Following the excitement over T 1989/18, there has been a second Board of Appeal decision finding a lack of legal basis for the requirement to amend the description in line with the claims. The decision in T 1444/20 found that it was not necessary for the applicant to delete claim-like clauses and redundant subject matter from the description, given that the claims were clear without need for recourse to the description. The decision in T 1444/20 however, follows a flurry of Board of Appeal decisions that contradicted T 1989/18 and did find legal basis for the requirement to amend the description in Article 84 EPC. Where does this all leave applicants faced with onerous description amendment requests in Examination?
Background: Description amendmentsThe current EPO Guidelines for Examination require applicants to amend the description of a European patent application in line with the scope of the allowable claims (H-V, 2.7 and F-IV, 4.3(iii)). To the dismay of many EPO users, the description amendments required by the Guidelines have become rather draconian in recent years. According to the current Guidelines, applicants are now 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.
Article 84 EPC is often cited as legal support for the description amendment requirement. Article 84 EPC stipulates that the claims "shall be clear and concise and be supported by the description.".
Conflicting Boards of Appeal decisions on description amendments
With all of the controversy surrounding the stricter description amendment requirements, the Board of Appeal decision in T 1989/18, which found no legal basis for the requirement, caused a considerable stir (IPKat). The EPO, however, is not obliged to change its practice just because of one Board of Appeal decision. The EPO has thus seemed content to ignore the decision in T 1989/18, and has continued with requiring applicants to conform to the current Guidelines. Notably, despite the obvious interest in T 1989/18, the decision was not even distributed to the rest of the Boards of Appeal chairmen, i.e. the decision was given a Distribution Code "D". Rumours that the description amendment requirements might be ameliorated in the 2022 Guidelines following user pressure also proved overly optimistic (IPKat).
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| Disagreement |
Any lingering hopes that T 1989/18 might spark a rethink by the EPO on the description amendments were further dashed when T 1989/18 was swiftly followed by a flurry of decisions contradicting its findings (T 1024/18, T 2766/17, T 2293/18 and T 0121/20) (IPKat). The Boards of Appeal in these cases toed the EPO party line and found legal basis for the description amendment requirement in Article 84 EPC (IPKat). Tellingly, unlike the decisions finding no legal basis for description amendments, T 1024/1, T 2766/17 and T 2293/18 were all distributed to the Chairmen of the other Boards of Appeal, i.e. the decision was given a Distribution Code "C".
Were the decisions in T 1024/1, T 2766/17, T 2293/18 and T 0121/20 to be the final nails in the coffin of a description amendment rethink? On the contrary, a new decision, T 1444/20 has now provided T 1989/18 with much needed support, and has thereby stopped it sinking further into the soup of obscure and irrelevant Boards of Appeal case law.
Legal basis for the requirement to delete "claim like clauses"
The Board of Appeal in T 1444/20 considered whether it is necessary for "claim like clauses" to be deleted from the description. Claim-like clauses corresponding to the original PCT claims are often added to the description of European applications. The clauses are added to provide explicit basis for subject matter that has been deleted from the European claims in order to avoid expensive claim fees. The current version of the EPO Guidelines state that "claim-like clauses must also be deleted or amended to avoid claim-like language prior to grant since they otherwise may lead to unclarity on the subject-matter for which protection is sought" (F-IV.4.4).
The Board of Appeal in T 1444/20 found that the claims of the Main Request were clear in and of themselves, i.e. without reference to the description. As such, the Board of Appeal found that the presence of claim-like clauses in the description, which were clearly not part of the claims themselves, could not affect the clarity of the claims. The Board of Appeal found that deletion of the claim in the present case was thus not warranted. The Board of Appeal also noted the inconsistency in the Guidelines on this issue:
[The Guidelines] acknowledge, on the one hand, that claim-like clauses may (or may not) give rise to a lack of clarity, but require, on the other hand, that such claim-like clauses must always be removed. If claim-like clauses in the description do not result in a lack of clarity of the actual claims, Article 84 EPC cannot provide the justification for removing them.
Removal of "redundant" subject-matter
The Board of Appeal also considered whether it was necessary for the claim-like clauses to be deleted from the application because they related to subject matter that was inconsistent with the claims. The Examiner Division had stipulated that such redundant subject matter should be removed in view of Rule 42(1)(c) EPC and/or Rule 48(1)(c) EPC. The Board of Appeal assessed whether this stipulation was justified.
According to Rule 42(1)(c) EPC the description must disclose the invention as claimed in such terms that the technical problem and its solution can be understood. The Board of Appeal in T 1444/20 did not find that this provision translated into a requirement to remove passages of the description that disclose embodiments which are not claimed, particularly where the technical problem solved by the claims could be clearly understood.
Rule 48(1)(c) EPC stipulates that a European patent application should not contain obviously irrelevant or unnecessary subject matter. The Board of Appeal in T 1444/20 noted that a number Board of Appeal decisions have previously relied on this provision as legal basis for requiring the description to be adapted to the subject-matter as claimed. The Board of Appeal in T 1989/18, however, had rejected this reasoning (IPKat). Particularly, T 1989/18 found that whilst the other sub-provisions of Rule 48 EPC specify that more serious matter should not be included in a patent application, e.g. '"matter contrary to 'ordre public'", these sub provisions have not been understood as providing sufficient reason to refuse grant of a patent. Thus, the Board of Appeal reasoned, it would seem perverse to use Rule 48 EPC as justification for refusing grant of a patent just because the description contained "unnecessary" subject matter. The Board of Appeal in T 1444/20 explicitly agreed with the reasoning in T 1989/18 (r. 3.3).
Final thoughts
The decision in T 1444/20 relates to the deletion of redundant as opposed to contradictory subject matter from the description. T 1989/18 and T 1024/18 by contrast relate to the legal basis for deletion of contradictory subject matter. Nonetheless, T 1444/20 provides support for the general principle provided in T 1989/18 that description amendments are unnecessary if the claims are clear in and or themselves. Notably however, unlike 3 out of the 4 of the recent decisions finding legal basis for description amendments, T 1444/20 has been given the lowest "D" distribution code, meaning that it will not be distributed to other Boards of Appeal.
Nonetheless, we now have a growing number of recent conflicting Board of Appeal decisions on description amendments The current tally (summarised below*) stands as 4 for description amendments, 2 against. The release of T 1444/20 means that the decision in T 1989/18 can no longer be dismissed as an anomaly that EPO Examiners can legitimately ignore. In the face of a clear disagreement within the Boards of Appeal, and the obvious discontent from many EPO users, this Kat continues to be bemused as to why the EPO remains so wedded to the onerous description amendment requirements introduced in the 2021 Guidelines. The position of Examiners is not enviable, given that they will now face, on the one hand, the clear stipulation of the Guidelines requiring adaption of the description in line with the claims, and on the other hand, applicants armed with two recent Boards of Appeal decisions finding no legal basis for description amendments.
It is therefore becoming increasingly likely that a referral to the Enlarged Board of Appeal on the issue will be required. Quite aside from the merits of the arguments for and against description amendments, the existence of such clearly divergent case law from the Boards of Appeal does little for the EPO's reputation, as anyone trying to explain the emerging mess to their US colleagues will appreciate.
Further reading
*Legal basis for description amendments: T 1024/18 (1 March 2022), T 2766/17 (17 March 2022), T 2293/18 (31 March 2022)
No legal basis for description amendments: T 1989/18 (16 Dec 2021), T 1444/20 (28 April 2022)
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) (4 April 2022)
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Finally, more and more people are realizing that there is not any provision at all in the EPC requiring applicants to delete unclaimed subject-matter from the description.
ReplyDeleteEven the Guidelines do not generally require unclaimed subject-matter to be deleted. What they do require is that the description does not suggest that protection is sought for embodiments which conflict with the claims. This can be achieved e.g. by referring to such subject-matter not as "embodiments (of the invention)" but as "examples".
DeleteThe claims should be clear from their wording alone, but that does not mean that statements in the description cannot lead to a lack of clarity. Obviously any attorney in opposition or national proceedings will refer to the description and Art. 69 EPC to try to convince the deciding body to interpret the claim to his client's advantage.
Absolute clarity cannot be achieved and in most cases it is perfectly fine that the description and drawings are there to help resolve questions about the interpretation of the claim, in particular in post-grant proceedings. But that also means that the description can affect the clarity of the claims (Article 84 EPC).
Vlad, I have no problem with the EPO insisting upon clarity regarding the meaning of the wording of the claims. However, even a hard stance on clarity cannot possibly justify the current practice regarding adaptation of the description. This is because that practice does not require the allegedly conflicting subject matter to actually give rise to a lack of clarity. All that is required is the mere existence of an alleged "conflict".
DeleteThere are many cases where retaining "non-claimed" subject matter (eg as a "disclosure") will not cast doubt upon the scope of the claims. There are also cases where retaining such subject matter cannot possibly give rise to a lack of clarity (eg where the "non-claimed" subject matter falls into a different category to the claimed subject matter). This means that the clarity of the claims of each application needs to be judged on a case-by-case basis, and reasoned objections should be raised in cases where there are grounds for believing that retention of certain subject matter in the description gives rise to a lack of clarity. By way of contrast, however, the EPO's current practice merely relies upon unreasoned assertions. In my view, this is unacceptable.
Unfortunately, according to the new Guidelines, embodiments which do not fall into the scope of the claims will be considered an "inconsistency", so that they have to be deleted or marked as "not falling within the subject-matter for which protection is sought", which is probably even worse:
Delete"According to Art. 84, second sentence, the claims must be supported by the description. This means that there must not be inconsistency between the claims and the description. [...] The applicant must remove any inconsistencies by amending the description either by deleting the inconsistent embodiments or marking them as not falling within the subject-matter for which protection is sought."
Robot, I know this. I was merely responding to Vlad's suggestion that the clarity requirement of Article 84 EPC could provide a reason for adapting the description.
DeleteAs it happens, the clarity point is also pertinent to the EPO's interpretation of the support requirement. This is because, if you analyse the case law upon which the EPO’s current practice relies, you will see that it consistently refers to the possibility for alleged "inconsistencies" in the description to cast doubt upon the scope of the claims. Doubt regarding the scope of the claims is nothing other than a lack of clarity (of the claims).
For this reason, it is plain that there are serious holes in the “logic” behind decisions such as T1024/18. That is, whilst the Board in that case argued that
“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”,
it later went on to conclude that
“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”.
In other words, the Board used clarity (regarding the meaning of the wording of the claims) as justification for the EPO’s practice on support, whilst simultaneously claiming that clarity and support are entirely different requirements. I doubt that I will be the only person to spot the internal inconsistency in this reasoning.
I have a challenge for the supporters of the EPO's current practice regarding adaptation of the description. The challenge is to identify any decision of a national court (even if there is only one decision) in which there was a cause and effect connection between an "improper" adaptation of the description and a "misinterpretation" of the claims by the national court.
DeleteFor reasons that I have previously explained, the UKSC's pemetrexed decision is not a relevant decision in this sense - as the record shows that there was no cause and effect connection between how the patentee adapted (or failed to "properly" adapt) the description and the UKSC's ultimate decision on interpretation of the scope of the claims. However, I am curious as to whether there are other national court decisions in which there was such a cause and effect connection.
@Patent robot:
Delete"so that they have to be deleted or marked as "not falling within the subject-matter for which protection is sought", which is probably even worse:"
Instead of "embodiment (of the invention)" just write "example". This should not be much work. There is no need to delete the example.
The Guidelines have always required this. Perhaps the exact wording of this passage of the Guidelines has changed (I did not check), but I see no change in substance. (I guess examiners have been told no longer to ignore the passage for the sake of increasing production.)
Of course if you think the example should be covered by the independent claim, then make sure the claim does. Or if you think the claim already does, then explain that to the EPO.
But if you agree that the example is not covered by any of the independent claims, perhaps you could accept (or realise) that Article 84 EPC is not intended to serve the interests of the patent proprietor or his attorney, but of the public.
Btw, until some years ago Canada required "spirit of the invention" to be removed from the description:
https://www.lexology.com/library/detail.aspx?g=68747527-462e-484e-ad59-d109508dd148
So the EPO is not the only patent office that requires amendments to the description.
@Proof of the pudding:
DeleteI agree with your criticism of the reasoning of T 1024/18. It seems the board was too impressed by the argument that, since the claims have to be clear from their wording alone, the description can never make them unclear. This left only the support requirement to work with.
Instead, I fully agree with T 2766/17 that conflicting statements in the description can/do render an otherwise clear claim unclear.
Hmm, the current Guidelines explicitly state that is not sufficient to change "embodiment" to "example"...
DeleteThis means that I agree with Proof of the pudding that the Guidelines are now asking too much. Sure, the word "example" does not rule out that the example falls under the claim, but Article 84 EPC does not require the appellant to exhaustively list what does and what does not fall under the claim. If the claim says car and an example in the description deals with a bicycle but does not suggest that a bicycle is car and/or falls under the claim, there is no conflict. The skilled person reading the application will know that bicycles exist and that rockets and submarines exist. Why should the description explicitly state that bicycles do not fall under the claim when it does not have to do so for rockets and submarines (unless they are also among the "examples")?
I have just as much a problem with "Example" as I do with "Embodiment" in that both beg the question "Of what?". To my mind, it can only be "Of the invention". And if it is held out to be an example of the invention but lies outside the literal wording of the claim, it activates the Examiner's urge to strike it out.
DeleteCompare the concepts of "invention" and "disclosure". The disclosure remains what it was as filed, unaffected by prosecution amendments to narrow the claim to cover (say) just one of the several "Examples" disclosed in the application as filed.
And so to my question: is the profession worried about loss of disclosure, as such, from the description, during prosecution, or is its complaint about excision from the description of the loaded words "Example" and "Embodiment"? When loading up the description of a divisional with numbered paragraphs reciting the word content of the claims from the original WO publication, is it acceptable to introduce them with wording such as: The following numbered paragraphs are part of the disclosure given by this
specification?
MaxDrei, then just write "an example helpful for understanding the invention".
DeleteBut I understand that the current Guidelines do not accept even this and require something like "an example outside the scope of the claims". I would be surprised if there is much case law supporting that requirement. It also seems dangerous, since if the example later turns out to be within the wording of the claim after all, you have now disclaimed it and you are most likely stuck in a 123(2)/(3) trap with a dead patent.
Regarding divisionals with the original claims moved to the end of the description as "clauses", I don't see a good reason for not deleting them from the description during the prosecution of the application. The only reason for including those clauses was 123(2) and after filing you no longer need them. (You are also not adding the text of the original claims of a non-divisional application to the description the moment you amend the claims.)
When Patent robot claims that "more and more people are realizing that there is not any provision at all in the EPC requiring applicants to delete unclaimed subject-matter from the description", I invite him to look at the composition of the boards in both cases.
ReplyDeleteit does not really come as a surprise that in both cases we find the same legal member.
All other boards apply the existing long line of case law according to which the description ought to be adapted.
Hoping for a referral to the EBA in view of these facts might remain a hope for quite a while.
T 1444/20 has already be commented on another blog:
Just have a look. It could be quite helpful.
https://blog.ipappify.de/t-1444-20-no-need-to-adapt-the-description-at-grant/
I also invite you to have a look at T 2766/17. in this decision the BA, being aware of T 1989/18 concurs with it, in that the claims should be clear by themselve, but only to the extent that the description should not contain statements contradicting the plain claim wording.
https://www.epo.org/law-practice/case-law-appeals/recent/t172766eu1.html
In other words, the description has to be adapted.
Defenders of the EPO’s current approach often cite T 1808/06 as though that is the final, definitive word in the matter. However, that brief decision provides absolutely no legal reasoning, merely citing the relevant passage of the Guidelines as it stood at the time. Compared to the actual analysis provided in T 1989/18, I find myself unconvinced by the earlier pro-amendment decision.
ReplyDeleteIn any event, even if T 1808/06 is correct, it is not at all apparent how that could both support the EPO’s older, more permissive approach to the description *and* suddenly render it *imperative* that a more stringent line should be taken. Compared to the new situation, relatively few users had major complaints about the older approach.
What seems to be lacking among defenders of the EPO’s new, hardline approach are:
1. A cogent legal analysis which explains why the EPC requires amendments to the description, on at least an equal footing with the detailed legal analysis in T 1989/18; and
2. An explanation of why the self same older case law which apparently both required and supported a more lenient approach to description amendments can suddenly no longer justify the maintenance of such an approach, but instead *necessitate* a shift to a hardline approach from which any step back is unthinkable.
I would add:
Delete3. Why on earth the EPO is the only patent office requiring such amendments despite all PCT and EPC member states having the same requirements (actually Art. 6 PCT is even stricter) of Art. 84 EPC?
As Attentive points out, both decisions which fail to follow the established line emanate from the same single Legal Member. Is that Member a lone maverick?
ReplyDeleteAs to hanging on to the WO claims, all the way into the B publication, as numbered paragraphs at the end of the description, I suspect that retention of the words "invention" and "embodiment" (as in this decision) are a provocation to all those inside the EPO who argue that Art 84 EPC imposes requirements for conformity over and above those found in the Implementing Regulations. But why do we try to retain beyond grant that reservoir of words of the PCT application as filed? To retain their disclosure content, I would suggest. So what's wrong with introducing those numbered paragraphs at the end of the description offered for allowance with a preamble such as "The following numbered paragraphs constitute part of the present disclosure:" Might that escape censure by the zealots within the EPO?
T 1808/06 is by no means the only decision in which the adaptation of the description to the claims is required. There is a long line of case law which goes in the same direction. The frenzy created in the profession by T 1989/18 and T 1244/20 is hard to follow.
ReplyDeleteThe day the last sentence in Art 84 is deleted = support by the description, then the description will not have to be adapted. But until then, there is no reason to simply forget this requirement. Why should statements be left in the description which are just there to be able in national procedures to shed a different light on the scope of the claims? The EPO is not there to cater to all possible DoE in all possible contracting states.
The allegedly “detailed legal analysis” in T 1989/18 has one big drawback as made clear in T 1024/18: it only relies on the clarity of the claims as such and ignores the link between claims and description. In T 1444/20, the analysis is not much better. No wonder as it emanates from the same pen.
There is no “hardline approach from which any step back is unthinkable”, it is just to apply Art 84 in its full breadth. That some divisions have been rather lenient on this point (it allows to produce more) and other overly pedantic, warranted a reminder in the Guidelines of what has to be done.
To insert a sentence of the style "The following numbered paragraphs constitute part of the present disclosure:", when part of the disclosure is not any longer covered by the claims is as good and useful as putting a plaster on a wooden leg! There is behaving as zealots in the EPO. It just asking to do what is required and has been established by case law.
It would be better to spend some time to look at the actual quality of the work done at the EPO. The production might have increased, but the same cannot be said about the quality. When you realise in opposition that the search has just been sub-optimal, what does it bring to get excited about the necessary adaptation of the description when the proportion of patents revoked or maintained in amended form, sometimes even severely limited, is steadily increasing and the number of cases in which the opposition is rejected is steadily diminishing.
Or are patents just there for show or to compare the height of the respective piles when discussing between patent holders?
"The day the last sentence in Art 84 is deleted = support by the description, then the description will not have to be adapted."
DeleteThe same sentence is present in all EPC CS national laws and even in Art. 6 PCT, where the word "fully" is added: "They [the claims] shall be fully supported by the description."
So why no patent office in the world requires the deletion of unclaimed subject-matter? Is the EPO wrong or is it the rest of the world?
If you read the TP of the EPC you will notice that the word "fully" was deleted from the first drafts, so the intention of the legislator was to have a more relaxed provision, not a stricter one.
Do you really think that the object of Art. 84 EPC was to require the deletion of unclaimed subject-matter and not what is simply written there? Do you really think that such a heavy burden did not deserve a specific article or rule in the EPC? Come on...
Dear Patent robot,
DeleteIn case you had not realised it, it is the third part of Art 84 which does the job, so that there is no need to have a specific article or rule in the EPC to this effect.
Just take notice oof the long line of case law, exemplified for instance by T 1024/18 or T 2677/17.
I do not know why "no patent office in the world requires the deletion of unclaimed subject-matter", and actually it is irrelevant as what matters is what happens at the EPO.
If all lemmings would jump down the cliff, would you follow? I doubt it, so your comparison is not relevant at all.
(I am the Anon of Monday, 23 May 2022 at 19:44:00)
DeleteDear AO,
Your insistence (both here and also under another name elsewhere) on the last sentence of Article 84 EPC being the source of the requirement to amend the description is very well-known. However, all that the last sentence of Art 84 says is:
"They [the claims] shall be clear and concise and be supported by the description".
There does not seem to be any serious dispute that the amendment of the description does not relate to clarity or conciseness. The - perhaps irreconcilable - philosophical difference between the two camps in this debate therefore seems to be what is meant by "supported".
If the original disclosure says that the invention relates to embodiments A, B and C, but the claims as approved for grant relate only to A and B, does the continued presence of embodiment C in the description mean that a claim to A and B is not "supported"? If so, why? After all, it is well established that the claims should normally be read on their own, therefore if the claim when read on its own clearly relates to "A and B" why should the presence of C in the description matter?
Now, those of you on the "pro-amendment" side might say, conversely, that if the claim on its own clearly relates to A and B, what is the point of retaining C in the description. In response I would say that it is the EPO that is positively requiring applicants to do something, namely to amend the description, then the onus must be on the EPO to explain why that requirement is necessary, just as the onus is on the EPO to raise objections such as those based on the prior art in order to necessitate amendments to the claims. Merely pointing to the last sentence of Art. 84 does not, to me, seem to be enough, since there is an unsettled debate as to what "supported" might mean in this context.
You also say that "there is no “hardline approach from which any step back is unthinkable”, it is just to apply Art 84 in its full breadth" and suggest that the recent amendments to the Guidelines are simply intended to remind the divisions of what they should have been doing all along. That simply does not match the experience of those of us outside the EPO. What you suggest was an (unduly?) lenient approach taken by "some" divisions in the past was, to the contrary, the normal experience of the vast majority of us with the vast majority of divisions, and we could live with that. That approach was apparently in line with the case law. What we face now is more like an inversion of that, where the "pedantic" approach has become the norm. It is clearly not simply a case of reasserting the "proper" approach as it always existed - it is a total change in practice. While it might not look like that from a purely legal, academic standpoint, it is nevertheless the practical reality. That, dear AO, is why there is such controversy now, where there was not really such dispute before.
Dear AO,
DeleteT 1024/18 refers to T 1808/06, which as pointed out above contains no actual reasoning.
It also refers to T 977/94, which provides only scant reasoning for its position (referring to Art 84, second sentence and to Art 69, but without really exploring why the "support" requirement necessitates amendments) and to T 300/04, which again merely refers to Articles 84 and 69, and cross-refers to T 977/94, but does not expand upon the very scanty reasons provided therein.
Is this really the best reasoning that the "long line of case law" can come up with? I am hardly convinced, if so.
(T 2677/17 cannot be found in the Boards of Appeal database - perhaps there is a typo here?)
Might I suggest that one of the reasons for such excitement about more recent decisions starting with T 1989/18 is because these decisions are clearly contrary to existing practice (thus inherently of interest, even if they are not eventually followed more widely by the EPO); and because they seem for the first time to really go into detail in exploring what the purported legal justification for description amendments might actually be, which is something the previous case law hardly seems to have bothered to do. Even if the analysis turns out to be wrong, it is still notable for at least this reason.
Dear AO,
Deleteyou write "In case you had not realised it, it is the third part of Art 84 which does the job, so that there is no need to have a specific article or rule in the EPC to this effect."
Art 84 EPC does not say "Subject-matter which is not claimed shall be deleted from the description".
Case Law 2019 says instead that "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."
Even Case Law 2019 is wrong?
The right number is T 2766/17
Deletehttps://www.epo.org/law-practice/case-law-appeals/recent/t172766eu1.html
You wrote:
Delete"The day the last sentence in Art 84 is deleted = support by the description, then the description will not have to be adapted."
I would argue that the requirement of clarity of the claims can be infringed by conflicting statements in the description and can therefore necessitate amendments of the description even after deletion of the last sentence of Art. 84.
As you put it yourself: "Why should statements be left in the description which are just there to be able in national procedures to shed a different light on the scope of the claims?" Does this not show that this is perhaps even more about clarity than about support? See indeed T 2766/17.
On reflection, Attentive, I should not have used the loaded word "zealot" to describe those EPO Examiners who are the most zealous about every perceived "disconformity" between the description and the otherwise allowable ie clear, claims. But having now read the decision you tip us off about, T2766/17, I see that what bothers that Board are flat contrdictions between the claim and the description. To my mind, not every trifling "disconformity" amounts to a "contradiction" which destroys the clarity of an otherwise perfectly allowable set of claims.
ReplyDeleteOr do I see it wriong, readers? Must every "disconformity" be struck out because it is indeed a flat contradiction, a dangerous thing which kills the delicate flower that is the experienced specialist reader's understanding of the B publication.
Attentive, I think you might attract some flak from some readers when you assert that the EPO
".... is not there to cater to all possible DoE in all possible contracting states". Not sure what you have in mind with "cater" but to my mind the EPO ought to recognise the reality that a DoE exists and the vourts in the Contracting States are doing there best to harmonise it, a task that will take them at least a generation, I should think.
You are certainly right that not every imaginable disconformity results in a lack of clarity (or support).
DeleteHowever, before we can discuss what level of zealousness in finding contradictions between the claims and the description is still admissible, we first have to agree on whether such contradictions can in principle lead to a violation of Article 84 EPC (or some other EPC requirement). Is there a legal basis for requiring amendments to the description in cases of an egregious conflict between the description and the claims? I think we might agree that yes, there is, and it is Article 84 EPC.
Dear Max Drei,
ReplyDeleteI might not have been clear enough and I apologise for this. What I meant is simply that every national court has his own way to apply the DoE. This could mean indeed that it is best not to adapt the description, but this is not what is in the EPC.
This is why I said before that it is the duty of the EPO to put all applicants/proprietor on a par and do not let slip certain things through just because the representative is more cantankerous and refuses to adapt anything.
What is not correct is a pedantic approach by EDs/ODs, but I am convinced that a sound application should not be an obstacle.
I will not get tired repeating that the chance to come to a harmonised DoE has been missed at the EPC 2000. There was a proposal for the definition of equivalents in an Art 3 of the protocol. the contracting state did not want to agree and we ended up with an Art 2 of the protocol which speaks about equivalents but without whatsoever defining them.
This is the reason why we are in such a mess at present, but it is not the EPO to be blamed.
DeleteI don't want to re-run all of the arguments relating to equivalents here, AO, as it is plain that you have your opinion and will not be moved from that. But I wish to make a broader point to the audience here, which is that the EPO is merely one (albeit very important) part of the overall legal picture. I often have the feeling that the EPO would simply rather not consider the reality of everything that takes place outside the walls of the EPO - in other words, the reasons why applicants seek patents in the first place, and what they seek to do with them after the EPO has granted them, and how those goals might be achieved, be it in the context of litigation, FTO, licensing, etc etc. In the words of Tom Lehrer's famous song, "Once the rockets are up, who cares where they come down? That's not my department! says Wernher von Braun"...
The EPO surely cannot simply continue to stick its head in the sand and ignore that wider context - or, even worse, assume that any objections from outside the sacred halls of the EPO can only be due to excessive legal nit-picking or from nefarious and underhand motives on the part of applicants or their representatives. Remarks such as yours where you seem to affect complete incomprehension at the so-called "frenzy", and lash out at so-called "cantankerous representatives", sadly seem to be symptomatic of that lack of interest in why this is such an important topic, and of that inherent suspicion that critics of the EPO approach are up to no good.
There may be good and legitimate reasons for applicants (not just their representatives) to wish to retain as much of the original disclosure as possible, and it would behove the EPO and supporters of its approach to seek to understand those reasons rather than dismissing them out of hand or, like Dr von Braun in the song, merely shrugging and saying "not our department".
Ironically, the reason behind the EPO introducing this hardline approach to description amendment is because of complaints it has received about subsequent litigation of the patents. It has been advised that at least one court was interpreting the claims in a significantly broader fashion than was intended by the EPO, solely on the basis of wording in the description which fell outside the claim scope. To ensure that the courts fully understand the claim scope that the EPO intends to grant, it is ensuring that there is nothing in the description that could lead to such a broadening misinterpretation.
DeleteThis was also my understanding of the origin of the EPO's new approach to adaptation of the description. If this explanation is true, then it is deeply troubling in many ways.
DeleteFirstly, all of the relevant discussions and decisions took place behind closed doors, and without the knowledge of the (broader) EPO user community. This is outrageous, especially when the change in practice is so substantial (and consequential for applicants).
Secondly, it is simply not within the EPO's remit to police how national courts conduct their assessments of claim scope. Ensuring that descriptions do not contain statements that flatly contradict the claims is one thing. However, it is quite something else to insist upon the insertion of statements that effectively serve as disclaimers. The former practice does not tie the hands of the national courts, whereas the latter practice does (and does so by design).
Thirdly, whilst a harmonious approach is desirable, we have to remember that, despite various ratifications of the UPCA, the national laws governing infringement have still not been harmonised. The national courts are therefore fully entitled to reach their own decisions regarding infringement. Neither the EPO nor any other national court can or should have any say over this. This is because, when it comes to interpreting Article 69 EPC and its Protocol, no decision of the EPO, or of any national court, is in any way binding on any (other) national court.
Fourthly, if the problem identified was a "rogue" court, then the most appropriate solution would have been dialogue with that court. This would have been infinitely preferable to a "solution" that deprives patentees of their rights, and effectively renders otiose Article 2 of the Protocol.
I can understand that there may not have been any questionable motivations behind the EPO's actions here. However, I think that it is well past time that the EPO recognises that it has not hit upon the best solution to this problem, and engages in good faith with the user community to identify a more acceptable (and legally justifiable) solution.
If only the Guidelines for Examination would be clear, concise and supported by the EPC...
ReplyDeleteFACT: during examination of patent applications, the EPO does not consider the doctrine of equivalents. (Also, during examination, the EPO never seeks evidence from persons of ordinary skill in the art regarding the literal meaning of the wording of the claims.)
ReplyDeleteFACT: the EPO's practice of forcing applicants to label each and every disclosure of the description as being either "in" or "out" of the claimed invention is likely to have an impact upon the determination of equivalents by national courts.
Putting the above two facts together, it seems to me that not only is the EPO's description amendment practice based upon inadequately reasoned (and likely ill-informed) "conclusions" regarding the scope of the claims, but it is also (potentially) highly prejudicial to applicants.
I had thought that the role of the EPO was to grant patents, and that the role of the national courts was to interpret the claims of those patents in connection with matters of infringement and validity. I am curious as to why the EPO now considers that it has a role in telling the national courts how they should interpret the claims (when it comes to assessing which disclosures of the description of a patent fall within the scope of those claims).
Indeed so, Proof. Our friend the Attentive Observer (DXT) laments the fact that the Protocol to Article 69 does not provide a definition of equivalents and blames that for the current mess, but I fail to see the logic of the argument which flows from the starting points of "neither infringement nor the DoE are the business of the EPO" and "Article 69 and the Protocol fail to define equivalents" through to the conclusion "we must take a scorched earth approach and eliminate anything in the description that might conceivably be relied on as an equivalent".
DeleteWhy is that the logical conclusion and not (as I think you and I would agree) "we, the EPO, should therefore leave the description alone and allow national courts to determine how to interpret the claims and apply the DoE"?
It seems internally inconsistent to say in one breath that post-grant claim interpretation and the DoE are none of the business of the EPO, and in the next breath therefore to conclude that it is incumbent on the EPO to take a bulldozer to anything that might have relevance to those considerations.
Anon, I have reason to believe that the EPO's recent, strict practice on adaptation of the description was a reaction to the UK Supreme Court's decision in the pemetrexed case (where, in essence, a potassium salt was found to be an equivalent of a sodium salt recited in the claims).
DeleteIf my belief is well founded, then you have to wonder about the decision-making process within the EPO. This is because:
(1) the UK Supreme Court found that the retention in the description of disclosures that were arguably inconsistent with the claims did not justify stretching the "normal" interpretation of the claims beyond the single (sodium) salt defined in those claims; and
(2) the Court's decision on DoE did not in any way rely upon the allegedly inconsistent disclosures.
This suggests to me that it is no accident that the EPO insists upon labelling "non-claimed" embodiments with wording including phrases such as "not encompassed by the wording of the claims", "not according to the claimed invention" or "outside the subject-matter of the claims". Those phrases differ from a potentially more palatable alternative ("not encompassed by the LITERAL MEANING OF the wording of the claims") in one important respect, namely that they could be perceived as precluding a national court from deciding that any such "non-claimed" embodiments are equivalents of the claimed subject matter.
What Proof of the Pudding forgets to mention is that Lord Neuberger found it necessary to blame the examiner for having raised an objection under Art 123(2) against of claim not limited to pemetrexed disodium.
DeleteIn the absence of any proof that other salts would work as well, the examiner had no choice and I find this comment of Lord Neuberger totally misplaced and unreasonable.
Any national jurisdiction can apply the DoE it thinks appropriate, but any national jurisdiction should refrain from interfering with the dealings of the EPO.
The aim of Lord Neuberger was to overrule the disastrous Improver decision and set new rules for a UK DoE.
§ 12-20 of the UKSC decision say something quite different from what Proof of the Pudding claims in § 1 and 2 above. The UKSC did well take into account what was written in the introductory part of the description to come up with its new DoE.
And here lies the problem. The description says much more than the claims!
Wow! So you believe that "any national jurisdiction should refrain from interfering with the dealings of the EPO". Why is that? And do you not think that the reverse should (also) be true?
DeleteMy comment (below) from earlier today explains why paras 12 to 20 of the UKSC's decision do not support your views. However, I would also challenge your assertion that Lord Neuberger's comment was "totally misplaced and unreasonable". This is because I believe that you are referring to his comment on Art 123(2) EPC, which was:
"It is unnecessary to decide the issue, but, at least as at present advised, I am inclined to think that the examiner was wrong in taking that view".
To me, this comment suggests that, based upon the prevailing interpretation of (the UK legal provision equivalent to) Art 123(2) EPC, Lord Neuberger was inclined to think that there was an arguable case that an amendment pursued by the applicant during prosecution did not add new matter. Of course, after grant, there was no way for the patentee to challenge the examiner's decision on this point. But, especially in the context of the case, this does not make it unreasonable for the judge to make an obiter comment regarding his views on this issue.
It is important to note that common general knowledge plays a role in whether an amendment adds subject matter and UK courts have far more experience of hearing expert evidence of common general knowledge than EPO examiners do. They also have much more time to do so. There are different levels of generality in all patent applications and a well-drafted application will explicitly spell those out. In this particular case, the application did not provide literal basis for a claim whose degree of generality was somewhere between the originally-filed claims and the granted claims. However, literal basis is not required and the absence of literal basis does not in itself mean that the skilled addressee could not have derived an intermediate level of generality, based on the teachings of the specification and their common general knowledge. Having studied the evidence in more detail than any of us have, Lord Neuberger's view was that the skilled addressee would have been able to derive an amendment that the EPO did not allow. That is hardly a surprise and it is disrespectful to suggest that his comment on added subject matter was "totally misplaced and unreasonable", when it was merely a difference of opinion. Courts criticize judgements from lower instances all the time.
Deletehttps://www.patentlitigation.ch/for-discussion-has-the-requirement-that-claims-be-supported-by-the-description-been-perverted-over-time/?no_cache=1653391679
ReplyDeleteTo the preceding commenters,
ReplyDeleteI do not wish to be confused with another person. Any association of AO with anybody else, is, as would be said in a movie purely fortuitous and should not be take for something else than this.
I do not lament whatsoever and the case law of the BA has made it clear what it means to adapt the description to the claims. Any inference that the claims could be interpreted differently than their plain wording is to be deleted, whether the profession likes it or not. just have a look at T 2677/17, it could not be clearer.
None of the commenters so eager not to amend the description seem not to have grasped the idea that the job of the EPO is not to allow fancy interpretations of the claims by leaving statements which can give a different meaning to the claims. That is what is required by Art 84.
And indeed interpretation of the claims and the way the DoE is applied by national jurisdictions is not a matter for the EPO. But I maintain that it would have brought some harmonisation if the protocol would have defined what is to be understood by an equivalent.
When part of the disclosure is not any any longer part of the invention as defined in the claims, what does it bring to insist upon leaving it as being part of what is claimed? I do not like using the word cheating, but in my opinion it is what it boils down to. That the EPO wants to put all applicants on a par is just a legitimate aim.
When I see the pemetrexed case, it becomes abundantly clear what has happened there. Thanks to a very broad statement in the introduction of the description, the proprietor was able to claim an invention he had never made at the time. The only example disclosed was pemetrexed disodium and nothing else. The applicant at the time had manifestly no other data at hand otherwise he would have submitted further information about other salts. But he bluntly refused to limit the disclosure to pemetrexed disodium.
No surprise that after this case, the screws had to be tightened at the EPO. Please do not forget.
I do not intend to continue a long discussion on this topic, be it on this thread or on any other. The arguments on both sides have been exchanged and there is nothing to add.
Let's agree that we disagree, but do not claim from the EPO something which it cannot deliver in view of the long lasting line of case law on this topic.
The description has to be adapted and it is not a single legal member who will be able to change things, even he might be convinced of his point of view. other boards have shown him how to look at Art 84 which does not limit itself to clarity but also mentions support by the description.
T 2677/17 does not exist. It is T 2766/17 and you made the same typo in your comment on your blog.
DeleteAO, before making statements about what becomes "abundantly clear" from the pemetrexed case, I would encourage you to (re-)read the UK Supreme Court's judgement in that case.
DeleteThe approach of the UKSC was to:
(a) determine whether Actavis' products infringed on the basis of a "normal" interpretation of claim 1 (FINDING: no infringement on this basis);
(b) consider whether Actavis' products represented an "immaterial variation" of the subject matter of claim 1.
Further, the UKSC conducted step (b) by:
- initially disregarding the prosecution history; and
- then, having reached a provisional conclusion, addressing that history and its effect on the provisional conclusion.
The UKSC's provisional conclusion was:
"Looking at matters more broadly, the addressee of the Patent would, as I see it, understand that the reason why the claims were limited to the disodium salt was because that was the only pemetrexed salt on which the experiments described in the specification had been carried out. However, it does not follow that the patentee did not intend any other pemetrexed salts to infringe: the suggestion confuses the disclosure of the specification of a patent with the scope of protection afforded by its claims. Particularly given the facts set out in para 25 above, it seems to me very unlikely that the notional addressee would have concluded that the patentee could have intended to exclude any pemetrexed salts other than pemetrexed disodium, or indeed pemetrexed free acid, from the scope of protection".
In connection with the effect of the prosecution history, the UKSC concluded:
"It seems to me clear that the reason why the examiner considered that the claims in the patent should be limited to pemetrexed disodium was because the teaching in the specification did not expressly extend to any other anti-folates. It is unnecessary to decide the issue, but, at least as at present advised, I am inclined to think that the examiner was wrong in taking that view. Indeed, in the course of his well-presented argument for Actavis, Mr Alexander QC seemed to accept that Lilly could have expressed its claims more widely than it did (albeit that this was not a point which was carefully explored). However, even if the examiner was right or at least justified in taking the stance that he did, I do not consider that that consideration can have any bearing on the question whether any pemetrexed salts other than pemetrexed disodium should be within the scope of the patent pursuant to the doctrine of equivalents. The whole point of the doctrine is that it entitles a patentee to contend that the scope of protection afforded by the patent extends beyond the ambit of its claims as construed according to normal principles of interpretation".
The UKSC's conclusions therefore do NOT depend upon "a very broad statement in the introduction of the description". Instead, they rely upon what the UKSC perceived, in the light of all of the available evidence (including the prosecution history) to be "immaterial variants" of the invention defined in the claims.
DeleteYou therefore appear to be defending the EPO's "tightening of the screws" based upon a misreading of the outcome of the pemetrexed case. In any event, I have yet to hear from you any cogent reason why it is legitimate for the EPO to exceed its remit (of granting patents) by seeking to tie the hands of national courts regarding claim interpretations (and, in particular, the doctrine of equivalents).
Simply, and repeatedly, pointing to ONE POSSIBLE INTERPRETATION of Article 84 is not enough to answer this point. The effects of that POSSIBLE interpretation need to be considered in the broader context, including: the impact on national courts; possible unfairness for patent proprietors; the TP for Article 84 (and related provisions), etc. Remember that you are making an extraordinary claim, in that you are effectively contending that, without ever considering equivalents, the EPO is entitled to force applicants to adapt patent descriptions in ways that prevent national courts from reaching their own decisions upon which disclosures of the description are equivalents of the claimed subject matter. And extraordinary claims require exceptional evidence.
See my comment above. The aim of Lord Neuberger was to come up with an "improved" Improver as stated on IPKat, but the introductory part of the description played a role. See § 12-20 of the judgement.
DeleteAs far as the typo is concerned, I rectified the mistake somewhere above here.
https://www.epo.org/law-practice/case-law-appeals/recent/t172766eu1.html
Ever heard of the parable of the straw and the beam?
It does not alter what I inteded to say for a mind willing to understand.
AO, you are clutching at straws. Paragraphs 12 to 20 of the UKSC decision simply DISCUSS the specification and claims of the patent. That discussion mentions passages that describe subject matter in general terms (ie terms broader than those used in the claims). However, there is NOTHING in the conclusory paragraphs of the decision that in any way indicate that those passages were relevant (let alone crucial) to the decision on DoE.
DeleteYour comments suggest that you believe a more "strictly" adapted description would have prevented the UKSC from concluding that the potassium salt of pemetrexed was an equivalent of the claimed sodium salt. This implies a belief on your part that the EPO would be justified in forcing applicants to effectively disclaim certain embodiments of the description, thereby removing the freedom of the national courts to interpret the claims how they see fit (in the light of all of the available evidence). However, I have yet to see from you even the slightest hint of a reasonable justification for the EPO assuming such a dominant role in matters concerning post-grant claim interpretation.
The EPO does its job when it identifies relevant prior art, elicits (written) submissions from the applicant during prosecution and helps to determine the final wording of the claims. With the exception of opposition and central limitation proceedings, that is where the job of the EPO ends and where the baton is handed over to the national courts. This is a clear dividing line that the EPO oversteps by seeking to effectively impose upon the national courts a specific, very limited interpretation of the claims (with regard to "non-claimed" embodiments of the description).
The national courts can and will make mistakes when interpreting the claims. For example, I believe that it was a mistake for the UKSC to conclude that it is OK to rely upon the results of post-filing discoveries to determine equivalency. This appears to me to create a two-tier system of patentability, where plausibility is used to determine inventiveness of embodiments falling within the "normal" interpretation of the claims, but is apparently NOT used to assess the inventiveness of embodiments that infringe only under the DoE. Nevertheless, the national courts should be free to make such mistakes, and to (hopefully) learn from them. After all, who gets to say what is a mistake and what is not? Remember that, particularly in important cases, the national courts will have considered FAR more (expert / witness) evidence and submissions than any EPO examiner.
Frankly, it might be easier for courts, post-grant, to decide what is "equivalent" to the subject matter of the asserted claim if the description were left in the form it was as filed. If I were the judge, that's what I should like, thank you very much, EPO.
ReplyDeleteIs potassium "equivalent" to sodium? It depends on the context, doesn't it. And what is the context? In a "First to File" jurisdiction, it is the disclosure content of the application as filed.
AO reminds us that the Applicant on that filing date had data for only one salt (sodium) but nevertheless claimed their invention more broadly. But what else shall a competent patent attorney do, to secure for their client a full measure of the protection deserved by the inventive insight, the real teaching to experienced readers hungry for plausible new lines of development, the real life contribution to the thinking of the skilled reader? If the sodium salt solves the problem, is it not at least plausible that the K salt will too? For deciding whether K is "equivalent to Na, in a claim having as its date the filing date of the patent application, I think I should want to read the disclosure as originally filed ie on the date of the claim (and I'm not sure whether the "conformed" tweaked amended description insisted upon by the EPO would be of any further help to me in my struggle to set a limit to what is "equivalent" to the claimed subject matter.
AO, surely you are not intimating that such ordinary (indeed, best practice) drafting behaviour is reprehensible, somehow blameworthy. Or are you?
Unfortunately that appears to be exactly what AO is suggesting (his silence on this, and refusal to engage with any of the actual arguments made in this thread, speaks volumes). One can only hope that his successors in senior positions at the EPO do not take such a contemptuous view of those who use their services, although sometimes I wonder.
DeleteOne can indeed hope. Sadly, I fear that such hope would be misplaced. This is because it appears to me that, in common with AO, the EPO's (senior) management has a worrying tendency to simply ignore, rather than engage with and substantively address, any "inconvenient" points made by those having differing views.
DeleteDr Hughes wrote: "The release of T 1444/20 means that the decision in T 1989/18 can no longer be dismissed as an anomaly that EPO Examiners can legitimately ignore"
ReplyDeleteDon't hold your breath. Examiners have been provided with standard text citing a dozen of T decisions allegedly supporting the requirement of adapting the description to reply to applicants invoking T 1989/18. I would bet that the only change that you are going to see is that the text is now going to recite "T 1989/18 and T 1444/20 are isolated decisions."
"The position of Examiners is not enviable, given that they will now face, on the one hand, the clear stipulation of the Guidelines requiring adaption of the description in line with the claims, and on the other hand, applicants armed with two recent Boards of Appeal decisions finding no legal basis for description amendments. "
Divisions may face more resistance from applicants, but ultimately they will apply the Guidelines as they normally do for any other issue.
T 1988/18 and T 1444/20 are two isolated decisions as they stem from the same legal member.
ReplyDeleteIt will be interesting to see whether this member of the BA will be re-appointed in view of his „performance“.
He has provoked a reaction from the profession which was not warranted.
Calm down, take a deep breath and now for something completely different (Copyright Monty Pythons)
AO,
ReplyDeleteYou say that the case law of the BA has made it clear what it means to adapt the description to the claims. Any inference that the claims could be interpreted differently than their plain wording is to be deleted, whether the profession likes it or not.
But this attitude simply flies in the face of what has been repeatedly pointed out here, that the case law of the BA has failed to provide any reasoning or justification for such amendments beyond simply pointing to Arts. 84 and 69 and concluding, in circular fashion, that amendment is necessary. It seems to be only with T 1989/18 and its successors that the Boards have really started to engage with an analyis of whether Arts. 84/69 really do require this, and if so, to what extent. You seem to be determined to stick to the old, unreasoned decisions and ignore the newer, reasoned decisions. That you consider the reasoning of the new decisions to be flawed is fine, and is your prerogative. But given that the Boards have provided some legal analysis, is it not incumbent on you as a defender of the status quo to provide some actual reasoning in the other direction, to explain where T 1989/18 is wrong? Simply pointing to the old case law, which does not engage with the legal reasoning, will not do.
You also say None of the commenters so eager not to amend the description seem not to have grasped the idea that the job of the EPO is not to allow fancy interpretations of the claims by leaving statements which can give a different meaning to the claims. That is what is required by Art 84.. But, with respect, you seem to be conflating clarity and support here. You have repeatedly told us here and elsewhere that it is the second sentence of Art 84 which is key, and in particular the "support" part. Although clarity and support are both mentioned in that sentence, they are distinct concepts. Which is it that you consider to be the problem? Is it clarity, is it support, or is it both? And if it is support that is the problem, we are still none the wiser as to why a claim saying "A or B" is not any longer supported when the description says "A or B or C".
When part of the disclosure is not any any longer part of the invention as defined in the claims, what does it bring to insist upon leaving it as being part of what is claimed? I do not like using the word cheating, but in my opinion it is what it boils down to.
As already pointed out, there are legitimate reasons for Applicants to wish to retain the original disclosure. Frankly, your attitude here of assuming that users are cheats and frauds is inappropriate.
That the EPO wants to put all applicants on a par is just a legitimate aim.
Given that you have already acknowledged that the DoE is not within the competence of the EPO, why is it a legitimate aim to "put all applicants on a par"?
The argument in T 1989/18 is that the claims have to be clear from their wording alone and that THEREFORE the description has no bearing on their clarity.
DeleteSuppose the claim says "a vehicle, where the vehicle is a car" and the description states that, in one embodiment of the invention, the vehicle is a bicycle. I think most commenters here agree that such contradictions lead to a lack of clarity of the claim. It follows that most commenters here are not convinced by the reasoning of T 1989/18 (whether they realise that or not).
If we accept that, at least in egregious cases, Article 84 EPC can require amendments to the description, then we necessarily must agree that the EPC does give a legal basis, and that the reasoning of T 1989/18 is therefore wrong. The next question is how far this requirement goes.
I might agree with Pudding that the EPO should not require an explicit statement that something is not covered by the claims. It seems better to merely require the removal of statements suggesting that something is covered by the claims/an embodiment of the invention.
Vlad, your final "It seems better..." sentence prompts me to the thought that i) thedescription is the place where I declare what I am disclosing, what I think is my contribution to the art, whereas the claims declare ii) what is the inventive concept for which I am asserting exclusive rights, and so iii) there is no reason why I should be forced by the EPO to excise any part of my disclosure for no better reason than to achieve "clarity" or "support" for those claims or because iv) the Examining Division is zealous enough to discern something it dubs an "inconsistency" between the claims and the disclosure.
DeleteOr, putting it another way, a mere "inconsistency" or lack of 100% "conformity" between the description and the claims is NOT enough to justify an objection under Art 84, EPC.
I look forward to a more "real life" assessment by the Boards of Appal of what constraints Art 84 really does impose on examination prior to grant, followed by a corresponding relaxation of the unjustifiably strict demands within the current edition of The Guidelines.
As the discussion is turning in circles, it appears useless to continue.
ReplyDeleteIf you do not understand what it means to put all applicants on a par, I cannot help more.
Some divisions are rather pedantic, some could not care less. This is not correct.
In my humble opinion, there are more serious problems at the EPO. It is the quality of the work delivered. Just have a look at the number of patents revoked or limited and compare it with the number of oppositions rejected.
It is flabbergasting! What does it help too have an adapted description or not, if the prior art revealed during opposition should actually have been found during the original search!
This seems more relevant.
Look also at the lottery effect occurring at the BA. It is not normal that the fate of a patent depends on the board dealing with the case.
This is a source of worries, much more important than the adaptation of the description!
The above anon is clearly AO. "Because there are also problems with X, we shouldn't worry about Y". This is a standard deflection tactic of someone who has no serious answers to any of the points raised. If the conversation is now going in circles, it is clearly AO who is responsible for that by raising points and then refusing to discuss them in good faith.
DeleteI find it disgraceful to hide behind anonymity and to accuse other people without the beginning of any evidence to have said something.
DeleteYou have really missed an opportunity to stay quiet!
Does anybody know what prompted the EPO to abandon its briefly extant Rule that shut down the opportunity to file a divisional after a specified period. Was it not international pressure from bulk users that saw it off? So, might similar pressure from bulk users (who pay the costs of "conforming the description") be the only thing that makes any impression on the EPO, and the only thing that will give the EPO pause, in its unique obsession with strict conformity between description and the allowable claims?
ReplyDeleteAlso, I have to say something about the pemetrexed case (supposedly the cause of the EPO's ratcheted-up insistence on strict conformity). The UK Supreme Court decision included some embarrassing remarks about prosecution at the EPO and Art 123(2) EPC. I suspect that both sides in the litigation, for different reasons, chose not to educate the court about the reality of EPO prosecution, both fearing that getting into that area increase the likelihood of their losing the case. Judges should be cautious about propounding on issues not fully tested by cross-examination of witnesses on each side of the dispute, lest they reveal their ignorance on the issue.
That suspicion might seem far-fetched, but there is another recent case (Claydon) which increases my suspicions that an English court can remain "in the dark" about a particular issue all through the case precisely because both sides have their reasons to keep clear of any issue that might lose them the case. In the Claydon case, it was the science of soil mechanics. In the pemetrexed case it was how Art 123(2) is managed at the EPO.
That being so, it is unfortunate, to say the least, to invoke the pemetrexed case as the basis for ratcheting up the strictness with which ED's at the EPO enquire into "conformity" when examining under Art 84, EPC.
A decision by a BA is without doubt a collective decision. Since the problem is primarily a legal one, it does not take a great deal of knowledge to realise that the arguments come primarily from the legal member.
ReplyDeleteHowever, many other legal members in other BA are of the opposite opinion to the legal member in decisions T 1989/18 and T 1444/20. And this is also a fact which is too often forgotten.
It is abundantly clear that the supporters of T 1889/18 and T 1444/20 do not want the description to be modified, as is the case for instance in France as well as in the USA. This is a legitimate wish, but this possibility is not provided for in Art 84, last criterion.
I would add that all the supporters of decisions T 1989/18 and T 1444/20 seem to forget one very important point.
The patent granted at the end of the examination procedure represents a fiction because it represents the application as it should have been filed, since the life of the patent is calculated from the filing date.
The criteria set out in Art 84 therefore represent a very coherent set of rules. Any ambiguity as to the interpretation of the granted claims is to be avoided. This is the purpose of the third criterion under Art 84. Without bringing the description in accordance with the claims, then, resorting to the file wrapper is necessity.
In the event of discussions before a national court, or even in the future before the UPC, there is nothing to prevent the proprietor from presenting the application as filed to the national judge if he feels the need to do so. The judge will then be able to establish the result of the examination without having to refer to the examination file as such. I remember a decision of a BA mentioning this point, but I cannot find it rapidly.
National offices and national courts have very different views on many issues, clearly departing from those of the EPO and the BA.
For example, take added subject-matter under Art 123(2). I am sure most of the representatives for the applicant/proprietor would argue for a much less severe approach to this criterion. The contrary is valid for opponents or potential infringers. But should the EPO and the BA fall in line with the least stringent institutions in this respect? I do not think so and the same applies to Art 84.
The EPO and the BA have developed a long lasting practice which is what it is, but which on the whole is very consistent whether it is for Art 84, Art 54, 56 and 123(2). I think that applicants know very well what to expect and this is for the greater good of the users of the system and of third parties confronted with granted patents.
Without taking away from the national judge the possibilities of interpreting granted claims under the Art 69 protocol, it is important that third parties confronted with granted patents can know what can be held against them. Any ambiguity introduced by the description is therefore to be avoided. The role of the EPO is also to balance the interests of users and of third parties or potential infringers. One way to do so is to apply Art 84 in its entirety.
What applies to Art 123(2) should thus also apply to Art 84.
I think the respective points of view are clear. Continuing the discussion on Art 84 will not add anything to the debate. But the violence and the vehemence of some of the supporters of T 1989/18 and T 1244/20 is quite astonishing.
I will therefore refrain from any further comment. To paraphrase a late French trade union leader, if one has to know when to stop an industrial action, one also have to know when to stop a discussion.
Fair comment, Daniel, but where I differ from you in that I am not surprised by the vehemence with which some commenters here complain about how particular Examiners go about the business of examining for compliance with Art 84, EPC.
ReplyDeleteI see a qualitative difference between examination for clarity and that under Art 54 or 56 or 83 and it is this. Under Art 54 or 56 or 83, the question of compliance with the EPC is a binary matter: either the claim is novel or it isn't. But whether or not a written document is "clear" is not a Y/N question. No document ever written has been clear to a level of 100%. Every document lacks 100% clarity. Therefore, for an Examiner to assert that the application cannot be allowed because it is "not clear" will inevitably provoke an outraged reaction (especially if the Examiner had no problem to write a comprehensive analysis under Art 54 and 56 despite the alleged lack of clarity). Applicant anger can be avoided if the Examiner qualifies the clarity objection by explaining in specific detail how it is that the unclarity identified is serious enough to render the specification not "fit for purpose", that it cannot be tolerated because it manifestly imposes too big a burden on any post-issue court looking at infringement and validity. A vague feeling that the text exhibits a degree of ambiguity is not enough, if only because EVERY text suffers from that deficiency. There is a good reason why the EPC chose to keep Art 84 out of the grounds of post-issue validity attack, but it's not because the writers of the EPC were counting on Examining Divisions to impose on Applicants impossible burdens to satisfy the provisions of Art 84, EPC. They put their confidence in judges to decide inter Partes disputes fairly and accurately, even when the patent in dispute is less than 100% clear. The EPO should give the same degree of respect to those judges, and treat with fairness and respect those Applicants who are simply trying to secure for their inventors a scope of protection in line with Art 69 and its Protocol and commensurate with the contribution to the art (as set forth, coherently, in the description and drawings). Sometimes I suspect that Examiners "go overboard" on clarity because thex see this as the most effective way to safeguard their career progress by impressing the in house quality control management police force. Perhaps EPO management might like to reassure we users of the Office that this suspicion is groundless.
In spite of my announcement, I will reply to my friend Max Drei.
ReplyDeleteI can fully agree with you that it is difficult to have a document such that every reader would give it the same interpretation or in other words to be absolutely clear for all readers. This is particularly valid for legal texts and patents are legal texts. Otherwise we would not need judges in case of litigation.
But here it is not the clarity of the description which is at stake in the present discussion, it is the support of the claims by the description and not the clarity of the description as such. This latter concept has indeed no legal basis in the EPC. If an examiner claims that the description is unclear, he is, without any doubt, raising the wrong objection.
That some divisions have a rather pedantic approach when adapting the description to the claims and other do not care much is an acquired fact. Both positions are not correct as all applicants should be treated in the same way.
As long as Art 84 is as it is, some tidying of the description will have to be done once the wording of the independent claims is settled. It should become apparent what is falling under the wording of the claims and what is not. This does not mean necessarily to delete a lot, but simply to clarify which embodiments are falling under the claims and which are not. There is no lack of respect towards national judges if the EPO requires this from applicants/proprietors.
It is interesting to note that in 1973 and in 2000 it was the British delegation which was in favour of bringing a lack of clarity as ground for opposition. This was not accepted by the other countries and it is good so. I dare think the mess we would have been in should this proposal would have been successful.
It is clear that the role of the EPO is to give the applicants “a scope of protection in line with Art 69 and its Protocol and commensurate with the contribution to the art”. But this cannot mean that the description can be left as filed.
It is a temptation in view of the different national approaches for the DoE to try to get a bit a more flexibility in the interpretation of the claims and hence to try to extent somehow the scope a bit over what is actually claimed. In other words to present the description so that “super equivalents” can be deemed falling into the scope of protection.
I put this attitude on par with parties in opposition requesting a given interpretation of certain claims or features in claims to be incorporated in either the decision or the minutes of an OP. The position of the EPO and of the boards is very clear in the matter: the EPO is not there to provide possible material for later litigation at national level. I have even seen opponents wanting a decision on withdrawn requests! One wonders why?
It is exactly the same feeling which overcomes me when I see how fiercely adapting the description is resisted by certain representatives. It looks too good or innocent to be correct.
Daniel, the time that you spent at the EPO appears to have left you with an inclination towards a conspiratorial mindset. Sometimes things look "innocent" or "correct" because they are precisely those things.
DeleteIn any event, I take your comments to be an admission that you do not have a substantive response either to my challenge, or to the points made by me (and others) in connection with the unjustifiable overreach evident in the EPO's current practice.
I understand that EPO examiners might want to set the record straight regarding the subject matter that they consider to be patentable. However, in combination with the wording of the granted claims, the prosecution history already serves to educate the national courts on this point. If the EPO wishes to make things even more crystal-clear, then there are more appropriate actions that they could take, such as setting out an examiner's reasons for allowance.
By the way, I note that the current GL talk about a possible "misinterpretation" of the claims. This strikes me as odd. This is because it implies that the EPO, and only the EPO, knows the true interpretation of the claims, and that the national courts cannot always be trusted to reach the correct (ie the same) interpretation. Then again, this perhaps provides an insight into how the EPO now views itself ... as well as an explanation of why even howls of protest from the profession are having no discernible impact.
Dear Proof of the pudding,
DeleteI would respectfully draw your attention to the simple fact that we have not kept cows or chicken or any kind of domestic animal. I do not accept your familiarities. The day you tell me your name, I will accept to be called by my Christian name.
This is for the formal aspects. A bit of respect would do you good.
For the rest, i have nothing to admit whatsoever and certainly not that I have a conspirational mindset. I have experience excellent representatives, but also some less good ones and it was a pleasure to work with them.
I simply note that some representatives are absolutely adamant not to change a iota to the description as filed in spite, for example, of optional features having been incorporated in an independent claim. That such a statement should not be kept in the description does not have to be explained: it clearly induces a possible misinterpretation of the claims.
The same goes for claim like clauses. They are not claims, but should look a bit like claims. This is also not correct and it appears legitimate to suspect some hidden agenda behind such a way of doing. This has nothing to do with conspirational theories, but common sense leads to query such a behaviour.
What you, for whatever reason, consider an overreach is a perfectly normal requirement of a first instance division. All applicants have to be treated the same irrespective of the DoE applied by any national jurisdiction. Is this so complicated to understand?
You, and all those in favour of T 1989/18 or T 1444/20 are holding on those two decisions like on straws and simply want to disregard the long lasting line of case law which requires the description to be adapted to the claims. Why do you think that the vast majority of the boards remit for the adaptation of the description. Are they all stupid?
I am personally in favour of setting out the reasons for allowance. I never understood the logic behind the difference of treatment. Why are the grounds for refusal of an application public, but not the grounds for grant.
No less than a chairman of epi has explained to me that he, and most of his colleagues, are absolutely against the publication of the "votum" as it could be disadvantageous for the proprietor in later litigation or during prosecution in some countries.
The day the last criterion of Art 84 is deleted, than the description will not have to be adapted. But we are not yet there.
Proof's comment above seems to have touched a nerve, judging by the bizarre rant about cows and chickens.
DeleteThat aside, this commenter notes that (yet again) Mr Thomas is steadfastly insisting that there is a "long lasting line of case law" in support of amending the description, while ignoring the many many remarks from commenters here pointing out that while such a line of case law undoubtedly exists it nevertheless provides no real substantive legal reasoning for requiring description amendments. T 1989/18 and T 1444/20 have provided reasoning against the requirement for description amendments. Whether or not Mr Thomas agrees with that reasoning is beside the point: those decisions have provided reasons in support of one position, whereas the opposite position has frequently been asserted but not reasoned in detail.
To make such an observation is not to accuse the Boards of being "stupid", it is simply an observation of fact.
Less heat, please, and more light. Why, Mr Thomas, is it that you believe that the "long line of [unreasoned] case law" is correct and T 1989/18 et al. are wrong?
And to pre-empt your mantra that the final sentence of Article 84 requires amendments: why do you believe that is so, in the face of alternative interpretations provided above?
You may well be right here, but this commenter (and, I'm sure, others) would like to know the reasons why you think your position is right. This is clearly a case where reasonable minds can differ as to the correct interpretation of the law, but to explore that further we need to understand the reasons on both sides. The proponents of the T 1989/18 approach have set out their reasoning clearly - now let us hear yours, please.
Dear Mr Thomas, I apologise for my previous informality. I did not realise that this might offend you.
DeleteOn the subject of courtesies, I would be grateful if you could provide a substantive response to my arguments that explain precisely why the EPO's current description adaptation practice represents unjustifiable overreach. For the reasons outlined below, your comments have so far failed to provide any such substantive response.
As I have previously explained, the EPO's description adaptation practice could fetter the ability of the national courts to conduct a free evaluation of the evidence regarding interpretation of the claims. Indeed, this seems to be the intended effect, as the EPO's practice appears to be designed to ensure that national courts never "misinterpret" the claims (ie arrive at a different interpretation to the EPO).
The role of the EPO is to grant patents. It therefore has no authority to effectively tell national courts how they should interpret the claims of a granted patent, by making itself the sole arbiter of which disclosures of the original description fall within the scope of the claims. Indeed, the EPO seems poorly equipped for such a role, as it never conducts a thorough interpretation of the claims (ie considering both expert evidence and equivalents) … and so cannot possibly be certain whether its interpretation of the claims is correct.
Unless you wish to dispute the above points, it is simply no answer to the allegation of EPO overreach to assert that "All applicants have to be treated the same irrespective of the DoE applied by any national jurisdiction". This is because there is nothing in the EPC that obliges the EPO to take any steps to ensure that all national courts reach a common understanding regarding the meaning of the wording of the claims of a granted patent.
To put it plainly, inventing a purported "equal treatment" principle regarding the interpretation of the claims by national courts does not in any way justify the EPO acting beyond the bounds of its remit.
It is also no answer to refer to the second sentence of Article 84 EPC. This is because that provision merely states that the claims shall be supported by the description. The plain meaning of this is that the claimed invention must be described. There is simply nothing in this plain meaning which suggests that only the claimed invention must be described.
DeleteThe EPO's practice therefore does not rely upon the plain meaning of Article 84 EPC. Instead, to quote the GL, the EPO currently interprets Article 84 EPC to mean that "there must not be inconsistency between the claims and the description". This interpretation effectively turns the plain meaning of Article 84 EPC on its head, by requiring that any described invention must be claimed. Whether or not this is the correct interpretation of Article 84 EPC is a matter upon which reasonable minds might differ. However, because it does not reflect the plain meaning of the wording of Article 84 EPC, that interpretation can only be upheld if it is justified by sound, legal reasoning.
What is therefore missing from your arguments is any hint of why a logical and methodical approach to interpretation of Article 84 EPC would arrive at the interpretation upon which the EPO's practice currently relies. The case law that you cite also comes up short in that regard.
Given the gracious reply, immediately above, from my friend DXThomas, and the challenge thrown out today, in the present thread, from Pudding, I should add another comment.
ReplyDeleteIt has been pointed out to me that the courts in Germany have been known to deny protection under a DoE to embodiments disclosed in the description but not claimed. Does not US patent case law contain something analogous? Is this then not a strong practical reason to "clean up" the description to conform with the allowed claims, if the representative's objective in retaining disclosure of embodiments outside the literal wording of the claims is to maximise scope of protection under the Art 69 EPC DoE? I wonder: what will the client say, if the infringement action fails, because the description was NOT brought into strict conformity with the allowed claims? Might not the consequence of such disconformity be a non-zero prospect of a negligence suit initiated by the disappointed and angry client?
This is nothing: what if a patent is revoked because of (national equivalents of) Art. 83, 123(2) or 123(3) EPC objections caused by deletion of unclaimed subject-matter from the description?
DeleteI think the crux of the issue is not that the description has to be amended per se. But rather, the nature and extent that the Guidelines dictate - and that very very specifically so. The Guidelines for example claim that "disclosure" were to be seen as equivalent as "invention". Nowhere is an explanation given, let alone a legal basis. Why and how would "the disclosure provides embodiment X" be seen as being in conflict with the claims, when Y is claimed? This does not concern only equivalence. It is this practice, i.e., framing disclosure expressly as such, as disclosure, instead of under the heading of "invention", that the current GL version "outlaws". What is the reasoning for this, both legally, but also logically? It simply cannot be understood, and can also not be justified by any EPC provision. It is the, frankly speaking, completely inappropriate rewriting of the GLs that brought all these issues to light, not the practice of amendments per se. DXT, do you care to comment on the specific issue of the CURRENT strange GL requirements that is, not on the question of description requirements as such being required.
ReplyDeleteWhile preparing a presentation on Art 84, I came across T 1480/12.
ReplyDeleteIt is interesting to note what does the catchword says:
Claim according to auxiliary request [3] only recited in statement setting out the grounds of appeal. In order to be considered, new requests should be provided with amended application documents in accordance with Rule 50 EPC (cf Reasons, point 5).
To be complete I have to add that the applicant, duly summoned, did not attend the OP.
AR3 was not admitted under R 137(3).
Was this decision incorrect?
@ Anonymous of 2022.06.01-1943 GMT+1
ReplyDeleteThe rewriting of the GL seems to have been provoked, inter alia, by the different ways first instance divisions handle the matter. Some divisions are very painful and require extensive amendments, some are rather slapdash. This different ways of treatment might have been spotted at the occasion of post-grant audits by the DQA.
This is the only contribution I can make on the topic as I do not actually know the reasons for the amendment of the GL.
I remain convinced that with a reasonable application of the criterion of support by the description when adapting the description to the claims, the whole matter should have taken the extent we have all witnessed.
I am still of the view that both T 1989/18 and T 1444/20 are going against a long lasting line of case law and I doubt very much that they will ever find their way in the GL. Any T decision quoted in the GL is binding for first instance divisions. If this is the hope, it will not be fulfilled.
Daniel, you write: "I am still of the view that both T 1989/18 and T 1444/20 are going against a long lasting line of case law"
DeleteI am sorry to insist (again) that the last version (2019) of the Case Law book explains the support requirement as follows:
"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."
The paragraph "5.3. Bringing the description into line with amended claims" cites only three decisions, two of which being not relevant, so it focuses only on T 1808/06, which is just a copy/paste of the GL and is thus superseeded by T 1989/18.
Therefore, I ask you again: if there is such a "long lasting line of case law", why does the Case Law book ignore it and give instead a completely different interpretation of the support requirement?
Dear Proof of the pudding (2.06.2022-09:26 GMT+1)
ReplyDeleteI have nothing to admit whatsoever and certainly not that I have a conspirational mindset.
I simply note that some representatives are absolutely adamant not to change a single iota to the description as filed in spite, for example, of optional features having been incorporated in an independent claim. That such a statement should not be kept in the description does not have to be explained: it clearly induces a possible misinterpretation of the claims.
The same goes for claim like clauses. They are not claims, but should look a bit like claims. This is also not correct and it appears legitimate to suspect some hidden agenda behind such a way of doing. This has nothing to do with conspirational theories, but common sense leads to query such a behaviour.
What you, for whatever reason, consider an overreach is a perfectly normal requirement of a first instance division. All applicants have to be treated the same irrespective of the DoE applied by any national jurisdiction. Is this so complicated to understand?
You, and all those in favour of T 1989/18 or T 1444/20 are holding on those two decisions like on straws and simply want to disregard the long lasting line of case law which requires the description to be adapted to the claims. Why do you think that the vast majority of the boards remit for the adaptation of the description. Are they all stupid?
I am personally in favour of setting out the reasons for allowance. I never understood the logic behind the difference of treatment. Why are the grounds for refusal of an application public, but not the grounds for grant.
No less than a chairman of epi has explained to me that he, and most of his colleagues, are absolutely against the publication of the "votum" as it could be disadvantageous for the proprietor in later litigation or during prosecution in some countries.
Dear Patent robot, Monday, 6 June 2022 at 09:35:00 GMT+1
ReplyDeleteSome comments:
1) The case law book (white book) might stem at a glance from the boards, but it is not a publication of the boards, but from a separate department within the boards. It quotes decisions, but also gives an interpretation of decisions. The boards are as little bound by the white book as by the Guidelines.
Any reference to the white book is thus irrelevant.
When I lecture on case law, or when members of the audience refer to the white book, I always make clear that if an interesting decision is found in the white book, it is better to look at the decision itself and quote excerpts of the decision than merely to refer to the white book.
You should also know that the boards are only bound by decisions of the EBA and not by decisions of other boards, not even by decisions of the same board, be it in the same composition or not.
2) I would rather say that the GL are a copy/paste of T 1808/06 and not the contrary.
3) You claim that T 1806/18 has been superseded by T 1989/18 (or T 1444/20). As much as I respect your opinion, I certainly do not share it. And the content of the GL is not determined by the representatives but by the EPO. This is reality.
4) It is bordering on bad faith when you claim that the case law of the BA is not requesting amendments to the description.
I invite you also to look at some, event recent, decisions.
In T 2766/17 maintenance could only be decided after the proprietor had amended the description.
In T 1370/18 after setting aside the refusal, the board remitted as “the description and the other claims may need to be adapted to the independent claims 1 and 7”.
In T 3109/19 the file was remitted for the patent to be maintained on the basis of claims deemed allowable by the board and “a description to be adapted”.
The same applies to T 985/11, T 1695/07
I can even quote a very old decision: T 546/98 in which maintenance was accepted on the basis of an amended description.
I would also like to draw your attention to the following:
If an applicant/proprietor submits new claims and does not appear or fails to connect, he should not only file new sets of claims, but also submit a description adapted to the respective sets of claims.
In the absence of a complete set of documents, either
- the application is rejected T 893/01, T 109/02
- the patent is revoked T 725/00, T 986/00, T1024/18
The white book is thus not a reference, whatever you might hold of it.
Adaptation of the description has never been the topic of discussions before T 1989/18 or T 1444/20 have been issued. There was thus no reason to dwell on the topic before those latest decisions.
Even if T 1989/18 and T 1444/20 would find their way in the white book, they would not be binding for the boards. As long as those decisions are not quoted in the GL, they are also not binding for first instance divisions.
I doubt they will ever find their way in the GL.
Addendum to the reply to Patent Robot 06.06.2022 at 09:35:00 GMT+1
ReplyDeleteI would like to draw your attention to T 1516/20
The decision is of 15.05.2022 and has been published on page “Recent decisions” on 09.06.2022.
The proprietor appealed the decision of maintenance according to AR3a.
The board considered that the patent could be maintained on the basis of AR6.
The proprietor argued that according to T 1989/18 the description did not have to be amended.
The board disagreed with T 1989/18 and followed T 1024/18.
The board held that, should the claims have been amended over those as granted, the description must be consistent with them in the sense that the reader does not receive information that contradicts the wording of the claims.
The proprietor filed an amended description during OP and the patent could be maintained with the claims of AR6 and the adapted description.
What else do you and all the supporters of T 1989/18 (and T 1444/20) need?
https://www.epo.org/law-practice/case-law-appeals/recent/t201516du1.html
T 1516/20 follows the same dogma as all previous decisions. Nobody disputes that the boards have developed a somewhat consistent (even if logically incoherent) approach to amending the description. However, none of the decisions are well-reasoned and all of the decisions that you have referred to suffer from the same flaws. Following the cited decisions in T 1516/20 all the way back, we end up at T 977/94, where we find this reasoning: "When the patent holder has amended his claims, it is essential that the description be adapted to the claims because of the fundamental character of the description. Indeed, the invention can only be claimed insofar as it is based on the description (Article 84, second sentence) and the claims are interpreted in the light of the description (Article 69)". So apparently the description can make the claims unclear due to Article 69, which can give an objection under Article 84 during prosecution. If that is the case, why can the description not be used to resolve an ambiguity in a claim in response to an Article 84 objection? The case law on the role of the description and when it can and cannot affect the claims is fundamentally flawed. The EPO uses its distorted interpretation of Article 84 as a stick to beat applicants with when it suits the EPO but the EPO does not like it when the same logic is used in response to frivolous objections.
DeleteMore generally, it seems that the push for greater “clarity” is intended to help the EPO show that it is driving up "quality" and to prevent decisions that the EPO perceives to be “wrong”, such as the Actavis decision. Why does anyone at the EPO think they can tell the UK courts that they have interpreted a UK patent incorrectly? Frankly, the EPO should stick to granting patents using a sensible interpretation of the “support” requirement and should forget about infringement altogether.
To Anon of 13 June 12:31:00: it is interesting that T 977/94 explicitly invokes Article 69 EPC. Article 69, of course, relates to the extent of protection, and not (or at least not explicitly) to clarity or to "support" in the sense of Article 84 EPC. At least as far as concerns the clarity of the claims, and the extent of protection thereunder, the EPO would generally seem to have us believe that these are entirely separate issues.
DeleteFurther, if one looks into the case law of the Boards on whether - and to what extent - Article 69 is applicable in proceedings before the EPO, there is a complete lack of consistency. Some Boards have taken a clear stance in favour of applying Article 69 during EPO proceedings (e.g. T 488/97, T 16/87, T 476/89, T 603/08 to name but a few); others have taken a very clear stance that Article 69 EPC is of no relevance whatsoever to EPO proceedings (e.g. T 175/84, T 50/03, T 2589/11, T 1047/11, T 1593/09, T 145/14...) or is of relevance only in the very limited context of assessing compliance with Article 123(3) EPC in opposition proceedings (T 223/05).
To the extent that any consensus can be found here it seems that the more recent decisions of the Boards maybe tend to cluster around the idea that Art. 69 is of no relevance to proceedings before the EPO. For me, this approach is hard to reconcile logically with the insistence on amending the description.
Logically, either Article 69 is relevant in EPO proceedings, and therefore the description can impact upon the interpretation of the claims before the EPO, or Article 69 is not relevant and therefore cannot impact upon the interpretation of the claims before the EPO. In the former case, amendments to the description on grounds of clarity might arguably be justified, but not in the latter case.
Anyhow, clarity and support are (supposedly) different requirements, and we hear repeatedly from the EPO that for the purposes of clarity during examination and opposition one cannot rely on the description to clarify an apparently unclear claim, instead the claim must be amended - so from that point of view the EPO seems to be of the view that Article 69 is irrelevant for the clarity requirement of Article 84. But at the same time, Mr Thomas tells us repeatedly that it is the support requirement of Article 84 which justifies description amendments. How can that be, if Article 69 is irrelevant? Or is it that Article 69 applies only selectively to Article 84, applying to the support requirement but not to the clarity requirement? If so, where is the reasoning in support of such an odd interpretation of the EPC?
In sum, instead of a clear, logical, and well-reasoned set of consistent requirements, we seem to be in a world of weird quantum superpositions where the applicability of Article 69 EPC, its relationship to Article 84 EPC, and the distinction between clarity and support within the meaning of Article 84 EPC, is variable depending on the whim of any individual Board in any particular case. This cannot be right.
That same logic can be levelled against any legal provision. 123 says nothing about gold standard and rights of third parties. 83 days nothing about undue burden. Are the EPO wrong here also?
ReplyDeleteThe Boards and EB have the power to decide what the EPC means. That’s not going to change anytime soon. Why does a UK court get tell the EPO how it should or should not interpret the provisions of the EPC. A UK court can easily ignore the EPO’s description amendments should it so choose.
An important point being overlooked is that the EPO decides on validity. A third party has every right to know what is and what is not an inventive implementation of the claimed invention. So this also provides certainty about validity.
Serious question, if the description indicates everything as invention, how are third parties to know where they can safely land? Are proprietors willing to give up all the “inventions” listed in the description? I suspect not which is the real motivation to resisting any amendment to the description, rather that the faux concern of lacking legal basis.
Interpreting legal provisions to devise legal tests often involves looking at the legislator's intent. Nobody can doubt that Article 123 is concerned with protecting third parties. The "undue burden" test barely goes further than restating what Article 83 already says, because Article 83 says "sufficiently clear and complete for it to be carried out" which immediately invites the question of how clear and complete is sufficiently clear and complete. These are not controversial tests because they are workable and clearly reflect the intention behind the relevant statutory provisions. That said, Boards of Appeal do sometimes misinterpret provisions; need I remind you of the "dynamic interpretation" saga? The argument that "the EPO is right because the Board said so and the Board can invent legal tests that do not use the actual wording of the statute" could hardly be less persuasive. If you want to know why the Boards' interpretation of the support requirement in Article 84 is so controversial, look no further than this: https://www.patentlitigation.ch/for-discussion-has-the-requirement-that-claims-be-supported-by-the-description-been-perverted-over-time
DeleteOn your final paragraph, it goes without saying that third parties can find out where they can safely land from the wording of the claims. The extent of the protection conferred by a European patent or a European patent application shall be determined by the claims, and the description and drawings shall be used to interpret the claims. To determine the scope of protection, you look at what the claims say and decide what they mean, considering what the description says when doing so. Part of this process might include deciding that certain parts of the description, which may or may not be described as being an "invention", are outside the scope of the claims. This process is performed without difficulty in numerous other countries. I should point out that the "invention" is not defined in the EPC; the idea that the word has a special meaning related to the scope of the independent claims is a common misconception. If you try to find a definition of the "invention", it quickly becomes clear that the invention is not well-defined.
Anon, I am faintly amused by the fact that you ask "if the description indicates everything as invention, how are third parties to know where they can safely land?". This is because it is trite law that the invention is defined by the claims of a patent. Third parties should therefore look to the wording of the claims (and to Article 69 EPC and its Protocol) in order to determine the extent of protection conferred by those claims.
DeleteWhilst the description may play a role in interpretation of the claims, I have yet to see any evidence that a national court has ever "misinterpreted" a claim based upon an allegedly imperfect adaptation of the description to the allowed claims. Indeed, there has been nothing other than a deafening silence in response to my challenge for the supporters of the EPO's current practice to point to any such court decision.
Regarding your comments on UK courts, I would remind you that no UK court has ever told the EPO how it should interpret the provisions of the EPC. What on earth makes you think that this has happened?
Further, you are flat wrong that a UK court "can easily ignore the EPO’s description amendments should it so choose"
Firstly, the UK's current doctrine of equivalents includes consideration of the following question:
"Would such a reader of the patent have concluded that the patentee nonetheless intended that strict compliance with the literal meaning of the relevant claim(s) of the patent was an essential requirement of the invention?".
It is therefore easy to see how the answer to this question might be changed if a patentee were to have agreed to description amendments that are based upon the assumption that the invention is defined only by the literal meaning of the claims.
Secondly, I very much doubt that the UK courts would have the discretion to interpret the wording of the claims in such a manner as to encompass subject matter of the description that is explicitly labelled as not relating to the claimed invention.
As to your comment regarding retention of "inventions" listed in the description, I have repeatedly explained in this thread why EPO examiners are poorly equipped to determine the extent of protection conferred by the claims. For at least this reason, applicants have every right to resist the EPO practice of labelling certain disclosures as not relating to the claimed invention. There is nothing sinister or underhand about ensuring that the patent does not contain any statements that might contradict the scope of protection determined (by national courts) pursuant to a free evaluation of the evidence regarding the true meaning of the wording of the claims.
As to your comment regarding retention of "inventions" listed in the description, I have repeatedly explained in this thread why EPO examiners are poorly equipped to determine the extent of protection conferred by the claims. For at least this reason, applicants have every right to resist the EPO practice of labelling certain disclosures as not relating to the claimed invention. There is nothing sinister or underhand about ensuring that the patent does not contain any statements that might contradict the scope of protection determined (by national courts) pursuant to a free evaluation of the evidence regarding the true meaning of the wording of the claims.