Can amending the description to summarize the prior art add matter to the patent application as filed? (T 0471/20)
The EPO Guidelines for Examination require the description of a patent application to summarise the background art (F-II-4.3). This requirement usually manifests with a request from the Examiner for the description to be amended to identify the closest prior art. In contrast to other types of description amendment, amending the description so as to mention known prior art seems a relatively innocuous requirement. It is hard to see how the addition of a simple summary of the prior art could be detrimental to the patentee. However, this comfortable assumption was recently put to the test in T 471/20, in which the Board of Appeal considered whether an amendment summarising the prior art could be considered to change the scope of the claim, add matter and thereby invalidate the patent. It will come as a relief to many that the Board of Appeal disagreed with the original finding of the Opposition Division, and found that introducing a prior art reference cannot add matter. However, the Board of Appeal did note that description amendments in general could add matter should they change the interpretation of the claims.
Changing the definition of the claims in the summary of the prior art
The decision (T 471/20) related to an appeal from the Opposition Division to revoke the patent on the grounds that the subject-matter of the patent extended beyond the content of the application as filed (Article 100(c) EPC). The patent as granted (EP2657138) related to a food product handling system (e.g. a burger patty production line). Claim 1 specified a food product system comprising inter alia a robot for moving food products around. After allowance of the claims and at the Examiner's suggestion, the applicant amended the description to briefly discuss the closest prior art (D8, EP 0803440). D8 is a patent relating to a filing unit. The applicant introduced a statement into the description that the filing unit disclosed in D8 was "not a robot".
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| Robot? Not a robot? |
The Opposition Division (OD) found the patent invalid on the grounds that the description amendment summarising D8 added matter. The OD was particularly convinced by the Opponent's arguments that the filing unit disclosed in D8, contrary to the amendment in the patent, would be understood by a skilled person to be a robot, i.e., "a machine which can be programmed to perform tasks which involve manipulative or locomotive actions under automatic control". As such, the statement that D8 did not relate to a robot was a subjective as opposed to a factual statement. The Opposition Division further found that by introducing this subjective statement, the applicant had effectively introduced a disclaimer into the description. By stating that the disclosure in D8 was not a robot, the applicant had thereby changed the meaning of "robot" as used in the patent application, including the claims.
The OD found that the application as filed did not contain subject matter equivalent to the disclaimer indirectly provided by the applicants summary of D8, and as such, the summary of D8 added matter. The patentee was unable to delete the disclaimer as this would have been considered to broaden the scope of the patent, which is not permitted post-grant (the so-called "added matter trap"). The patent was thus revoked in its entirety.
Interpreting the claims in view of the description
Importantly, in order for the OD to reach the decision that the summary of the prior art added matter, it was necessary for the claims to be interpreted in light of the description, in view of Article 69 EPC. Article 69 EPC states that "[t]he extent of the protection conferred by a European patent or a European patent application shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims".
There is disagreement in the case law as to the extent to which Article 69 EPC requires the description to be used to interpret the claims. In T 1127/16, the Board of Appeal found that the description should only be consulted in order to resolve ambiguity in the claim (IPKat). According to the Board of Appeal in this case, the description should not be consulted if the meaning of the claims is otherwise clear. Following the reasoning in T 1127/16, the introduction of a new definition in the description of an otherwise clear word in the claims should not change the scope of the claims.
By contrast, in T 500/01 the Board of Appeal found that the scope of an antibody claim was changed (and matter added) by amendment in the description of how the CDRs of the antibody should be defined (i.e. according to the Kabat or the Chotia numbering system). In other words, the definition provided in the description should be used to interpret the claims.
On the other hand, a Board of Appeal recently found that Article 69 EPC does not provide legal basis for the requirement that the description should be amended in line with the claims (T1989/18, IPKat). According to T1989/18, Article 69 EPC does not require the invention as defined in the claims to equate to how the invention is defined in the description. T1989/18 therefore appears in line with the Boards of Appeal case law that the claims have primacy, and the description need not be consulted to understand the claims.
Amendments to the description to summarise the prior art are, however, a special case. Particularly, in the appeal in question, the patentee argued that an amendment to summarise a prior art reference in the description cannot reasonably be said to change the interpretation of the claims and add matter (T 11/82, T 450/97). The Board of appeal in T 471/20 agreed that there was no legal basis in the EPC, and particularly no basis provided by Article 69 EPC, for interpreting the claims of a granted patent in a way somehow linked to the prior art acknowledged in the description (r. 2.3). Interestingly, however, the Board of Appeal did acknowledge that description amendments that did change the meaning of the claims could be said to add matter (Article 123(2) EPC) (r. 2.4). However, as the amendment in the case in question only related to the addition of a prior art summary, this was found not to change the scope of the claims, and did not add matter (regardless of whether the summary of the prior art was correct).
Final thoughts
The topic of description amendments has recently come to the fore following the controversial updates to the Guidelines for Examination. The 2021 Guidelines require applicants to make far more significant changes to the description than were previously required in order for the description to be brought in line with the claims (IPKat). Significantly, a recent Board of Appeal decision found that the requirement for the description to be brought in line with the claims had no legal basis in the EPC (IPKat), contradicting early Boards of Appeal on this issue (T 1399/17).
Applicants are alive to the risk of how any admissions in the description may be interpreted during litigation under the doctrine of equivalents (in Europe and the US). Substantial description amendments also needlessly take up valuable time if one considers the description inconsequential to how the claims should be interpreted. There is further the concern that matter deleted from the application before grant cannot be re-added post-grant. Particularly, if the description is amended pre-grant in order to avoid inconsistencies in the patent specification, the deleted subject-matter cannot be reinserted into the description or claims post-grant (Case Law of the Boards of Appeal, II-E-2.3.2) (T 1149/97, r.2.6, T 684/02).
Aside from the debate surrounding description amendments in general, the decision in T 471/20 is a welcome confirmation that amendment of the description to briefly summarise the prior art can not be considered added matter, regardless of whether the summary appears to use a different definition of a term to that used in the claims. However, T 471/20 nonetheless sounds a note of caution that amendment to claim definitions in the description in general can be said to add matter. T 471/20 thus highlights that considerable care is needed when amending a description in line with the claims, in order to avoid inadvertently and irretrievably removing subject matter. T 471/20 thus provides even more reason for applicants to baulk at substantial description amendments.
Further reading
Board of Appeal finds no legal basis for the requirement to amend the description in line with the claims (T 1989/18) (26 Dec 2021)
Boeing's comma drama: Commas and taking the description into account when construing a claim (T 1127/16) (12 April 2021)
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Posts
Rose, I love reading your stuff and would encourage you to keep posting with undiminished energy, promptitude and thoughtfulness. In this item though, I got a bit confused.
ReplyDeleteFrom your text, I took it that the TBA had revoked the patent but I see now that it disagreed with the OD, found no added matter, instead remitted, and instructed the OD to get on with its job and look at the grounds of attack under Art 100(a) and 100(b) EPC. Hooray for the Board!
Your report prompted me to wonder whether the claim in suit was a 2-parter relative to D8. It is an interesting practice point whether doubt about whether D8 does or does not disclose a "robot" is enough to resist the imposition of a c-i-t form of claim. Is that what happened here, I wonder.
Thanks MaxDrei, your comments always provide some food for thought. I take your point in this case (perhaps I was guilty of journalistic tactics to encourage you to read to the end!). I have adding some clarification.
DeleteThe EPC does not require to amend the description to cite the prior art found after the filing date, so the EPO should finally stop requesting these amendments, especially now that you can find the whole file history, including the relevant prior art, in the EPO Register.
ReplyDeleteAmending the description is useless and may even lead to Art. 123(2) issues.
On a wider point, the EPC does not require several things, but the meanings and limits of each article/rule have to be considered by the BoAs and EB.
DeleteOn your specific point, Rule 42(1)(b) EPC would suggest otherwise. It does not expressly say when this should happen but it certainly doesn't preclude adding prior art identified after filing.
A blanket refusal to amend the description is not helpful.
Amending the claims is useless and may even lead to Art. 123(2) issues. Just construe them in a way that they are patentable.
Amending poor quality hand drawn figures is useless and may even lead to Art. 123(2) issues. The public has no right to see that for which a monopoly has been granted.
Amending unclear claims is useless and may even lead to Art. 123(2) issues. Let's ignore Article 84 EPC and the public can start guessing what the monopoly covers.
Most 123(2) issues often arise from a poorly drafted application. But of course, drafting better applications would never be the solution for some. Just blame everyone else and their pesky rules.
Your comment is quite naïve when you consider T 0471/20. This article is about a patent that was revoked for the way the prior art was acknowledged. This is a formality and it is hard to imagine many other patent offices reaching this decision. Admittedly, the decision was overturned on appeal, but these decisions are commonplace from opposition divisions, which are frequently revoking perfectly good patents on technicalities. When you see decisions like this, is it really any wonder that some representatives are unwilling to amend the description? Any safe European practitioner avoids amending the claims and the description unnecessarily.
DeleteRule 42 actually says that certain background art shall "preferably" be cited in the description. The EPO's practice is that it is mandatory to do so and examiners will refuse applications for not doing so. This is an unusual interpretation of “preferably”. If it is actually mandatory to do so, perhaps Rule 42 should be amended to remove "preferably" so that the EPO's practice is supported by the EPC. I hope that you see the irony.
My comment has be taken in the context of there being supposedly no legal basis in the EPC to reference prior art. Between the Rule itself and the settled law (thanks DXT) it is wrong to say this is not required.
DeleteThe same criticism could be levelled at any article/rule. Article 54 says nothing about how to assess what is new in the prior art. Article 123 says nothing about how to assess extended SM.
As to the decision, the issue arose from the applicant's chosen wording to describe D8, not the requirement to reference D8. This opened the door to added-matter problems via Art. 69 (this point is not settled). But of course place all the blame on the pointless formality and OD who were misguided by a rogue practitioner, and not the applicant who freely chose to describe D8 as a non-robot. Referencing D8 by its title alone would have been enough, something a safe practitioner would do.
It's irrelevant whether other patent offices would decide differently. The EPC is its own system. When you play the game at the EPO, you are bound by their rules, and you can only bend them so far.
I agree that claims and description should not be amended unnecessarily. When is it necessary? For some, the only justification to amend the application (and only the claims at that) is to address patentability, with no regard to added-matter, clarity, etc. That cannot be the correct. We can't just wish Articles 84 and 123 EPC away.
Finally, Rule 42(1)(b) EPC requires the description to indicate the background art. Doing this by citation is indeed said to be preferable, but that does not negate the requirement to indicate relevant art.
DeleteThat last comment from "anonymous" falls into the category: any problem encountered by Applicant at the EPO is 100% self-inflicted by "poor drafting", and therefore nobody's fault but theirs.
ReplyDeleteSuch comments remind me of the uttereances one hears from time to time from within the EPO. One suspects they come from people who have never gone through the experience of seeing their own claims and specification undergo prosecution at the EPO, and then post-issue opposition. It isn't as easy as some within the Ivory Tower suppose, to secure for the client a scope of protection commensurate with the client's contribution to the art, when the EPO applies unimaginatively and brutally its by now unassailable "Gold Standard". One would hope for more minds within the EPO open to, and "willing to understand", the real world of the person skilled in the art.
I am the same ‘anonymous’ to whom you refer.
DeleteMay I suggest you are projecting. It is never 100% anyone’s fault. There is surely a middle ground between perfect specs that will meet the gold standard 100% of the time and actual poor drafting that defines each feature so vaguely to be meaningless, and yet optional. Then there is the issue of coming up with entirely new features altogether during prosecution to the extent intermediate generalisation case law is of no use.
Anyone who has a basic understanding of the relevant technology should have a rough idea of what might be covered by a patent when reading it. They should not have to come up with all permutations of features themselves. It’s really not a lot to ask for a 20 year monopoly.
My response to patent robot was to illustrate the absurdity in their position that amending descriptions is useless, whilst seemingly concerned with 123(2) compliance.
For the record, I am actually a practitioner and have both won and lost on 123(2). I can in all honesty say all findings were correct. It may be a harsh rule, but it gives you and the public a reasonable level of certainty.
Well said, that anonymous. I too am a practitioner who has won and lost on 123(2). I too find the Gold Standard "harsh" but that's of course just fine and dandy in those cases when I'm representing the Opponent. As a representative, one is always at risk of being convinced by the power of one's own arguments. Better to attend oral proceedings as a interested member of the public, disinterested in the outcome, to assess the fairness of the EPO's harsh Gold Standard in actual practice.
DeleteThe benefit for legal certainty is evident, as soon as it is a US law firm from which one takes one's instructions. In the USA, it is often intimated that the patent system is a lottery. In my experience, US lawyers are bemused by the confidence with which experienced European patent attorneys (thanks to the Gold Standard) assess from the get go whether i) matter has been added ii) D1 destroys novelty or iii) Paris Convention priority is or is not there.
Much criticism of the EPO's people and established jurisprudence is unfair, emanating from representatives who have lost an important case and need to convince their client that it is the EPO to blame, not them.
Again, in my humble opinion, a big upheaval for nothing much.
ReplyDeleteThe question whether the prior art has to be acknowledged is not in dispute and cannot be considered adding subject-matter provided the acknowledgement is purely factual.
The case was settled in the 80ties.
I refer to Point V of the headnote in T 11/82:
V. The mere addition to the description of a reference to prior art cannot reasonably be interpreted as the addition of "subject- matter", contrary to Article 123(2) EPC. Nor is it inevitable that the addition of a discussion of the advantages of the invention with reference to such prior art would constitute a contravention of that Article. Whether it did so would clearly depend on the actual language used and the circumstances of the case.
I also refer to T 276/07 in which it was held that the amendment to the description to add an acknowledgement of the prior art does not bring any new content to the disclosure of the invention, even if it could be considered to put the invention in a different light.
Any effect or advantages linked with the “new” prior art can however be considered as adding subject-matter if the effect emphasised is not deductible by a person skilled in art from the application as filed. For the same token, acknowledgement of the prior art revealed by the search report may only be factual, cf. F-II, 4.3.
It should also not be forgotten that the passages relating to background art in the application as filed cannot serve as a basis for an amendment during examination/opposition. See e.g. T 1084/06, T 912/08 or T 1652/06.
The present decision is simply putting matters straight and the OD was ill inspired when it considered the amendment introducing D8 adding subject-matter.
I would also allow myself to add that the document acknowledged as closest prior art in the description of the patent is always part of the opposition proceedings, cf. T 536/88, T 541/98, T 454/02, T 86/03.
The whole system foreseen by case law and the upheaval created by T 1989/18 is taking proportions which are well beyond belief.
To sum it up: adding a mention of the prior art and especially indicating the closest prior art does not infringe Art 123(2). That in some jurisdictions, e.g. in the US it might have consequences is irrelevant for the EPO which is only bound by the EPC.
I fully agree with Patent Robot. Amending the description to mention a prior art document is useless since the entire file history is available online and opens up 123(2) issues as clear from this case. Ths is sheer waste of time and money for the EPO and the applicant, this is just shooting in one's foot. The applicant should resist an ED request to amend the description whenever this could raise a 123(2) issue.
ReplyDeleteAmending the claims to overcome a prior art document is useless since the entire file history is available online and opens up 123(2) issues. Everyone can clearly figure out the patentable bit.
DeleteThe applicant in this case just didn’t mention the prior art, they incorrectly characterised it. It takes no meaningful time or money to cite a document.
Rule 42(1)(b) EPC: The description shall indicate the background art which, AS FAR AS IS KNOW TO THE APPLICANT, can be regarded as useful to understand the invention, draw up the European search report and examine the European patent application, and, preferably, cite the documents reflecting such art.
ReplyDeleteTherefore, once an applicant indicates in the application the background art KNOWN TO HIM AT THE FILING DATE, there is nothing in the EPC which should force him to add the background art found BY THE EPO.
The EPO tradition of adding the citation of the prior art in the description comes from the time where the file wrapper was hard to obtain but nowadays the cited documents and the discussion on their relevance can be found in real time in the online Register, so that amending the description just for this purpose is totally useless, a waste of time and money. Moreover, it may even create 123(2) issues, as we have seen here, and further formal issues (e.g. due to the page renumbering).
P.S.: which other patent office has the same requirement?
"AT THE FILING DATE" is not in Rule 42(1)(b) EPC. Cited art is known to the applicant.
DeleteIn any case, the EPC doesn't expressly require lots of things, and the meanings have been clarified by the BoAs and EB, the same with any other legal system.
One's dislike for this requirement does not make it go away. For it to go away, Rule 42(1)(b) EPC needs to be deleted. Pointing to a conflict with Article 123(2) is tenuous at best, as found by the Board in this case.
Other patent offices' requirements are irrelevant.
In German patent law there is § 34 Abs. 7:
Delete"Auf Verlangen des Deutschen Patent- und Markenamts hat der Anmelder den Stand der Technik nach seinem besten Wissen vollständig und wahrheitsgemäß anzugeben und in die Beschreibung (Absatz 3) aufzunehmen."
Rough translation: On request of the DPMA the applicant has to state the state of the art to his best knowledge completely and truthfully and include it in the description.
There is a corresponding paragraph in the PatV (§ 10 Abs. 2 lit. 2) requiring this (for the initial description).
Many applicants don't name any state of the art (if the examiner finds state of the art by that very applicant often § 124 - duty to truthfulness - is mentioned...).
Examiners usually require the state of the art found during examination to be added to the description. Using § 34 Abs. 7, a refusal to do so will lead to a rejection of the application. Often, this is a nice shortcut for examiners and also the BPatG, when an applicant gives up on the application but a written decision is necessary, as this is usually the shortest possible decision.
Ok, you have convinced me: it is now time to cancel or at least amend Rule 42(1)(b) EPC and the corresponding German rule so that applicants do not have to USELESSLY amend the description.
Delete@Patent Robot
DeleteI see this differently. In German patent proceedings, the claims are construed using the patent publication. The prosecution file could be used only in exceptional cases. So while the public may be informed about the state of the art, the court would not necessarily consider this.
And, actually, putting the state of the art into the description can be helpful to the applicant, as the BGH states the claims should (usually) be construed to not cover the state of the art, from which the applicant tries to differ. So, without mentioning the state of the art, the claims might be construed wider and the state of the art then lead to invalidity of their matter. As long as the German courts deal with validity-proceedings for EP-patents, I think it would be advisable to mention the state of the art in the description.
Following from this, I think the description of the state of the art could in extreme cases lead to "added matter". To be honest, unless this is done on purpose, I can not imagine a real world case for this happening.
@Fragender
DeleteSo we should uselessly (and dangerously) amend a European application to please a national court?
@Patent Robot
DeleteAs long as the national courts decide on validity, it is probably helpful to follow the decisions in the designated states. Unless of course it is a patent for "the stack", which will not be used.
@Fragender
DeleteThe state of the art is already cited in any B-publication, so there is no need to amend the application for the German courts, unless you want also discuss the cited prior art in the application by ADDING arguments in this respect.
And following on from your logic, there is need to follow any laws/directions of courts.
DeleteFollowing on further from your logic, there is no need to amend claims either given the cited art is known.
Even further, why file patents at all, the state of the art is known. Just keep a list of your internal inventions and assert them later.
These arguments fall into the category of mistaking the rule of law for things I do not like.
@Anonymous
DeleteOk you convinced me: there is nothing more important in patent law than amending the description to cite the prior art already cited in the search/examination reports.
It seems to this reader that the best way to acknowledge prior art is for the examiner to cite it such that it appears on the front page of the B-spec, the agent then being free to deal with other matters instead of having to take a case to court to avoid complete revocation over something so minor.
ReplyDeleteAll this talk about the online EPO file as the basis of claim construction strikes me as a distraction. The UK Supreme Court, faced with a claim to construe, asks itself what the skilled reader would conclude from the B publication as answer to the question "What was the writer of the claim using the words of the claim to mean". To perform that task, the court takes the B publication as a single coherent document. Accordingly, it strikes me that it is not just the EPO that wants to see in the B publication conformity, and the invention set in the context of the prior art, but also the court. It's in the public interest too. A patent is a restraint on free trade. It should be granted only when Applicant presents a case persuasive enough to cancel free trade. Applicant protects an invention in words of their own choosing so they'd better be positively persuasive ones. Applicant lives or dies, not by the sword, but by words of their own choosing. Long may it continue to be so.
ReplyDeleteThere is no need to amend the description to convince an examiner to grant a patent. A letter and claim amendments are usually sufficient. Introducing the discussion on novelty and inventive step in the description is useless and moreover opens a door to art. 84, 123(2) and (3) EPC issues, considering how strict the EPO is on these provisions.
DeleteIMHO the description should never be amended, unless there are evident mistakes.
Your comments focus on the way things should be IYHO, not how they are. Some of us have to live in the the real world where the description and Article 84 EPC just cannot be ignored.
DeleteArticle 84 EPC needs amended or deleted to achieve your goal. What's stopping you moving this forward yourself? It is you that has the problem with it after all. Perhaps draft and file a test application that will get refused under Article 84 for not amending description, take it to BoA, and request a referral to EB and then explain why Article 84 has been leading us down the garden path for nearly 50 years.
As I wrote in the other thread, there is nothing in the EPC that requires the description to be supported by the claims (art. 84 requires the OPPOSITE), therefore the description should not be adapted to the claims and in particular there is no need at all to delete subject-matter not covered by the claims. Such a deletion may even raise issues of art. 123(2) and (3) EPC.
DeleteYou clearly have an understanding of the EPC at odds with accepted jurisprudence that the description should correspond to the claims.
DeleteYou interpret article 84 literally and ignore all BoA decisions who have interpreted it differently (the recent decision doesn’t even address the contradictory decisions, and has some seriously questionable reasoning) Even your literal interpretation has problems. For the description to support the claims, either the description or the claims can be amended for this to occur. Article 84 EPC is silent on how this can occur. So no, Article 84 EPC does not require the “opposite” as you put it.
I do not ignore the interpretation of Art. 84 EPC given by some BoA: I think that it is wrong and I hope that this issue will be solved by the EBoA.
DeleteFor some decades, the EDs never asked to delete unclaimed subject-matter from the description, so why should we do it now?
It is sufficient to copy the claims in the descrition to satisfy Art. 84 EPC.
With astonishment I read from Patent Robot its dismissive view of Article 84, EPC, that to satisfy it all that is needed is to "copy the claims" into the description. So, form is good enough for Article 84, and substance counts for nothing. Not only those who drafted Art 84 would turn in their graves if that became the established view.
DeleteFor one like me, who qualified for the EPO's Register of representatives through a grandfather clause, one of the greatest pleasures of my long career has been the emergence of the EPC and its Implementing Regulations, and the EPO's Estavblished Case Law. Other than in every other jurisdiction (where a Supreme Court makes the law) the law of the EPC is a triumph of substance over lawyerly "form". I never copy the allowed claimsd into the description, believing to this day that it makes no difference to the validity of the patent which the EPO is going to issue to my client.
Or with his newest remark is Patent Robot just making mischief, trolling this thread, being provocative just for the fun of it?
That said, there is of course an ongoing problem with over-zealous Examiners. What makes them do it? Trying to ingratiate themselves with the EPO's Quality Managers, mistakenly supposing that it will further their career.
@MaxDrei
DeleteI was just replying to the curious theory of Anonymous: "For the description to support the claims, either the description or the claims can be amended for this to occur."
If there is no support in the description, you should not amend the claims (terrible idea!) for this purpose only, since you can just copy the claims into the description:
GL F-IV, 6.6: Where certain subject-matter is clearly disclosed in a claim of the application as filed, but is not mentioned anywhere in the description, it is permissible to amend the description so that it includes this subject-matter. Where the claim is dependent, it may suffice if it is mentioned in the description that the claim sets out a particular embodiment of the invention (see F-II, 4.5).
It's only a terrible idea if you want to live in a world where Article 84 EPC does not exist. Your solution would also overcome a classic lack of support of objection - no need to narrow claims to essential features, just copy the broad unsupported claims into the description. Why stop there, we could overcome added-matter objections in the same way. Also if claim 1 as filed requires several features, but the description describes these features all as optional and as the invention, that is a contradiction that needs addressed. Copying the claims back does not help since you still have the rest of the description saying something else.
DeleteLack of essential features, to an extent, is also an objection under Article 83/56. How would your solution address these issues?
You have omitted the title of the GLs you cite - "Support for dependent claims". I wonder why you did this? Is it because it doesn't help you ignore Article 84 for claim 1?
This sounds like wanting to have it both way - cite a section of the GLs that (doesn't) supports your view and ignore the current GLs (albeit questionable) that requires substantial description amendments. For the record, I don't agree with the current GLs either but the second part of Articles 84 EPC has to count for something. Not amending the description is as much a solution as the EPO's current GLs, which is to say it is not a solution at all.
Again, the EPO rules are well established and understood. Applicants know this and still file applications where everything is optional, even when it is clear the invention cannot operate otherwise. Some combinations are mutually exclusive. Also claim 1 can be hopelessly broad compared to the description. Then blame the strict EPO's added-matter rules when trying to limit claim 1 to something that is actually supported. Never the drafter's fault for being too greedy, eh? Is improved (for the record not perfect) drafting not a solution?
I do wonder if it's forgotten that the patent system is also supposed to benefit the public and actually disclose an invention, not something so obfuscated that it hinders the public fining workarounds or improvements.
Serious question, patent robot, are you arguing in good faith?
Reading this thread makes me wonder what role do practitioners have to play in this?
ReplyDeleteUltimately, this line of attack was advanced by a practitioner. Some might say the rules are there to be exploited. That may be true but the choice to do so is entirely yours however.
It is important to stand back and view this case in context. That is, much like T 1989/18, it is just one decision that may or may not be followed by other Boards of Appeal.
ReplyDeleteThis means that, unless and until the view of the Board in T 0471/20 is established as "settled" case law, it would make sense for applicants to (continue to) take care not to add any text to even the "Background" section of the description that could arguably be viewed as introducing a subjective interpretation of the disclosures of a prior art document.
It also means that, despite the ruling in T 1989/18 (and despite how convincing one might find the reasoning of that decision), there is as yet no clear reason for the EPO to abandon its long-established practice of requiring the description to be brought into line with the claims as allowed.
Lastly, it also means that, despite the issuance of Board of Appeal decisions that demanded a "strict" approach to adaptation of the description, the EPO was under no obligation whatsoever to update its Guidelines for Examination to effectively demand adherence to such a strict approach. The decisions in T 1989/18 and T 0471/20 illustrate perfectly why taking such a hard-line stance was not only legally questionable but also extremely "applicant-unfriendly".
In this regard, it is noteworthy that the EPO did not consult with its users before introducing changes to the Guidelines that have been strongly opposed by the patent profession. One has to question why this happened, especially now that the EPO appears to be prepared to backtrack at the earliest possible opportunity. Based upon the evidence, my conclusion is that the EPO now rules by diktat, unless it is forced to do otherwise. Other evidence supporting this includes so-called "consultations" that the EPO has recently conducted (such as that on Art 15a RPBA) ... where it seems that the conclusion is predetermined, and where those expressing different or contradictory views are simply ignored.
On the general topic of consistency between the description and the claims, an important decision is T 1642/17, which appears to reflect settled case law since it is cited in the 2020 issue of the case law of the BOAs (II.A.6.3.) published in the OJ in 2021. Quote from Reason 3 :
ReplyDelete“However it is established case law that in cases where the claims and the terms used in them are clear when read on their own, for instance because they have a well established meaning in the art, the unambiguous claim wording must be interpreted as it would be understood by the person skilled in the art without the help of the description. (see decisions T 2221/10 and T 197/10, as well as Case Law of the Boards of Appeal of the European Patent Office, 9th edition 2019, II.A 6.3.1). As set out in the latter decision, "in the event of a discrepancy between the claims and the description, the unambiguous claim wording must be interpreted as it would be understood by the person skilled in the art without the help of the description".
This implies that there should be no requirement to delete from the description an embodiment not covered by the claims, assuming the wording of the claims is clear.
I recently found a case in which the applicant had deleted a phrase in a claim to overcome an Art 84 objection, only for the ED to withdraw the objection and reinstate the deleted phrase of its own motion as part of the 71(3) communication, citing 123(2) concern.