is never relevant in examination proceedings, that might rule out clarity as a possible legal basis for requiring adaptation of the description ... as how, for matters falling within the remit of the EPO, can any lack of clarity arise if the EPO never uses the description to interpret the claims? But even if that point were to be resolved, it would do nothing to address the interpretation of other provisions of the EPC that have been alleged (by some Boards) to provide legal basis for requiring amendment of the description.
Thus, whilst a referral on Article 69 EPC might rule out (clarity-based) legal theories relied upon by some Boards of Appeal, it would still leave plenty of room for debate, particularly regarding interpretation of the support requirement of Article 84 EPC. In this respect, I cannot see how the debate can ever be resolved without tackling head-on the question of what the legal basis is under the EPC for requiring description amendments.
@ Proof of the pudding
DeleteClarity as such is indeed not a possible legal basis for requiring adaptation of the description. It is support of the claims by the description. The two aspects are not to be confused and distinguished in Art 84.
In another blog on IPKat the point was made that “Defining what the invention is not can be as important as defining what the invention is”. This implies a direct application of Art 84-support.
I can only repeat that, in view of the number of cases involved, should a referral on the adaptation of the description be deemed admissible, a quick decision might simply confirm the majority view. This is what happened with undisclosed disclaimers or diagnostic methods.
Referring questions to the EBA might not necessary give the answer one wishes. It depends a lot from the way questions are drafted, and what is the policy of the EPO. See G 2/19 or G 3/19. In G 2/21, the EBA’s answer does not really help and we can already see diverging case law when it is applied.
I still do think that a referral on Art 69 could at the same time give an answer to your current problem.
I have come to the conclusion that we disagree on this and on Art 84-support, but this is not a surprise. Let’s leave it at this.
@DXT
DeleteIt seems that there is much upon which we agree.
For example, contrary to views expressed in some Board of Appeal decisions (such as T1883/11), we agree that clarity does not provide a legal basis for any requirement to adapt the description to the allowed claims.
We also seem to agree that, when it comes to referring questions to the EBA on the legal basis for adapting the description, it is a case of being very careful what you wish for.
Thus, apart from the obvious (ie our disagreement upon whether, and to what extent, the support requirement requires adaptation of the description), it seems that the only point of disagreement between us is whether there is any need for a referral. On this point, I believe that a referral cannot be avoided, even if I doubt whether the EBA can be trusted to assess the matter objectively (and in a careful, thorough and balanced manner).
Patent Robot
ReplyDeleteDescription amendments may also invalidate a patent due to Art. 100(b) EPC and, after grant, Art. 123(3) EPC (trap included)
ReplyDeleteIn the register of EP 3 094 648 it is worth noting that third party’s observations have been filed on 24.11.2023.
ReplyDeleteThe third party’s observations consists of a series of articles from CIPA Journal (NPL 1-4) and one Article from epi Information (NPL 5) relating to the question at stake.
As those observations have been filed anonymously, it is doubtful that they will be taken into account by the board, at least officially. With time, boards have developed a clear aversion to anonymous third party’s observations, especially in opposition.
We are here in examination, but the fact that anonymous third party’s observations should not give the latter more rights in the procedure than the actual parties, they will most probably be disregarded.
The applicant could send them in again, and remove the anonymity, but I doubt that it would help.
Should a referral come, it will be of utmost importance to see how the questions are drafted and whether or not the EBA will rewrite those, in order to arrive at a given (or wished) answer.
As a matter of fact there are two sets of third party observations filed on the same day, probably by the same third party if the wording is compared. There are several EPI articles, not just one.
DeleteThe board has invited the applicant to indicate whether they wish to comment. So it is possible that the observations will be taken into account - at least if the applicant thinks they might present anything relevant. I agree that if the applicant does not comment, it is unlikely that the board will consider them.