EPO Board of Appeal toes the party-line on description amendments (T 1024/18)

Following on quickly from the controversial Board of Appeal decision T 1989/18, in which the description amendment requirement was found to lack legal basis, comes another Board of Appeal decision concluding the opposite. T 1024/18 is an appeal decision revoking EP 2609899 on the grounds that an amended description had not been filed with the allowable amended claims on appeal. 

Legal Background: Description amendments

The requirement to amend the description of a European patent application in line with the scope of the allowable claims is an idiosyncrasy of European patent practice. The current Guidelines for Examination require substantial amendments such that the description does not contradict the allowable claims (H-V, 2.7 and F-IV, 4.3(iii)). Applicants are required either to delete subject matter no longer covered by the claims or explicitly state that the offending subject matter does not fall under the scope of the invention. 

Deleting subject-matter

Applicants are understandably reluctant to make substantial amendments to the description, given the potential impact of amendments on how the claims may be interpreted under the doctrine of equivalents in infringement proceedings (which goes beyond the "normal meaning" applied to the claims during examination required by the EPO Guidelines for Examination, F-V, 4.2). Another concern with the current requirements is the time and cost associated with having to make extensive amendments to an otherwise allowable specification. No other jurisdiction (as far as this Kat is aware) forces applicants to amend the description in line with the allowed claims. It is therefore a mystery to many attorneys why the EPO insists on placing this arguably unnecessary burden on applicants. After all, isn't the monopoly awarded by a patent defined by the claims? 

There is, of course, the argument that the description should be used to interpret the claims (Article 69 EPC), and thus that a disparity between the description and the claims may make the scope of the claims unclear. However, the EPO Guidelines indicate elsewhere that "[e]ach claim must be read giving the words the meaning and scope which they normally have in the relevant art" and further "require the claim to be amended whereby the meaning is clear from the wording of the claim alone. This is important because it is only the claims of the European patent, not the description, which will be published in all the official languages of the EPO" (F-IV, 4.2, emphasis added). It could also be asked whether, if the Examiner is able to identify which parts of the description need amending because they do not correspond with the scope of the claims under a normal interpretation, does this not demonstrate that the scope of the claims is clear? 

In a recent decision (T 1989/18), published online at the end of 2021, a Board of Appeal failed to find any legal basis for the description amendment requirement (IPKat). This decision caused a considerable stir, given the controversy that already surrounded description amendments following a strengthening of the requirement in the 2021 Guidelines for Examination. The decision in T 1989/18 raised the question of whether Examiners would stick religiously to the Guidelines or if they might be persuaded to follow the explicit reasoning from the Board of Appeal in T 1989/18 (although the latter was considered this unlikely).

T 1024/18: "Supported by the description" is a distinct requirement to clarity and means "supported by the whole description"

T 1024/18 was an appeal case from the opposition division (OD) decision to maintain EP 2609899. At oral proceedings the Board of Appeal rejected the main request. The claims of an auxiliary request (AR) were considered allowable. However, the patentee failed to file an amended description in line with the AR claims, and the Board of Appeal therefore revoked the patent (for procedural efficiency without remittal to the OD). 

The Board of Appeal in the case (3.2.06) found legal basis for the description amendment requirement in Article 84 EPC:

The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description. 

According to the Board of Appeal, there is long-established case law interpreting Art. 84 EPC as requiring the entirety of the description to be consistent with the allowable claims (T 0977/94, r. 6.1; T 0300/04, r. 5; T 1808/06, r. 2). The Board of Appeal noted the contrary reasoning in T 1989/18, that inconsistencies in the description do not affect the clarity of the claims since the claims themselves should be clear without reference to the description. T 1989/18 also found that Art. 84 EPC requires the claims to be supported by the description only to the extent that the claims should not include subject matter that does not have basis in the description. As such, additional subject matter in the description that does not appear in the claims is not prohibited.  

For the Board of Appeal in T 1024/18, however, Art. 84 EPC is not concerned solely with the clarity of claims, but with their clarity, conciseness and support. For the Board of Appeal, therefore, "the criterion that the claims be "supported by the description" is not in any way subordinate to the requirement of "clarity" of the claims, but is a requirement of its own". 

The Board of Appeal in T 1024/18 further reasoned that merely providing a part of the description which gives support to the claims "appears at odds" with the support requirement of Art. 84 EPC. For the Board of Appeal in this case it was necessary for the claims to be supported by the entire description. For this Kat, the Board of Appeal reasoning at this point becomes rather circular:

'to provide only support for the claims in one single passage of the description while the rest of the description might give a different or even contradictory meaning to the claims, would in essence negate the general meaning of the words "support by the description"' (r. 3.1.8)

Or to paraphrase, "supported by the description means supported by the whole description, because that is what supported by the description means"... Nonetheless, following this reasoning, the Board of Appeal concluded that the requirement in Art. 84 EPC for the claims to be supported by the description includes the requirement that the description is consistent with the claims throughout. As such, the description should be amended so that the reader is not presented with any information conflicting the wording of the claims. Given that the patentee in the case had not filed an amended description in line with the otherwise allowable AR, the patent was revoked. 

Final Thoughts

Interestingly, T 1024/18 has been given a "C" distribution, and been awarded a place in the "Selected Decisions" section of the Boards of Appeal website. By contrast, T 1989/18 was only given a "D" distribution and did not appear as a Selected Decision. Does this difference in treatment of the two conflicting decisions tell us what the EPO considers to be the "correct" interpretation of the law on description amendments? 

It is possible that some Boards of Appeal and Examiners were unaware, prior to the reaction to T 1989/18, of the depth of feeling by EPO users on the issue of description amendments. Despite the disputed legal basis, it will be rare event for a patentee to sacrifice the grant of an otherwise allowable case (or justify the cost and time of an appeal) for the sole purpose of taking a stand on description amendments. The willingness for applicants to conform to the description amendment requirement thus should not be taken by the EPO as a sign that users are content with the status quo stipulated by the current EPO Guidelines. 

As things currently stand the legal basis for onerous description amendments is disputed. Will T 1989/18 be a one-off decision, with future Boards of Appeal falling in line behind T 1024/18, or will this issue eventually require a referral to the Enlarged Board of Appeal (EBA)? In the absence of any sign from the EPO that there is a willingness to ameliorate the current Guidelines, any change will most likely depend on the appetite of EPO users to challenge the current approach. 

Further reading

Board of Appeal finds no legal basis for the requirement to amend the description in line with the claims (T1989/18) (26 Dec 2021)

Can amending the description to summarize the prior art add matter to the patent application as filed? (T 0471/20) (5 Jan 2022)

Changes in the draft 2022 EPO Guidelines for Examination on description amendments: Substantial changes or window-dressing? (7 Feb 2022)

EPO Board of Appeal toes the party-line on description amendments (T 1024/18) EPO Board of Appeal toes the party-line on description amendments (T 1024/18) Reviewed by Rose Hughes on Monday, April 04, 2022 Rating: 5

48 comments:

  1. Rose, if I see it right, in your "party line" case, T1024/18, the Rapporteur is somebody who came to the Boards of Appeal after a successful career in examining applications at the EPO while the Chair came from a successful career in private practive at a well-known, established and respected European patent firm.

    As to the maverick decision T1989/18, I don't know anything about its authors, and their backgrounds. Who here does, I wonder.

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  2. Rose, you correctly note that the Guidelines state that: 'However, the EPO Guidelines indicate elsewhere that "[e]ach claim must be read giving the words the meaning and scope which they normally have in the relevant art" and further "require the claim to be amended whereby the meaning is clear from the wording of the claim alone.". However, the present decision focuses on the "support" requirement of Art. 84, not on the "shall be clear" requirement of Art. 84. Hence the comments in the GL do not diminish the validity of the reasoning of the present Board in any way, in my view.

    The same observation can be made for your argument that "does this not demonstrate that the scope of the claims is clear?".

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  3. I would like to add

    1) The chair of the board might have come from private when he was appointed as technical member of the boards, but was previously, and for quite a while, himself examiner at the EPO.

    2) the lead legal member in T 1024/18 was, before being appointed at the BA as legal member, member of directorate 5.2 which supports examining and opposition divisions when legal questions arise.

    T 1024/18 does thus not come to me as a surprise.

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  4. Reply part 1

    I never understood the frenzy that has taken over the profession after the publication of T 1989/18.

    A careful look at the case law would have made abundantly clear that the hopes raised in the profession that the description would no longer have to be adapted to the claims was more wishful thinking than a realistic assessment of the situation.

    T 1024/18 has set the record straight. It is by far not an isolated decision but there have been many other decisions before, and especially after T 1989/18, which have confirmed the fact that the description must be adapted to the claims.

    If boards directly decide grant or maintenance in amended form in the presence of an adapted description or refer back to the first instance for adaptation of the description, they make clear that the description must be adapted to the claims.

    The T 1989/18 interlude is over! I think that T 1024/18 was greeted with a sigh of relief at the EPO.

    Relying on a referral from the President for a one-off decision that goes against the prevailing jurisprudence is wishful thinking.

    I further fail to see why the reasoning of the board has become “rather circular”. Art 84 has the triple function to insure that the claims are
    - clear in the ordinary meaning of the word;
    - concise
    - supported by the description, which has a specific meaning which was reminded in T 1024/18.

    In T 696/16 the ED had argued that there the description did not disclose a way of carrying out the invention claimed, cf. R 42(1,e). For the ED the claims were not supported by the description as in its opinion a link was missing between claims and description. The board disagreed and found that the spray head depicted in the figures met the requirements of R 42(1,e) in that one way of carrying out the invention claimed was disclosed.
    In T 758/13 the board held that that the repetition of the wording of the claim in the description does not provide support for claim 1 of the second, third, fourth and fifth auxiliary requests and hence confirmed the refusal of the application.

    Those two decisions make clear that description should be in correspondence with the technical teaching of the claims.

    Conversely, all decisions according to which the description should be adapted to the claims have the aim to make clear that the description should not allow a different interpretation of the claims than that which directly results from their wording.

    The claims ought to be clear as such without recourse to the description, but this does not mean at all that the description could allow a different interpretation of the claims. If this would be considered allowable, it would deprive the last condition in Art 84 of any meaning.

    The board was right in T 1024/18, when requiring that the description should be amended so that the reader is not presented with any information conflicting the wording of the claims. Given that the patentee in the case had not filed an amended description in line with the otherwise allowable AR, the patent was revoked.

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  5. Reply part 2

    The Boards of Appeal and Examiners are, independently of T 1989/18, well aware of the depth of feeling by EPO users on the issue of description amendments. Contrary to what is said the legal basis is not disputed at all. The legal basis has just been reminded in T 1024/18 whereas T 1989/18 just muddled the issues. But being aware of the depth of feeling of dissatisfaction of the users does not mean that the legal requirements can be ignored.

    That some divisions had a rather pedantic approach and other were simply not bothering is not a licence to ignore legal requirements. This was the meaning of the amendments of the Guidelines in 2021 and 2022.

    If an applicant/proprietor files new requests and absents himself form the proceedings, the requests should not only comprise new claims, but a description adapted to all the various requests
    - the application is refused T 893/01, T 109/02
    - the patent is revoked T 725/00, T 986/00
    Those decisions are exemplary of many more.
    There are also boards which remitted to the first instance to adapt the description in spite of the absence of the party at the oral proceedings, for instance T 484/12.
    In T 1024/18 the proprietor was absent and the board refused to remit in accordance with previous decisions.

    If by any chance the last sentence of Art 84 was to be deleted, then, indeed, there would be no need to adapt the description to the claims.
    Should this occur, the applicant's statements during examination would then have to be taken into account in a dispute over the interpretation of the granted claims. In other words, it is not possible to have your cake and eat it.

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  6. Point 3.1.9 of the decision in T 1024/18 finally reveals the real reason why, in recent years, the EPO has started insisting upon a very strict standard for adaptation of the description:
    "Inconsistencies between the claims and the description could thus - in particular in national proceedings - be the source of diverging interpretations as regards the scope of the claims. Accordingly, misinterpretation could be avoided in particular if inconsistent information contained in the description or drawings is already removed in the proceedings before the EPO".

    Thus, the EPO's aim is to ensure consistency of post-grant claim interpretation between different national courts. However, this is not a legitimate objective for the EPO to pursue.

    Firstly, the role of the EPO is to grant patents, and not to set into concrete a specific interpretation of the claims of the patents that it grants. To do so would tie the hands of the national courts, making it pointless for them to consider submissions from litigants upon the interpretation of the claims.

    Secondly, when it comes to interpreting the claims of an application, EPO examiners never conduct a comprehensive analysis of the language of the claims. Indeed, EPO examiners never seek evidence from persons of ordinary skill in the art with regard to the meaning conveyed by claim wording. They also never consider equivalents.

    This second point is very important. No EPO examiner (or OD or Board of Appeal) can possibly know which disclosures of the description are "inconsistent" with the claims if the extent of protection conferred by the claims has never been properly determined, ie in the light of relevant expert evidence, and with full consideration afforded to both articles of the Protocol on the interpretation of Article 69 EPC.

    Thus, the EPO's "strict" standard for adapting the description deprives applicants of the full extent of protection to which their inventions are entitled.

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  7. Finally, the argument in T 1024/18 that "inconsistencies" in the description could give rise to divergent claim interpretations is itself inconsistent with established case law on claim interpretation. To illustrate, consider the following quotes from the Case Law book.
    T 1018/02: "the description could not be used to give a different meaning to a claim feature which in itself imparted a clear, credible technical teaching to the skilled reader".
    T 177/08: "the second sentence of Art. 69 EPC did not apply to cases where an unambiguous and generally accepted definition of a term figuring in the claims was to be superseded by a different definition found in the description".
    T 1896/11: "the description could not be used to give a different meaning to a claimed method step which in itself imparted a clear, credible, technical teaching to the skilled reader".
    T 2563/11: "the appellants had contended that the prohibition on double patenting did not apply because, despite their identically worded independent claims, the parent patent and the divisional application had different descriptions and so each conferred a different extent of protection under Art. 69 EPC. The board observed that the important point for the purposes of the prohibition on double patenting was whether the "same subject-matter" was claimed. A claim's subject-matter was defined by its category and technical features (Art. 84 EPC and R. 43(1) EPC). The description was therefore irrelevant in establishing whether the same subject-matter was claimed, especially if the claims in question were anyway clear and understandable in themselves".

    Therefore, in addition to being nonsensical, the interpretation of Art 84 outlined in T 1024/18 aims at achieving an illegitimate objective (one that usurps the role of the national courts, deprives applicants of their rights and effectively renders otiose Article 69 and its Protocol) and flatly contradicts established EPO case law. For these reasons, a return to a more relaxed (and more sensible) approach to adaptation of the description cannot come soon enough.

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  8. On Reasons 3.1.9 I have a question for readers: what basis does the Board have for its assertion that, when the patent is litigated, diverging interpretations of the scope of protection will inevitably occur, unless the EPO takes it upon itself to require amendment of the description until it "conforms" 100% to the allowable claims. You see, I don't believe it. It also strikes me as somewhat patronising of the patent judges of the jurisdictions within the EPC.

    Now I do get it, that one important purpose of Art 84 EPC is to allow readers of the grnted patent to work out for themselves what infringes and what does not. Of course the claims should be clear, before they are allowed. The thing is though, I am (still) not convinced that making 100% "conformity" a condition of compliance with Art 84 will do anything much to raise the level of certainty with which we decide what infringes a duly issued claim and what does not. Where is the basis for this Board to assert that, on the contrary, it will make all the difference? Is it anything more than the commonsense gut feeling of the Board members?

    Forcing strict conformity is i) expensive ii) sets up myriad fresh and promising new points under Art 123(2) EPC that can be taken whenever a party wants to put patent validity in dispute, and iii) is liable to put endless numbers of pending patent applications into the Bermuda Triangle (Art 84 vs 123(2) vs 54/56) resulting in loss of protection for deserving inventions, even before the application gets to issue. The EPO retort, that Applicant is author of its own misfortune, and should have drafted the application more thoughtfully, is understandable but not likely to endear the EPO to its customers, the ones who finance the service the EPO provides to innovative industry.

    Perhaps one day the point will go to the TBA, where extenal members who are national judges can help EPO insiders to a view which everybody can accept as pragmatic, fair and efficient.

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    1. Agreement between the description and drawings of an embodiment and the claims, does not necessarily clarify the scope of the claims, especially where the patent was granted in a different language from the language of legal proceedings and translations have to be relied on in litigation. I described real-life problems of this nature I had personally encountered in an article that was published in the December 2003 CIPA journal (Pilgrim step-like backwards reproduction: some potential translation problems with the proposed Community patent), highlighting what can happen when there is no exact unambiguous translation of even a word as simple as the German EIN, which can be translated as either "ONE" or "A" in English.

      Agreement between the claims and description of the German text was of no help in providing legal certainty in the English-language proceedings, where the client's "TWO" would not have infringed the "ONE" of the granted English claims (or the French "UN SEUL") published by the EPO, but might have infringed the "A" of the translation filed with the UK court during preliminary proceedings.


      The embodiment only described and illustrated a single "EIN " of the item in question.

      As the action was settled before trial, the question of whether the claims published by the EPO or the claims subsequently filed with the court was never decided, but it raised the possibility that, had the "A" claim version been accepted for the UK, and the French "UN SEUL" version accepted for France, client's product featuring "TWO" would have infringed in the UK , but not in France.

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  9. Dear Max Drei and dear Proof of the pudding

    I have sympathy with your position and understand that you would like the description to be left untouched as much as possible.
    According to Art 84 and the corresponding established case law, a claim should be clear by itself without having recourse to the description. This does not mean the any statement in the description which allows a different interpretation of the claims, should necessity arise to look at the description, can be left in the description.
    It should not be allowed to leave in the description statements which allow to raise doubts about the interpretation of the claims. This has nothing to do with patronising national courts or not leaving them without any possibility to interpret the claims.
    If for instance a claim is limited by an optional feature, the description has to be amended so that the feature ending in the independent claim cannot not any longer be considered as merely optional.
    If embodiments are not any longer falling under the granted claims, what harm is there done when specifying this in the description. Whether those embodiments have to be deleted is a different question, and they could well be left in the original description in order to avoid any potential problems under Art 123(2). But simply leaving the description untouched would give a proprietor the possibility to extent the scope of the granted claims to features which are not covered by the claims.
    I fail to see how both those aspects would be limiting the possibility of national courts to decide on the interpretation of a claim? I do not think so. But I understand that the proprietor would like to be able to do so should necessity arises. But this is not what Art 84 provides for.
    What is to be criticised is the sometimes pedantic approach taken by some divisions. There is no doubt about this and the amendments to the Guidelines have attempted to limit such excesses.
    It is not because the EPO is actually paid by its users that the users should be free to decide what they want to see left in the description. The users have not defined the legal requirements, but the legal requirements are also there to defend an important stakeholder: third parties. Too often this aspect is forgotten.
    Claiming that the interpretation of Art 84 outlined in T 1024/18 is nonsensical and aims at achieving an illegitimate objective is at best to be considered as grossly excessive. T 1024/18 is by no means contradicting established EPO case law. The bulk of the case law provides that the description has to be adapted to the claim and it is difficult to understand that this should not be the case for whatever reason brought forward by representatives.
    That representatives see the interest of their clients is legitimate, but this is not necessarily the interest of the EPO which has, as said, also to take care of third parties. The monopoly given by a patent should be limited to the actual contribution to the art and not be possibly extended in some obscure way by leaving the description more or less untouched.
    In any case there is not generally valid of doctrine of equivalents in all contracting states of the EPC. As long that is not the case, and I fear that this will never occur, the description will have to be brought in conformity with the claims.
    The Contracting States did not agree on a definition of equivalents when amending the Protocol on Art 69 during the Diplomatic Conference of 2000, as Art 3 of the protocol proposed by the EPO was scrapped. However, this should not be taken as pretext to leave the description as it was originally filed so that the proprietor can attempt to give an interpretation as broad as possible to claims which by essence have to be clear as such by their wording.
    It reminds of the say of a well know late French lawyer, Me Mathely not to name him: the proprietor discovers his patent on the day of infringement. How true, when I see the frenzy of the profession in matters of adaptation of the description.

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    1. Daniel, on this occasion we shall just have to agree to differ.

      In my view, it should be enough to add a statement along the lines of "the invention relates to the subject matter defined in the attached claims", and to ensure that the description does not describe any (clearly) different or contradictory subject matter as "the invention". Anything going beyond this, which includes the current Guidelines, is reaching into the territory of tagging each and every individual disclosure of the description as relating to subject matter that is either "in" or "out" of the scope of the claims. This is where the adaptations to the description start to have the negative effects that I previously described.

      Frankly, it seems to me that the GL have been written with "simple" inventions in mind ... and certainly not those in the chemical or life science fields. This is because the principles outlined in the GL simply do not work well (or at all) for the myriad of confusing situations (including unclear and/or partial overlap) that can arise when compounds are described in generic terms, for example using Markush formulae. The situation can be especially difficult for very long descriptions (which are very common in the chemical and life science fields) that, in addition to using generic descriptions / formulae, provide specific (and sometimes complicated) definitions for long lists of terms used in those descriptions / formulae. For such cases, even if one wants to comply with the current GL, finding the right amendments to do so - without generating added matter / other invalidity risks - can be an absolute nightmare ... for essentially no discernible benefit to the public.

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    2. I have a deal of sympathy with much of what you say and am surprised that there seems to so much resistance to amending the description and drawings to conform with the claims. I trained in the 1990s and was taught to do this as a matter of course. It seems to me that if Article 69 EPC is to be followed and the description and drawings are used to interpret the claims, it is particularly unhelpful to have to wade through a load of material describing 'embodiments' of the invention, that are no longer covered by the claims and not, at least, marked up as such. I have just had to advise on infringement of a European patent in which description of various ‘embodiments’ that appear to be outside the scope of the amended claims was retained (although this was only about 95% certain because the description was generally speaking unclear) and would very much have appreciated the applicant being requested to justify retaining the material in question. For me, requiring that the description and drawings are consistent with the claims is entirely reasonable and supported by the requirements of the EPC.

      However, I really cannot accept, and have often argued against, the balderdash that Article 84 EPC requires that a claim should be clear by itself without recourse to the description. In reality, the majority of claims simply cannot be understood without recourse to the description and drawings. For example, in the case of many mechanical inventions, parts are specified in the claims that have no recognised name, so are given a name of choice by the author of the patent. Even in cases in which recognised terms, eg amplifier, are used, it is more often than not impossible to determine what a claim really means without reading the description. A more sensible interpretation of the clarity provision in Article 84 EPC is that a claim should be laid out in a logical manner and not unnecessarily convoluted (but then wait until you've needlessly tried to put it in the two-part form) and that it does not contain internal inconsistencies. As I often argued, and no doubt many others before me have done likewise, if a claim is supposed to be clear by itself, there is no point to Article 69 EPC and the Protocol, unless of course, the legislator was barmy enough to intended that entirely different standards of clarity apply to examination at the EPO and proceedings before the courts.

      Going off on a slight tangent, I have noticed of late, EPO examiners making significant changes to the description when sending out a Rule 71(3) EPC Communication, with only the barest explanation, eg matter irrelevant or casts doubt on the scope of the claims. Applicants/representatives are now required to give chapter and verse explanations of the basis for amendments and I really do not think it unreasonable that examiners making anything more than an obvious correction should not provide reasoning to support the changes made. As those of us on the representative side of the fence know, if an EPO examiner's amendment gives rise to problems post-grant, it is us that bear the consequences and the examiner will just say 'Your problem, nothing to do with me guv'.

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  10. This in haste, because I want to get my point in while the thread is active but have not enough time today properly to mull over the thoughtful stuff others have written. So please forgive, if I don't give your writings sufficient deference.

    Mr Thomas, you say that the debate about conforming the description "has nothing to do with" patronising national judges who will look into infringement and validity after issue but, for me, that answer is not good enough. If I were a judge, I should prefer to have the case argued in front of me on the basis of i) the claims as issued and ii) the supporting description and drawings as they were on the filing date. That way, the issues are clear, and not muddied by the presence of a description full of text changes which might or might not comply with Art 123(2) EPC. It is all very well in theory arguing that 100% conformity cn be achieved by changing the text of the description during prosecution but, in practice, that is often not achievable. ED's are then in a bind. Do they refuse for failure to comply with Art 84? Or do they swallow their misgivings in order to let the inventor get protection for a clearly deserving invention? I think that ED's ought not to be put into this invidious position and I think that inventors should get what they deserve, even when the (first class) EPO search reveals art that confounds even the best efforts of a competent drafter. I admire the EPO for its efforts to deliver to national judges claims that are clear enough in themselves, clearly enabled over their scope, and clearly novel and not obvious, those claims being within specifications that are clearly free from added matter. But, I still think the EPO's insisting on 100% conformity is i) tantamount to being patronising to the national courts and ii) makes the job of those judges to serve the interests of justice between the parties harder rather than easier.

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  11. Very quickly, another thought occurs to me, from the "representative" side of the debate.

    We are often called upon to construe an A publication and render from it an opinion on infringement and validity, on the basis of which client will (or will not) invest in building a new production facility (or whatever). Millions of dollars hang on that opinion, up to the end of the 20 year patent term.

    Years later, a patent juidge will construe the corresponding B publication and then render an opinion on infringement (by the accused embodiment) and validity (including whether matter was added during prosecution at the EPO).

    The question is: EPO insistence on amending the description, comprehensively and exhaustively, chasing 100% conformity with the allowable claims; does that render the judge's task any easier?

    D X Thomas surmises that it does. I assert that it does not. To the contrary, I think it complicates the judge's task.

    Where do other readers stand, on this interesting question.

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  12. A quick reply to this:

    "No other jurisdiction (as far as this Kat is aware) forces applicants to amend the description in line with the allowed claims. It is therefore a mystery to many attorneys why the EPO insists on placing this arguably unnecessary burden on applicants. After all, isn't the monopoly awarded by a patent defined by the claims?"

    The UK for one has the same requirement - based, of course on having the same law.

    And as others have commented, when it comes to assessing infringement it is a good thing; even before Actavis brought us the joy of equivalents, the principle of purposive construction required reference to the description to understand the terms of the claims, and if the description wasn't aligned with the claims, interpretation became difficult. And of course difficult interpretation leads to less legal certainty.

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    1. I can't recall the last time the UKIPO asked for the description to be updated in the draconian manner being required by the EPO.

      The EPO approach makes no sense; as noted in the article, the decided scope of the invention has been defined by the claims, and to suggest that the description would somehow confuse litigants (when it did not confuse the Examiner e.g. when considering Art 123) is patronising.

      The biggest issue though is *when* to made these deletions - no one wants to delete possible sources of amendment before an allowable set of claims has been reached - but we only know they are allowable when the Rule 71(3) communication has been issued - but now we have the catch 22 issue that a Rule 71(3) isn't issued until the description is fixed, and we don't know when to fix the description until a rule 71(3) is issued.

      It is a ridiculous problem of the EPO's own making and will coast either clients or representatives a lot of money, as well as risking the loss of otherwise valid patents.

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    2. The above commenter writes: "no one wants to delete possible sources of amendment before an allowable set of claims has been reached" . I don't understand this point. Article 123(2) is based on the application as filed, not on the application as amended. It is not assumed that applicants irrevocably abandon subject-matter when deleting claims, alternatively a remark with that purport can be made in the accompanying letter when submitting the amendments.

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    3. Peter, can you introduce in the claims subject-matter deleted from the description (i.e. not present at all in the granted patent) during opposition proceedings, without violating Art. 123(3) EPC?

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    4. This is incorrect. In recent Patent Practice Working Group meetings it has been confirmed that the UKIPO has gradually dropped expectations to amend the description, only asking for this where not doing so would cause difficulty for the skilled person reading the amended claims.

      Like the Kat I am unaware of any EPC contracting state requiring amendments to the description in the manner of the EPO.

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    5. In reply to Patent Robot: CLBA II.E.2.3.2: "As summarised in T 1481/14, the grant of a patent is not necessarily an automatic and final cut-off point ruling out any reinsertion of deleted subject-matter whatsoever." The prominent decision suggesting a kind of cut-off effect is T1149/97, but note r.6.1.11 of that decision ("Adaptation of the description and the drawings to the wording of amended claims intended for grant is fundamental under Articles 84 and 69 EPC"). Note also that in r.6.1.15 the Board identified a plain objection under Article 123(2).

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    6. @John Foxe - Does the UKIPO intend to publish this change in practice? Or have I missed the publication?

      I've been dutifully amending the description for years and was shocked when a recent notice of allowance gave us the opportunity to amend before grant, despite the SoIs not being aligned with the claims. Of course we jumped at this chance. Pity the poor blighter who has to work out what the inventive concept of that patent is.

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    7. @Anonymous - in my experience, the examiners I deal with at the EPO are still allowing the practice of leaving the spec alone until agreement is reached on the claims. Some then do it themselves, others give me a call and tell me to bring it into line to secure grant. I prefer the latter approach.

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    8. A few points about UKIPO practice from my personal experience as an examiner in the 1970's and 80's.

      The former 1949-Act practice of examiners meticulously reading the entire description and checking its technical accuracy, changed under the 1977 Act, when examiners were, as set out in the publicly-available Manual of Patent Practice, instructed to only read as much of the description at the search stage as was necessary to understand the claims to allow them to carry out a search. Nor were examiners expected to give the description a thorough going-over at the examination stage. The object seems to have been to make the office more efficient (by spending less time on examination to increase productivity and meet performance targets). A couple of decades ago there was even a proposal in a consultation document (not adopted), that amendment of the description should no longer be allowed, in order to save examiners spending time and effort in considering them. From memory, it was alleged to be based on an embryonic EPO proposal that I never did manage to find any trace of. This was the consultation which resulted in omnibus claims ceasing to be allowed. So conforming the description to the claims, which would affect an examiners' productivity, was clearly not high on the Patent Office's objectives, which seem to have been directed to reducing the amount of intellectual effort expended during examination in order to maximize case throughput. .

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  13. Many insightful comments on this thread ! « Proof of the Pudding »’s analysis of T 1024/18 was welcome as well as DX Thomas’views, even if I do not share them. A few personal views of an industrial practitionner :
    - When alternative embodiments are deleted in the granted patent, this is a loss of information. One has to compare the granted patent with the published application in order to retrieve the description as filed. Only for this reason, I prefer the US approach of leaving the description untouched.
    - Deletion of subject matter entails the risk of distorting the interpretation of the claims on the basis of information acquired after filing. It also requires careful review of Art 123(2) issues by the ED.
    - The EPO’s focus on adapting the description to the claims as allowed is curious, when at the same time the EPO’s unofficial policy is to consider the review of sufficiency under Art 83 as an issue to be left for third parties to raise by Art 115 observations or opposition. Recently, a seasoned examiner told me that in his decades of experience, he had only seen two refusal decisions based on Art 83.
    - The BOA’s concern in T 1024/18 Reason 3.1.9 about divergence between national courts is difficult to understand considering the broad gaps which subsist between national courts over major issues esp. assessment of inventive step and the doctrine of equivalents.

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  14. The biggest mistake of the EPO is to consider unclaimed subject-matter as an "inconsistency" between the description and the claims.
    The EPO is the only patent office in the world requiring the deletion of unclaimed subject-matter, though there is no requirement at all in the EPC in this respect (certainly not in Art. 84).
    The only serious analysis has been made in T 18/1989 (if you read e.g. T 1808/06 you will see that it just copies the Guidelines requirement).
    Even the Case Law 2019 does not contain any indication in this respect and explains correctly the support requirement:

    "5. Claims supported by the description
    5.1. General principles
    Art. 84 EPC stipulates that the claims must be supported by the description. This requirement means that the subject-matter of the claim must be taken from the description and it is not
    admissible to claim something which is not described."

    It is thus time that applicants and proprietors say "no" to the deletion of unclaimed subject-matter.

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    1. Unfortunately, if the examiner does not notice that a claim has no support in the description, it is not a ground of revocation if lack of support only becomes apparent after the opposition period has expired.

      In an infringement action where the client was alleged to have infringed three German-language EP patents, a feature of claim 1 of one patent was an analogue to digital (A/D) converter, a technology I happened to be thoroughly familiar with from my pre-patent career as an electronics engineer and pre-patent attorney career as a patent examiner examining electronic circuitry. It was immediately apparent to me from drawing out the arrangement of claim 1 that the claimed A/D converter related to a completely different type of A/D converter from the one described and illustrated in the description, and that its only support in the description and drawings was in the shorthand form of consistory clause. It did however read on perfectly to an unclaimed A/D embodiment in another of the family of patents. I can only presume that the claims must have got muddled up before filing, and the inventor, who had presumably checked the draft, didn't understand the patentese of the claim language and assumed that the patent attorney knew what he was doing. Because the claim itself, taken in isolation, was perfectly clear, I assume that the EPO examiner hadn't felt it necessary to refer to the description. Advice from our legal team confirmed that this lack of support was not a ground of revocation. So support for claims in the embodiments themselves rather than just via the statement of invention, is something that the patent offices ought to check for during examination. Otherwise the applicant will be granted a monopoly without having provided the public with a proper teaching of how to carry out the invention.

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  15. I will not bother to reply in detail to the comments finding that the description should not be adapted to the claims, and especially to proof of the pudding.

    Just one comment: it is actually the lack of a properly adapted description in the pemetrexed case which allowed the proprietor to later claim more than what he had contributed to the prior art that is the combination of pemetrexed disodium and an antifolate like Vitamin B12.

    I just wish to draw your attention to two decisions published today 08.04.2022 which show clearly that the boards are not prepared to follow T 1989/18.

    In T 2613/18 the board held that a claim which is inconsistent with the description is not supported by the description under Art 84. The requirement of "support by the description" reflects the general legal principle that the extent of the patent monopoly, as defined by the claims, should correspond to the technical contribution to the art in order for it to be supported or justified (see e.g. T 133/85, Headnote 1; T 409/91, Reasons 3.3).

    The application was refused for lack of IS, but the refusal was confirmed as claim 1 of the MR was not supported by the description and AR1-4 were not admitted in the proceedings as being late filed.

    In T 121/20 the patent could be maintained in amended form according to AR4. Relying on T1989/18 the proprietor considered that there was no general provision in the EPC that required an adaptation of the description.

    The board made clear that it did not follow decision T 1989/18.

    In this respect the present Board agreed with the reasoning set out in decision T 1024/18 (see point 3.1 of the reasons), that the provision of Art 84 relates to claims in general and actually covers three distinct requirements on claims, namely their clarity, their conciseness and their support by the description.

    According to the board, the requirement of "clarity" of the claims, but is a requirement of its own (as is conciseness of the claims). The requirement in Art 84 of the claims to be supported by the description includes the requirement that the description is consistent with the claims not only in some part but throughout.

    Thus, when amendments are made to the claims (amendment to the granted claims in the present case), the description must be made consistent therewith in the sense that a reader is not presented with any information conflicting with the wording of the claims.

    The board remitted to the opposition division to maintain the patent on the basis of AR4 which implies that the description has to be adapted to the claims.

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    1. Dear Daniel,
      it is not clear to me according to which article of the EPC (not the case law or the Guidelines), unclaimed subject-matter has to be deleted from the description.
      Certainly such as an important and heavy requirement should be explicitly stated somewhere in the EPC, shouldn't it?
      The support requirement of Art. 84, last sentence, does not imply at all that unclaimed subject-matter must be deleted. It just means that the subject-matter of the claims must be taken from the description and it is not admissible to claim something which is not described, as confirmed also by the Case Law 2019 (see also the Traveaux Préparatoires).
      Am I wrong?

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  16. Friday evening's comment from ex-EPO DXThomas, referring us to T2613/18 and T 121/20, confirm to us how deeply embedded in EPO thinking is the need for 100% conformity between the description going to grant and the claim going to grant. The reason is stated baldly in T121/20 at Reasons 10.1, namely, that disconformity "raises doubts about the scope of claim 1". Does it? I say not.

    For me, the mere presence of a disconformity is not sufficient to "raise" the level of uncertainty, in the heads of judges in national courts, what scope to accord to claim 1. No other Patent Office rides this "conformity" hobby horse. Lack of 100% conformity seems not to be a problem for judges outside the EPC area. I have yet to see the EPO's Boards of Appeal cite any evidence for their incessant assertion that conforming the description would simplify the burden on the court to fix the scope of the claim. Instead, it seems to be nothing more than commonsense and gut feeling, which leads the Board members to their assertion. For me, what really does "raise doubts" is the EPO assertion that within Art 84 EPC is to be found a mandatory requirement for 100% conformity.

    I wonder, can an EPO Board Decision cite cases from jurisdictions outside the EPC, where the court explains that it is the presence of a disconformity between the description as filed and the claim as granted that has made it harder to settle upon the proper scope of the claim? I'm not holding my breath on that one.

    Mr Thomas cites the pemetrexed case, in which potassium was found equivalent to the "sodium" of the claim. Personally, and with great respect to Mr Thomas, I doubt that conforming the description would have made any difference to the outcome. I think that even with a conformed description, it would have been just as open to the court to find potassium an equivalent to sodium.

    T121/20 turns on the expression "nicotine-free" in the claim of AR4 while para [0033] of the application as filed states that the liquid "may contain nicotine". Again, the notion that original para [0033] would throw the court into confusion and doubt, how to construe "nicotine-free" in the claim going to grant strikes me as a fine example of wishful thinking, and of the patronisation I mention earlier in this comments thread.

    I can see that EPO Examiners and even technical members of TBA's can plausibly "don the mantle" of one "skilled in the art". What raises doubts in my mind is the extent to which TBA members can put themselves in the shoes of a national patents court judge deciding whether an accused embodiment is or is not an infringing equivalent. I mean, what relevant experience of such a thinking process do they have, which enables them to assess what raises doubts in the judge's mind and what does not?

    Over to you, Mr Thomas. Your contributions really are very helpful to the debate.

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    1. "T121/20 turns on the expression "nicotine-free" in the claim of AR4 while para [0033] of the application as filed states that the liquid "may contain nicotine". Again, the notion that original para [0033] would throw the court into confusion and doubt, how to construe "nicotine-free" in the claim going to grant strikes me as a fine example of wishful thinking, and of the patronisation I mention earlier in this comments thread."

      I think this sums it up in a nutshell. The other side is that given there is no doubt what "nicotine free" means, what possibly could be the applicant's objection to saying that "may contain nicotine" embodiments are outside the scope of claim. Is is that the applicant would prefer to argue down the line that nicotine free allows for a certain percentage of nicotine, perhaps up to 25% and not trace amounts (similar to sugar free products), rather than the supposed lack of legal basis forcing them to tidy up the description. Assuming third party certainty counts for nothing, I can see why there is such staunch resistance to the EPO's approach.

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  17. Reply part 1
    Dear Max Drei,

    Whether my contributions are helping the debate is not something for me to confirm or infirm. It is nice for you to say so, and I thank you for it, but it does not change anything.

    There is indeed not yet full uniformity on the EPC Art 69 DoE between the courts of the Member States. I further do not think that it is within the legal competence of the EPO or the BA to show the courts the way to do define equivalents.

    National courts in contracting states are much too jealous of their independence to be dictated by the EPO what equivalents are. This is the more so, since the proposal of a definition of equivalents, i.e. of an Art 3 in the protocol of interpretation of Art 69 was not accepted by the contracting states in 2000. This is why we ended with Art 2 speaking about equivalents, but without defining what is to be understood under equivalents. The difficulties start from there.

    The absence of uniformity on the EPC Art 69 DoE is exactly the point which is important for the EPO to bring all applicants on a par. Anything in the description which does not correspond to what is claimed is in essence not supporting the claims. This aim allows indeed to put all applicants on a par as no fancy interpretation of the claims via something which is in the description, but not claimed, is then possible. I think that this aim is legitimate and finds its legal basis in the last sentence of Art 84.

    It is one possible interpretation to claim that the support requirement of Art. 84, last sentence, does not imply at all that unclaimed subject-matter must be deleted. This an interpretation favoured by representatives, but it is not the interpretation given to this sentence of Art 84 by the EPO and by the BA in a long lasting line of case law.

    In T 1989/18, the BA wanted manifestly to please applicants for whatever reason. In decisions following T 1989/18, the reaction of the other boards is however very clear. They do not intend to follow the views expressed by this board.

    I will not get tired to say that as long as the last sentence of Art 84 is not deleted, the position might not really change. Once this last sentence is deleted then the description will not need to be adapted.

    I know at a glance one recent TBA decision in which a decision of a national court, in this case of the German Federal patent court, was quoted, cf. T 1338/19. The national decision was not about clarity but about IS. The EBA has cites regularly decisions of national courts, but this in a more general context, e.g. the now prohibited Swiss-type claims.

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    1. Dear Daniel,
      as I wrote before, there is nothing in the EPC requiring that unclaimed subject-matter must be deleted from the description.
      Certainly such as an important and heavy requirement should have been explicitly stated somewhere in the EPC.
      The support requirement of Art. 84, last sentence, does not imply at all that unclaimed subject-matter must be deleted. It just means that the subject-matter of the claims must be taken from the description and it is not admissible to claim something which is not described, as confirmed also by the Case Law 2019 (see also the Traveaux Préparatoires).
      Moreover, T 1989/18 is the ONLY decision in the case law which analyses in detail the support requirement.
      The other decisions do not enter into the details of the support requirement of Art. 84 EPC and just copy and paste the Guidelines.
      The PCT and the other EPC patent laws have the same support requirement but no patent office requires applicants to delete unclaimed subject-matter.
      So are all patent offices in the world wrong or it is just a mistake of the EPO?

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    2. Dear Patent Robot,

      I have no competence at all to say whether all patent offices in the world are wrong or it is just a mistake of the EPO.

      I am just analysing, now for many years, the case law of the boards and the way they interpret the EPC.

      My conclusions are based on the existing case law, no more, but no less.

      In my humble opinion T 1989/18 is a one-off and will most probably stay a one-off when seeing the reaction of other boards. I doubt that there will be a referral to the EBA on this point, and should there be one, it most probably will not be from the president. But I can accept to be proved wrong.

      It is your good right not to agree with the case which does not agree with T 1989/18, but as long as the main line of case law is as it is, you may do what you want, nothing much will change.

      I beg to disagree with you when you claim that other decisions do not enter into the details of the support requirement of Art. 84 EPC and just copy and paste the Guidelines. In have never seen a decision in which a board simply copy/paste the Guidelines. When parties to appeal mention the Guidelines, the reaction is quite clear: the boards are not bound by the guidelines.

      In T 2613/18, the board held that the requirement of "support by the description" reflects the general legal principle that the extent of the patent monopoly, as defined by the claims, should correspond to the technical contribution to the art in order for it to be supported or justified. If you think logically, the conclusion has to be that anything which does not correspond to the claims as granted or amended and which can instil doubts about what is actually claimed should be deleted. No more but no less.

      In T 121/20, the board made it clear that it did not agree with the position taken in T 1989/18. It reminded that the “provision of Article 84 EPC relates to claims in general and actually covers three distinct requirements on claims, namely their clarity, their conciseness and their support by the description. According to the present board, the criterion that the claims be "supported by the description" is not in any way subordinate to the requirement of "clarity" of the claims, but is a requirement of its own (as is conciseness of the claims)”.

      When the claim relate to "a nicotine-free liquid material", but the description states that the "the liquid material includes a tobacco-containing material [...] and may contain nicotine", than clearly the description is at odds with the claim. This is certainly the case when one reads the claim and the description with a will to understand both of them and not to misunderstand both of them. To me it is quite normal with Art 84 as it stands that this contradiction has to be removed.

      The Board could have remitted for the adaptation of the description, but the absence of the proprietor brought the board not to be lenient and it applied, here as well, a long line of case law and the patent was revoked.

      I realise that I will not be able to convince you, and neither will you, so I hope that we can at least agree that we disagree and leave it at this.

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    3. Dear Daniel,

      CL II.A.5.1 not only gives an general interpretation of art. 84 EPC last sentence ("it is not admissible to claim something which is not described"), which is more in line with my interpretation, but also cites four decisions at CL II.A.5.3 (Bringing the description into line with amended claims).
      The first two decisions (T 977/94 and T300/04) relate to the inclusion of claimed features in the description and the third decision (T 298/02) is in favour of the applicant, so they are substantially irrelevant.

      On the other hand, the last decision (T 1808/06) is considered the keystone on deletion of unclaimed subject-matter (or at least it was until T 1989/18 came up).

      However, if you read the whole T 1808/06 decision (9 pages, wow!) you will notice that the reasons for the decisions (a good 3 pages) focus on art. 69(1) EPC and do not analyze art. 84 EPC, apart from page 5, second paragraph, which is just... a copy/paste of the Guidelines!

      In other words, the Case Law 2019 on deletion of unclaimed subject-matter is just a copy of the Guidelines.

      I hope that the EBoA will take these cases on-board, though I have some doubts after G 3/19 and G 4/19.

      At any rate, I agree with you...that we disagree on this matter.

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  18. Reply part 2
    Dear Max Drei,

    I will not allow myself to say that the pemetrexed case was due to negligent claim drafting or was an outlier. In my opinion, the applicant knew very well what he was doing. The only example given in the original description was pemetrexed disodium and the examiner, for good reasons, did not accept a general claim for just pemetrexed + vitamin B12.

    When looking at the case, it is manifest that the only aim of the applicant was to get a patent as quickly as possible. There was no effort on the side of Eli Lilly to attempt to convince the examiner that other salts could be used.

    It would for instance have been possible to file further experimental data in order to convince the examiner of the generalisation to any pemetrexed was allowable (plausibility), or even to file a "broader" divisional.

    I am convinced that should data have been available, it would have been easy for Eli Lilly to provide the necessary experimental data to generalise the claim. It is by not correctly adapting the description to the claims, that later faced by the request of non-infringement of Actavis, that Eli Lilly realised that it could be applied to other salts. This knowledge was manifestly not present at the moment of grant, and the examiner simply gave up, and I not blame him.

    In his letter dated 08.03.2006, just before grant was decided, Eli Lilly insisted that pemetrexed disodium was a preferred embodiment. There was no preferred embodiment whatsoever, there was only one embodiment: pemetrexed disodium. There was no reason to believe at the time that other salts were also possible.

    In this letter it is further stated: “The applicant seeks to draw a distinction 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. In particular it is highlighted that the reduction in toxicity of the anti-folate in the use of the combination therapy is relevant to the invention and should be retained”

    This is exactly the type of statement which should not be accepted as it allowed later an extensive interpretation of what was the actual contribution to the prior art.

    It is worth noting that the District Court of The Hague had decided in first instance that in view of the behaviour of the applicant during prosecution, the claim was limited to pemetrexed disodium and to nothing else. This decision was rescinded by the Court of Appeal for whatever reason.

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  19. This morning I see that Mr Thomas has been once again very helpful in developing the debate on whether conforming the description is vital for legal certainty. I used to be an enthusiast for such conforming and was hoping for argumentation from Mr Thomas that would restore my faith but as of now I'm still not persuaded.

    As to the pemetrexed case, I think we have to be careful to hold keep the debate about conformity separate from that on "file wrapper estoppal", and "post-filed evidence", and the "plausibility" of a claim to pemetrexed + B12 that could so easily have been included in the application as filed but in the event was not. Is conforming the description i) a cure-all for every conundrum of scope of protection ii) not much help to resolve those tricky issues, or iii) positively unhelpful for courts striving to do justice in a world of fierce litigation to decide who was the "First to File" on any given invention. Reasonable minds differ. Good so!

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  20. I find myself with a lot of sympathy towards the positions taken by DX and pudding to the extent that I would love to see the rules changed if the interpretations set out by the dissenters are correct. The reader of a patent, wishing to see if she would infringe by performing certain actions, deserves to see the description as filed as that is what the claims should be interpreted in light of. Instead large amounts of agent and examiner time is wasted on mangling the spec in pursuit of an impossible goal, zero ambiguity. I'm not aware of a single issue arising from the UKIPO's change of practice on this.

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  21. Daniel, it is plain as a pikestaff that the tightening of the EPO's practice on adaptation of the description is a reaction to the pemetrexed decision in the UK. In essence, it seems that you share the same concerns about that decision as those developing "best practice" within the EPO. However, I would encourage you to take a step back, and to consider whether demanding a "strict" adaptation of the description is really an appropriate (or even legitimate) response to what is admittedly a troublesome decision of a national court.

    If I understand correctly, both you and those determining "best practice" within EPO believe that a stricter adaptation of the description would have prevented any national court from determining that other forms / salts of pemetrexed did not infringe a claim directed to a use in tumour therapy of "pemetrexed disodium" (in combination with "vitamin B12 or a pharmaceutical derivative thereof"). But why do you believe this?

    For example, do you believe that the UK Supreme Court's decision would have been different if each and every disclosure of the description relating to subject matter broader to (or different from) that described in the claims had been tagged as not being "the invention" of the patent?

    If so, then I would encourage you to consider what it would mean if a strategy of "strict" adaptation of the description succeeded in its apparent goal (of persuading national courts to view "non-claimed" disclosures of the description as being excluded from the extent of protection afforded by the claims, whether by equivalence or otherwise).

    Would this not make the EPO Examining Division the sole arbiter of which disclosures of the original description fall within the extent of protection provided by the claims? If so, would it then be pointless for the patentee, during national court proceedings, to provide evidence regarding interpretation of the claims ... perhaps even evidence that convincingly demonstrates that, for certain disclosures of the original description, the ED's determination was incorrect?

    Also, what would happen if expert evidence were to demonstrate that certain non-claimed disclosures are equivalent to (ie immaterial variants of) the subject matter of the claims? In that event, would a "strict" adaptation of the description tie the hands of the national court? That is, would the national court then view the adaptations to the description as amounting to a disclaimer of any protection for the subject matter of those non-claimed disclosures?

    The EPO's task is to grant patents. In my view, the EPO has no business attempting to set in concrete a specific interpretation of the language of the claims, thereby tying the hands of the national courts regarding their determination of the scope of protection afforded by the claims.

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  22. In the pemetrexed case, the UK Supreme Court effectively determined that the limitation to "pemetrexed disodium" was a reaction to an added matter objection. In this regard, it is possible to understand why the Supreme Court felt that the extent of protection afforded by the claims could extend to "equivalents" in which the combination of actives included different salts / forms of pemetrexed.

    Whilst I have no problem with that logic, I nevertheless believe that the Supreme Court set a dangerous precedent. This is because, compared to embodiments that fall within the "normal" claim scope, it sets different sufficiency and inventive step standards for "variants" that infringe by way of equivalence.

    In particular, I find it absurd that, for the step of determining whether a putative equivalent works in the same way as the invention, the court can take account of information that was not disclosed in the patent, or otherwise available to those skilled in the art at the patent's filing date. This is impossible to square with the criterion of "plausibility", whether for inventive step (as at the EPO) or for sufficiency of disclosure (as in the UK).

    However, the fact that the UK Supreme Court has established a doctrine of equivalents that is not (yet) fully consistent with case law on sufficiency and inventive step does not justify the EPO taking steps to tie the hands of national courts regarding the determination of equivalents.

    As others have pointed out, even when faced with the same patent and the same underlying facts, national courts are perfectly capable of producing inconsistent decisions for reasons that have nothing to do with whether or not the description has been adapted to a "strict" standard. For example, the approach to assessing inventive step in the UK has for many years been quite different to the approaches adopted by the EPO and other national courts. Also, UK courts have developed concepts in other areas (eg industrial applicability, sufficiency of disclosure, indirect infringement) that have not been universally adopted across EPC Member States.

    Should the EPO therefore take steps to eliminate the lack of harmony in all of those areas too? Or should it stick to its day job of granting patents, and leave the national courts to complete their assessments (of patent validity and infringement) in the best way that they see fit?

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  23. Dear DXN Thomas

    Thanks for the information regarding recent BOA decisions. This appears to reflect a majority opinion within the BOAs in favour of an interpretation of art 84 requiring the deletion of unclaimed subject matter from the description.
    What is conspicuous though is the weakness of a justification for this interpretation, when it is placed in a perspective, considering the additional costs and delays for the applicants and the EPO, the scant review of Art 83 at the EPO, and the insignificance of the issue for national courts when they review validity & infringement of EP originated patents.
    This weak justification is also telling from your line of argument relying on critical comments regarding a specific case and the behaviour of the parties.

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  24. To all the other commenters,

    In my reply to Patent Robot, I made clear what my position is.
    I just looked at the case law and its different ways to look at the requirement of support of the claim in the light of Art 84 as it stands.

    Anything which can allow interpretations other than what can be deduced by the person skilled in the art from the claim should be deleted or characterised as not being claimed. This is independent of how a national judge might look at a claim.

    That an applicant might not necessary want to delete parts of the description is understandable, but where is the difficulty then in stating that certain parts of the description are not covered by the claims? In a case as flagrant as in T 121/20 it is simply not tolerable to leave such a contradictory statements. The same applies when granted claims are combined and then the optional character of the subject-matter of a former dependent claim is deleted.

    The day Art 84 is amended and the EPC makes it clear that no adaptation of the description is required whatsoever, then I will agree with the commenters. But then, like in the US, the behaviour of the applicant during grant will have to be scrutinised. One or the other, but not both.

    What other offices do is actually irrelevant, be it the UKIPO or any other office. Whether different “national courts are perfectly capable of producing inconsistent decisions for reasons that have nothing to do with whether or not the description has been adapted to a "strict" standard””, is not a reason to simply ignore what Art 84 says.

    There have always been different way to handle the basis patenting requirements in different jurisdictions and there is nothing bad at it. What matters in view of these different ways, is exactly to make clear what is claimed and what is not.

    Beside the fact that the justification is not weak, this point is actually irrelevant. It is the justification given by the boards and it has to be taken for what it is.

    When quoting the pemetrexed case, my sole aim was to show that it is actually the non-adapted description which allowed the later interpretation of the claim. The contribution to the art was pemetrexed disodium + vitamin B 12 and nothing else. This should not be forgotten. My aim was never to go into discussions on file-wrapper estoppel, although this is what the District Court in The Hague did, or post filed evidence or plausibility. I simply noted that the contribution to the art was limited to pemetrexed disodium + vitamin B12, and all the various possibilities mentioned in the introduction of the description was no more than guesswork.

    That the UKSC has come to a different conclusion, is its good right. However, when you read Lord Neuberger’s decision it is the general statement left at the beginning of the description which allowed to draw much more out of the patent than what the contribution to the art at the date of filing. This is why he found it necessary to tell the examiner in charge that he should not have raised an objection under Art 123(2)! That went way too far.

    I already said it in my reply to Patent Robot, all commenters in favour of T 1989/18 has not managed to convince, and I did neither managed to convince them the other way round. At least I hope that we can all agree that we disagree, but we should leave at this.

    A late French union leader said once, that everybody should know when to end a strike. I would allow myself to paraphrase him in saying we should know when to end a discussion which is going in circles. I believe, that we have reached this point.

    I wish you all a good Easter holiday.

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  25. Part 1 of 2

    Picking up from the line of comments relating to permetrexed disodium above -

    I often perceive that there is a tendency from the side of the EPO to assume that there would be no problem if only the patent was drafted "better" in the first place. This is an assessment that is very easy to make with hindsight but only rarely possible in advance. At the outset of the drafting procedure the Applicant themselves might not know exactly what form the eventual commercial product is going to take, it is impossible to know for sure what prior art might emerge during the EPO's search unless the drafter happens by chance to carry out their own search with exactly the same parameters and keywords in exactly the same databases available to the EPO examiner, and it is impossible to know for sure how the EPO examiners will view any possible amendment from the point of view of added matter, sufficiency, novelty or inventive step. Drafting is an art, not a precise science. (In this context, on a slight tangent, surely I can’t be the only practitioner who finds the standard EPO language “Contrary to the requirements of the EPC, document D1 is not identified in the description…” unnecessarily accusatory in tone when included in a Search Opinion or first Examination Report, as though criticising the drafter for their lack of clairvoyance?)

    In the permetrexed case the amendment to the sodium salt was made in reply to an objection of added matter. For whatever reason (which is unknowable from the EPO file) the proprietor chose not to contest this. Perhaps they could have contested it and maybe even prevailed depending on the Examiner and depending on the persuasiveness of the representative’s hypothetical arguments in respect of a broader claim scope. But it does us little good to speculate here.

    What is relevant is to think about how the permetrexed case might have played out if the description had been adapted aggressively in line with EPO practice as proponents such as Mr Thomas advocate.

    Let us imagine a first universe where the description is amended so that any embodiments other than the sodium salt are clearly marked as being “not part of the invention” or outside the scope of the claims or however one phrases it. In that universe, the argument from the EPO’s point of view is, then, that there is no uncertainty about whether the claims protect such embodiments or not. However, this seems to me to overlook the fact that although Article 69 says that the description shall be employed to interpret the claims, it does not say that interpretation based on the description shall be determinative. And Article 2 of the Protocol makes it clear that due account shall be taken of equivalents – without defining whether or not the description is relevant for determining what those equivalents might be. So even in this universe, even if the description is amended to mark the non-sodium embodiments as not being claimed, isn’t there a flaw in the logic? Don’t Article 69 and its Protocol leave it open to national courts to decide – notwithstanding any indications in the description – that such non-sodium embodiments are indeed within the claims, or least equivalent? After all, neither Article 69 nor the Protocol place any real constraints on national judges as to the extent to which they should pay heed to the description, or how exactly they can determine what is or is not an equivalent, or whether they are allowed to bring external evidence or knowledge to bear in making that assessment.

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  26. Part 2 of 2

    Now let us imagine a second universe in which the description is instead amended to obliterate any reference to the non-sodium embodiment. Now, the EPO would say, the description is consistent with the claims because it does not contain any text which is contrary to their clear wording. But what is more relevant here, compared to the first universe, is what it does not say. It does not say that non-sodium embodiments are outside the claims, or that they do not form part of the invention. Now in this universe do we not have an even better illustration with the zealous EPO approach? What is to stop a court from determining here that non-sodium embodiments do fall within the claims, or that they do constitute equivalents? There is nothing in the specification telling them otherwise. There is no file wrapper estoppel providing a context in which the court could say “well, you deleted those embodiments, so you must have abandoned them” – and even if there were, the applicant could easily argue that the amendments or deletions were only made in light of the (they might say, excessively strict) EPO approach to added matter or the (they might say) peculiarities of EPO practice on description amendments, without being intended to say anything at all about the claim interpretation, being faced with the choice of complying with these facets of EPO procedure, despite their disagreement, or not getting a patent at all. So here, again, even though the description has been “adapted”, the courts still have freedom to determine that the claims provide protection beyond the scope of the sodium embodiment.

    All of this, to me, illustrates that adaptation of the description cannot serve to increase certainty about what the claims do and do not cover – and leads to the perverse conclusion that deletion of “conflicting” statements altogether might serve the goal of complying with a strict interpretation of EPO practice while nevertheless putting the patentee in a more favourable position than if they had not adapted the description at all.

    On a final point: to me, all of this speaks to a deep confusion and uncertainty in the heart of the EPO as to the roles of Articles 84 and 69. If one looks into the case law for citations of Article 69, the result is total chaos. The Boards are, it seems to me, completely unable to come to a common position on whether the scope of protection under Article 69 EPC is a legitimate consideration in post-grant proceedings at the EPO or whether it is solely the domain of national courts; and, if it does form part of the competency of the EPO, the Boards seem to be in a complete fog as to how (if at all) it interacts with the requirements of Article 84 EPC. All of these discussions around the relevance of the description seem to be symptomatic of that broader debate.

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  27. In spite of what I have said before, I need to reply to A Nony Mouse.

    Looking at the pemetrexed case, should there have been in the application examples of other salts, then a more general claim to salts of pemetrexed or even just pemetrexed would have been perfectly allowable. The problem is that there were none. And that is why the examiner refused the generalisation and rightly objected under Art 123(2). At the same time it is where the misery starts with description which has not been properly adapted to the claim.

    In the pemetrexed disodium case, it certainly would not be requested to say in the description that "any embodiments other than the sodium salt are clearly marked as being “not part of the invention” or outside the scope of the claims or however one phrases it".

    This would be manifestly excessive. But if the only contribution to the art is pemetrexed disodium, any statement which implies that other salts could be used is to be deleted in order to bring the claims and the description into coherence.

    This is exactly what the applicant did not want to do at the time! He actually wanted a description covering more than what he had actually contributed to the art. At the same time he did not disclosed anything more than pemetrexed disodium.

    With a description strictly limited to the disclosed example, pemetrexed disodium, I fail to see how it could hinder any national judge to apply the DoE valid in his jurisdiction.

    To sum it up, I still cannot see where the problem is in adapting the description to what is actually claimed. To this effect any statement implying that the claims may cover something else than what the applicant contributed to the art ought to be deleted or marked as not being part of what is claimed. This again does not hinder any national judge from applying the DoE theory he thinks fit.

    I leave A Nony Mouse the responsibility of what he has said about the deep confusion and uncertainty and the alleged chaos in matters of Art 69. To allege that the Boards seem to be in a complete fog is really far-fetched, not to say excessive.

    The line of the boards is clearly to say that Art 69 is of the domain of the national judge, and should it, by exception, be in need to be applied, when the claim as granted is deeply unclear, or when applying Art 123(3). In both cases it has to be applied with great caution.
    For instance, Art 69 cannot be used to give a feature in a claim different from that which results from the wording of the claim, cf. T 794/19.

    It is very clear that Art 123(3) does not extent extend to equivalents, whatever definition they might have, but should be limited to what has been directly and unambiguously disclosed. There again, I fail to see how a national judge might be hindered in its application of the DoE valid in his jurisdiction.

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  28. Dear Proof of the Pudding,

    Why are you insisting this heavily? Do you want to have the last word?
    You can have it. It does not bother me in the slightest.

    I have replied to the various comments, sometimes quite in detail, so what else do you want?
    I could exactly claim what you are claiming, but it does not help any further, so I will refrain.

    That my comments were not to your liking, is a matter of fact and is actually irrelevant for me.

    Anything can be argued, but one thing should not be forgotten, at the end of the day it is the EPO which will decide on policy matters under the control of the BA. One, in my opinion odd decision, will not change the policy. It is high time to accept this.

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  29. Daniel, take it as a compliment, that everybody is trying so hard to persuade you. What this doggedness suggests to me is that they all cherish having you as a debating adversary, and perhaps suppose that "one more push" might succeed in giving you second thoughts. Be happy with that. But I'm with you, in thinking that this thread has by now run its course.

    For me, it is important that experienced national patent judges serve on the EPO's Enlarged Board of Appeal and actively engage with the cases that get there. Given the situation on "conforming the description", world-wide, I think that sooner or later a case will come up for review by the EBA. And then there will be many "amici curiae" who will make their written submissions to the EBA. That will be an interesting phase in this debate, won't it?

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  30. Resistance to amending the description is much more to do with saving attorney time and cost than in altering the scope of the claims! The former is a given. The discussion on here shows the latter is completely unpredictable.

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  31. MaxDrei and it is important that well informed national appeal judges are picked on the cases the Enlarged Board takes!

    ReplyDelete

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