Earlier this year, IPKat reported on the EPO's advertised workshop on description amendments (IPKat). The stated aim of the workshop, which took place at the end of June, was to provide users with "clarity" on description amendments in view of some recent conflicting decisions on the topic from the Boards of Appeal. The EPO has now reported that the workshop of experts "confirmed" EPO practice on description amendments. No mention is made of any dissenting opinion.
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New approach to
description amendments |
By way of a brief recap, the recent controversy over description amendments began with a significant tightening in the 2021 EPO Guidelines for Examination of the requirement for applicants to amend the description of a patent application in line with the allowed claims (
IPKat). This requirement requires applicants to either delete subject matter not covered by the claims or to explicitly state that such subject matter is not part of the invention.
The EPO is alone among the major patent offices in having such a requirement. Opponents of the EPO's description amendment requirement argue that it lacks legal basis in the EPC and is overly burdensome for applicants. Making substantial amendments to the description during prosecution also runs the risk of affecting the interpretation of the claims by the national courts.
There have been a number of recent Board of Appeal decisions on the legality of the description amendment requirement, as summarised below.
Legal basis for the description amendment requirement:
No legal basis for the description amendment requirement:
From the EPO's point of view, the workshop on description amendments was a roaring success. According to
a recent EPO press release:
"[the workshop] confirmed the EPO practice whereby the description in a patent application must be made consistent with its amended claims (in accordance with Article 84 EPC) to ensure legal certainty and avoid the public being presented with information that conflicts with the wording of the claims...the findings from this workshop will be used to revise the relevant sections of the Guidelines, for example, to provide a better definition of what should be considered inconsistent, conflicting or contradictory or to insert illustrative examples" (emphasis added)
Rather surprisingly given the current controversy, there is no mention from the EPO of any contrary opinion. Was the workshop's decision unanimous? Were dissenting voices invited to speak? There are no details of who the experts were other than that they were a collection of "user representatives, members of the Boards of Appeal and national judges as well as experienced EPO examiners and lawyers".
This Kat would be keen to hear from any readers who attended the workshop whether the EPO's summary reflects their own experience. Did the EPO put an overly positive spin on events (
IPKat)? Regardless of how harmonious or not the opinion on description amendments really is, the EPO does not have an intention of ameliorating the requirement in future updates to the Guidelines. Any change will have to come from the Boards of Appeal.
Further reading
Board of Appeal finds no legal basis for the requirement to amend the description in line with the claims (T1989/18) (26 Dec 2021)
Can amending the description to summarize the prior art add matter to the patent application as filed? (T 0471/20) (5 Jan 2022)
Changes in the draft 2022 EPO Guidelines for Examination on description amendments: Substantial changes or window-dressing? (7 Feb 2022)
EPO Board of Appeal toes the party-line on description amendments (T 1024/18) (4 April 2022)
EPO workshop to provide users with "more certainty" on description amendments (25 May 2022)
Reviewed by Rose Hughes
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Tuesday, July 19, 2022
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I attended the workshop. It was confused and failed to answer attendees questions. They concentrated on the mechanics of how to actually amend the description with bare assertions that this was necessary. There was a marked contract between the workshop hosts and separate sessions with the examiners. The hosts were dogmatic and emphatic that EPO practice had not changed and they had not found any evidence of disharmony in the application of the current guidelines. The examiners in the mechatronics session were much more reasonable and were saying adaptations could be left until late in prosecution and they were open to labeling an embodiment as "per the claimed invention" rather than labeling all the other embodiment as falling outside the scope of invention. The feeling was that practice would vary by Examiner and that representatives should be proactive in discussing problematic cases with Examiners to find a way forward. A light-touch solution may be acceptable to one Examiner, but may be the hill another Examiner wants to die on. Remember though, the EPO found no disharmony in the application of the guidelines! A very frustrating experience and reminds me of the Ostrich song by Flanders and Swann.
ReplyDeleteTo be commended is an EPO resolve to bring more clarity to the issue what, in the context of Art 84 EPC, rises to the level of "inconsistent" or "contradictory". Ironic, or what?
ReplyDeleteThe regular commentator "Attentive Observer" takes the view (if I understand him right) that all would be well with Art 84 if only Examining Divisions were all to take the same intelligent and reasonable line. Some years ago, Paul Cole was able to get injected into the MPEP a slew of Examples, to show readers what satisfies the statutory requirement of patentability and what does not. That experience might have helped to persuade those inside the EPO who edit The Guidelines to do the same, for practice under Art 84.
Meanwhile, it seems to me that there is a gulf of difference between what some over-zealous Examiners consider "inconsistent" and what other more open-minded and pragmatic Examiners think. EPO: this is a Quality issue. No consistency = no quality. You always banging on about Quality. Here is a chance to show that you mean it.
EPO’s communiqué is rather classical and bears no surprise.
ReplyDeleteRemember the communiqué about the e-EQE 2021, a little problem with D1, but overall wonderful. Looking at the numerous decisions of the Disciplinary Board in favour of EQE candidates, the situation was not wonderful at all.
OP by ViCo are a great success and parties are very keen on them. I have read dissenting opinions, even if CIPA is full in favour of them, but epi is not.
Even if problems were raised and dissenting opinions voiced, they are, as usual, minimised or better ignored.
I would thus not take EPO’s communiqué with a pinch of salt, but with a barge full of it.
On the substance of the discussion, there is no change in EPO’s attitude to be expected.
I fear that T 1989/18 and T 1444/20 will remain two isolated exceptions. There have been plenty of decisions of other boards making clear that they do not agree with those two.
Even with some understanding for the position expressed by Rose and those in favour of scraping the requirement to adapt the description, I am inclined to consider that the upheaval on this topic ended in no more than a storm in a cup of tea.
The workshops were not for free and participants had to pay a fee, not extortionate, in order to participate in the discussions. If lots of people participating were in favour of scraping the adaptation of the description, they must be disappointed when reading the communiqué.
I am prepared to be crucified for my opinion, but it has been my point of view all along, that with the present wording of Art 84 and the corresponding long lasting line of case law the description has to be adapted to the claims. This is reality.
The ED/OD will be invited to be less pedantic, but the Guidelines will not be substantially amended.
With the new/future chair of the Legal BA, I doubt that actually a dissenting opinion like that expressed in T 1989/18 and T 1444/20 will have a chance to emerge again.
I would rather concentrate energy on discussing the quality of the patents granted by the EPO. When looking at the survival rate after opposition or nullity, this seems more of a problem than just adapting the description.
Even taking into account that only 5% of the patents are opposed and taking into consideration that an opponent in general wants to get read of a patent, the situation is alarming. Only in few cases, the grounds for limitation or revocation are based on prior art not available in EPO's search files. How an overall figure of search compliance of 97,6% can be achieved remains a mystery. See Figure 24 – Search audit compliance, page 33 of the last published quality report.
In the past, the result of an opposition was around 1/3 oppositions rejected, 1/3 of patents revoked and 1/3 of patents maintained in amended form. Presently the number of oppositions rejected is much lower. Just browse through published decisions to make your opinion. The result of the opposition along the three possible outcomes is not any longer published.
Even the EPO's own document on DQA audited compliant files in grant shows no real improvement for the last years. See Figure 25, page 34 of the last published quality report.
The link to the last published quality report:
https://documents.epo.org/projects/babylon/eponet.nsf/0/BBA26B12012E8BB3C12588550049A1BD/$FILE/quality_report_2021_en.pdf
(Sorry, I posted this to the wrong thread earlier): I really don't know what all the fuss is about description amendments at the EPO. You amend the claims, and then you amend the description in the same way. We've been doing this for decades and it's never been a problem - the recent changes to the Guidelines just confirm this well-established practice because people had started to get lazy in the last 10 years or so, just adding the word "disclosure" all over the place, like it had some established meaning at the EPO and national courts (when it doesn't). If you are worried about losing valuable scope when you amend the description, then you shouldn't amend the claims in the first place. I know people like to bash the EPO on this issue, but they are right on this. All these hypothetical worries about description amendments making it harder for parties to rely on the doctrine of equivalents (or whatever the concern is meant to be) is something for the national courts to worry about, not the EPO, especially when national practice on claim interpretation and non-literal infringement is so poorly harmonised.
ReplyDeleteIn T 1579/17 of 13.05.22 published on 13.07.22 AR 7 and 8 did not comprise an adapted description.
ReplyDeleteDue to contradictions between the claims and the description, the claims of AR 7 and 8 are not supported by the description as required by Art 84.
https://www.epo.org/law-practice/case-law-appeals/recent/t171579eu1.html
What else is there to be said?
Only that - in common with seemingly all of the other decisions in the "long line of case law" that you like to cite - there is once again no legal reasoning whatsoever provided to support the Board's conclusion in this decision.
DeleteThis issue has been debated with you ad nauseam on other posts on this topic but it remains a simple fact that there is still no convincing legal support for the EPO's preferred approach.
Given that this thread is supposed to be about the EPO's skewed reporting of the workshop, and not about the EPO's practice itself, let's not derail the discussion with this issue again. It's easy enough to find lengthy discussions on other IPKat posts and I doubt that we are suddenly going to reach a resolution here.
An interesting (and well researched) take can be found in the epi Information journal, Issue 2|22, pgs. 13-18 (https://information.patentepi.org/uploads/pdf/epi-Information-02-2022.pdf). The closing comment... "It is proposed that GL F-IV 4.3 is revised once more".
ReplyDeleteIt's a bit difficult to find in this subject anything to laugh about but about 20 years ago Robin Jacob raised a chuckle by beginning a speech to patent attorneys in Germany with the advice that "We can learn much from the Americans. Watch what they do and then make sure not to make the same mistake". In the relationship between Patent Office and the patents courts, on the issue of "clarity", here is a Link to another blog item of today, which shows how no amount of "consistency" between description and claims can compensate for the issue by the PTO of an unclear claim.
ReplyDeleteThe corollary is interesting: if the claim is clear enough, how much does it really matter if the specification still contains sentences that a clever lawyer can represent as "inconsistent" with the claim. This is why those who wrote the EPC chose to exclude Art 84 from the list of post-issue attacks on validity. I think we should leave to the court how to "do" claim construction, lexicography, disavowal, file wrapper estoppal,usw. I think it presumptious of the EPO to suppose that it knows better than the courts how to adjudicate infringement cases. The EPO should confine itself to the issues whether the claim is clear and whether it enjoys sufficient support from the description. But let's be optimistic. Perhaps the recent bruhaha will prompt a more thoughtful editing of The Guidelines, this time around.
Click on the Link below and ponder how the Ford case at the CAFC would have played out, in oposition, at the EPO.
https://www.ipwatchdog.com/2022/07/18/newman-says-cafc-majority-departed-claim-construction-law-blow-ford-fuel-system-patents/id=150259/
The “expert workshop” was in fact an online training event organised by the EPO:
ReplyDeletehttps://www.epo.org/learning/training/details.html?eventid=14101
It is interesting to compare and contrast the description of the online training event to what is stated or implied in the EPO’s press release (https://www.epo.org/news-events/news/2022/20220707.html). That is, the press release is (deliberately?) misleading with regard to:
- the nature of the event (seminar vs. “expert workshop”);
- the nature of the attendees (individuals signing up to online training provided by the EPO vs. “user representatives”); and
- the “outcome” of the event (with more than one attendee reporting that they very much did not agree with the views expressed by those representing the EPO).
The fact that the press release includes a link to the SACEPO also seems misleading – as it is appears that the event was nothing whatsoever to do with SACEPO.
If would not be surprised if the main purpose of the press release is to provide an excuse for the President to not initiate a referral to the EBA despite the clearly conflicting lines of case law (“The EPO will continue to monitor developments in the case law on adaptation of the description as well as on the sub-topic of claim-like clauses”).
Regardless, it seems that the EPO has no intention whatsoever of changing its practice. For example, despite reports of dissenting views expressed by attendees during the online seminar, the EPO’s press release:
- pretends that the event confirmed current practice; and
- indicates that “The findings from this workshop will be used to revise the relevant sections of the Guidelines”.
In other words, the EPO has:
- arranged an event at which speakers from the EPO explained current practice;
- only reported the views expressed by its own speakers;
- pretended that this represents confirmation (by an “expert workshop”) of those views; and
- signalled an intention to base its future practice based upon the “findings” from that event.
On the issue of adaptation of the description, it therefore seems that the EPO would much rather talk to itself than listen to, and take seriously, any different views - no matter how well reasoned.
I was interested to read that a workshop of experts (or anyone really) can confirmed EPO practice in any regard. Is that not up to the BoA?
ReplyDeleteThe well-stablished line of case law says it all: the description has to be adapted to the claims.
DeleteTwo isolated decisions will not alter this fact, even if they are to the liking of the representatives.
even sounds ironically, a compromise approach would probably NOT to bring up this issue loudly. As we all know that not all the examiners in EPO follow this standard until now. More exposure, more stricter...
ReplyDeleteMaybe the EPO might consider taking the views of its customers into account if an avalanche of appeals hit the statistics.
ReplyDeleteIt seems to me that this is par for the course for the EPO. Get a bunch of people in to allegedly take views from the public/user base, push its own position mercilessly as the "One True Way", and ignore any dissenting opinions to report the event as an "overwhelming success".
ReplyDeleteLet us not forget that the EPO really only listens even to large (in terms of filings) applicants which use the system when they threaten to reduce/stop filing at the EPO and seek individual national protection instead. The EPO isn't going to listen to smaller business interests and the thousands of attorneys that represent them, no matter what it says publicly. Fees are the life blood of the EPO. Without fees, the EPO's financial situation would become pretty dire. If you have clients that are disgruntled with the EPO approach, go vote with your feet and file national applications.
@ Anonymous of Tuesday, 19 July 2022 at 14:04:00 GMT+1
ReplyDeletePart 1
I read with great attention the article in epi-information about adapting the description to the claims. It will not come as a surprise that I do not agree with the statements found in this article.
Like in T 1989/18 and T 1444/20 there seems to be a confusion between the second and the last part of Art 84.
If a feature Ax in a claim is clear from the wording of the claim alone, then it does not seem immediately apparent to doubt that this claim-feature becomes unclear simply because Ax is described in the description using words like “preferably”, “may” or “optionally”.
Ax does not become unclear as such, but the interpretation which can be given to the claim is not coherent and in accordance with the description. If Ax is a feature in the independent claim, then there is a clear inconsistency between the claim and what the description is saying. What is contained in an independent claim is essential and cannot be deemed optional in the description.
According to T 2251/17, Point 3.2 of the reasons, it is established case law that a claim which does not contain a feature described in the application (on a correct interpretation of the description) as essential to the invention is not supported by the description within the meaning of Art 84, see Case Law of the Boards of Appeal, 9th edition, 2019, II.A.5.1). Similar considerations in T 1657/17, Points 1.2 of the reasons.
A similar situation occurs when the subject-matter of a dependent claim is added in the independent claim in order to overcome a patentability objection. See Point 5, second § of the reasons in T 2196/11: “The description in the patent, paragraph 0006, however states which features are provided according to the invention, whereas paragraph 0011 states that the feature which has been introduced from granted claim 6 is merely a feature "according to an additional embodiment" of the invention. Moreover, this feature is in contradiction with the feature referred to in another additional embodiment”.
For the BA it “is thus evident that even if it were assumed that the claims of the requests 7 or 8 were allowable, the lack of amended description pages which were consistent with the amended independent claim of either request contravenes at least Article 84 EPC according to which the claims should be supported by the description”.
@ Anonymous of Tuesday, 19 July 2022 at 14:04:00 GMT+1
ReplyDeletePart 2
I still refer to the publication in epi Information journal, Issue 2|22, pgs. 13-18.
If an embodiment A is defined by a claim that is fully clear to a person skilled in the art from the wording of the claim alone, should the description discloses an additional embodiment B that is not covered by the claim, then there is a clear inconsistency between what is claimed and what is disclosed.
It might appear acceptable that a “mere inconsistency between a claim and the description …. should not be enough in itself to affect the clarity as such of the claim”, but it is not correct to assert then that that the claim is at the same time supported by the description. The last sentence of Art 84 requires a one-to-one relationship between claims and description. No more, but no less.
By refusing the adaptation of the description so that the claims are clearly supported by the description, patentees try to get an undue advantage should it later come to litigation. The same applies to maintaining clause like statements in the description.
It can be assumed that an embodiment with an electrical motor defined by a clear claim is at the same time supported by the description, as the description fully discloses the embodiment with an electrical motor.
However, should the description still contain an additional embodiment with a combustion engine, then the claim which relates to an electric motor is not supported by the description, as the description would imply that the electric motor could be replaced by a combustion engine. This is exactly what is to be avoided according to the last sentence of Art 84.
If the applicant wants to obtain protection for the embodiment with a combustion engine, he has to file a claim relating to the combustion engine, but he cannot be allowed to leave doubts as how to interpret the claims. In the claim it is clearly an electric motor but in the description it could as well be a combustion engine.
Nothing withholds a patentee to give a national judge a copy of the application as filed if he considers that his invention, clearly defined by the claims in the granted patent, deserves a broader interpretation. However, in a granted patent there needs to be a one-to-one relationship between the description and the claims. This is the purpose of the last sentence in Art 84. No more but no less.
This is nothing new under the sun, see Point 5 of the reasons in T 814/05: “The board is of the opinion that the description still needs to be adapted to the amended claims. In particular, it is considered confusing to maintain references to embodiments for which the figures have been deleted and which have nothing to do with the invention as now claimed.”
How can a FTO assessment be reasonably drafted if on the one side the claims are clear as such, but the description allows various interpretations which can even be in contradiction (e.g. optional) with the wording of the independent claim or even attempts to cover something fundamentally different (electric motor vs. combustion engine)?
Let's keep this simple:
DeleteWhere in the case law does the requirement for a "one-to-one" relationship come from?
If I claim "A" and describe "A or B", how does the mere presence of B in the description render the (claimed) embodiment A unsupported?
@ Anonymous of Wednesday, 20 July 2022 at 13:29:00 GMT+1
DeleteIf you do not understand or do not want to understand, than you cannot be helped.
It reminds me of an old French say: there is none so deaf as he who will not hear.
Just open your eyes and look at the well-established case law and do not cling to two isolated decisions as if they were a lifeline.
It has repeatedly been pointed out by numerous commenters on this forum that - "two isolated decisions" or not - the legal basis for description amendments is far from clear. The fact of the "well-established case law" does not change that, because the well-established case law does not explain the actual legal basis for the well-established approach. The fact that the Boards have merely repeated it frequently is no substitute for a proper legal analysis. Law is not (or at least, should not be) law merely because someone says loudly and repeatedly that their opinion is the correct one, if they cannot explain why that opinion is correct.
DeleteThe Board behind the two isolated decisions you refer to has done us the courtesy of explaining its legal position, not just asserting it. If you believe so strongly that their interpretation is incorrect, and that your interpretation is the correct one, why not explain your position instead of resorting straight away to insults?
If and when this issue finally comes before the Enlarged Board, do advocates of the EPO's current approach intend simply to rely on ad hominem attacks to make their case?
As it happens, I have an open mind regarding whether or not the EPO's approach is correct (regardless of whether or not it is being applied consistently or reasonably at present). All I ask for is a properly-reasoned legal basis that does more than simply pointing to Article 84 EPC. It is far from clear that the interpretation of Article 84 which you advocate so strongly is the correct one; all I (and others) ask is that somebody explain why that is the correct interpretation. We can then compare the merits of the arguments on either side. If the only argument that you have is insult, then that suggests that there is no real legal support for your position.
@ Mike Snodin
ReplyDeleteI can agree with you that the “expert workshop” was in fact an online training event organised by the EPO.
I can also agree that the communiqué of the EPO is, let’s say, somehow biased without going more into detail.
I however doubt that “the main purpose of the press release is to provide an excuse for the President to not initiate a referral to the EBA despite the clearly conflicting lines of case law”.
We are in presence of two isolated decisions which manifestly go against well- established case law which has required now for many years that the description has to be adapted to the claims. Just look at the decisions clearly disagreeing directly or indirectly with the point of view expressed in T 1989/18 and T 1444/20.
If you are hoping for a referral, your hope might never realise. At least you might have to wait for quite a while.
Just look how long it has taken for the Guidelines to be amended in order to delete the purposive selection criteria in selections from a broader range, cf. G-VI, 8.8 (ii).
The essentiality test has been heavily criticised in many decisions of the BA, but the test is still in the Guidelines, albeit under a different heading cf. H-V, 3.1.
I can agree with you that it seems that the EPO has no intention whatsoever of changing its practice. This is reality and the sooner representatives accept this reality, which is actually nothing new under the sun, the better it will be for them.
I have some understanding that not adapting the description would simplify the life of representatives, but with Art 84 as it stands this is not in. I might just add that Don Quichote is not necessarily an example to follow.
Daniel, so for what reason do you believe the EPO issued such a misleading press release?
DeleteIn my view, the mere completion of an online training event is not particularly newsworthy. So why would the EPO choose to try and make something of it? More importantly, why would the EPO also choose to completely misrepresent the nature and "outcome" of the event as well as the capacity in which the attendees participated? Even the possibility that the press officers were facing a "slow news day" cannot explain this aspect of the press release.
Dear Mike,
DeleteI am not sitting on the 10th floor in the Isar Building so that as a matter of principle I do not have a clue why such a press release has been published on the Internet.
A simple comment: there is a PR department in charge of issuing press releases.
Like any PR department its aim is to present the company/organisation and events in way favourable to the organisation. it is left to each reader to decide whether he looks at the release with a pinch of salt or not.
I certainly have some ideas about the reasons for the press release, but they will remain private. As a former member of staff I still feel a given loyalty to the organisation as such.
I can defend the position taken by the EPO as an organisation, not because it comes from one or the other specific department of the EPO, but because it corresponds to a long lasting line of case law which is amply demonstrated by lots of decisions issued by the vast majority of the boards.
Let me just say that your anger about the press release, and that of other people, especially those having participated at a cost to the training event, is fully understandable. I will leave it at this.
On the other hand, I still fail to understand the upheaval created by the issuance of two isolated decisions which are clearly at odds with a long lasting line of case law.
Daniel, the press release did not make me angry, I just found it frustrating. This is because it appears to provide further confirmation that, on certain topics (including adaptation of the description), the EPO simply does not listen to even the most well-reasoned of submissions from the profession. Another example would be the implementation of ST.26 for divisionals of pre-"big bang" applications. In that case, epi had to resort to the (unprecedented?) step of publishing an open letter outlining their concerns regarding the completely unnecessary legal risks (and costs) that the EPO's practice will generate for applicants.
DeleteOn the other hand, if I had been one of those who paid to attend the online training event, I would certainly have found the content of the press release to be pretty disrespectful, bordering on insulting.
Dear Mike,
DeleteI cannot say much more than I have said up to now.
Whether we like it or not the EPO sometimes takes decisions which do not seem to correspond to the wishes of the users.
The implementation of ST 26 for divisional is a further example to be added on the existing list.
Some decisions are even lacking coherence. During OP by ViCo authorizations may be filed by e-mail that is in pdf. A decision of the president of 2019 which has not been rescinded, excludes filing authorisations by fax which is also a form of pdf.
According to R 7/09, Point 5 of the reasons, the parties and their representatives have no duty to monitor the proceedings themselves by regularly inspecting the electronic file.
And yet all documents beside the statement of grounds of opposition and the reply thereto as well as the statement of grounds of appeal and the reply thereto will not be communicated automatically to the parties. The same is to be found in Point 4 of the reasons in R 4/17. The legal basis for not transmitting the other documents is rather inexistent when looking at the corresponding decisions of the EBA.
Outside the pandemic why is it not possible to leave the form of OP to be decided by the parties? If both parties agree on in-person OP, there is no reason to force them to OP by ViCo. If they cannot agree, then a mixed-mode OP should be granted. If both agree on OP by ViCo everybody should be happy. But why the EPO has to decide what is good for the parties?
I am sure that the list could be continued, but the examples given speak for themselves.
What a coincidence! On the Kluwer blog today is the story of a case in Spain, about the way the court construed the claim, relative to the description, in EP-B-2193731 food container. To the man with a hammer, everything looks like a nail. If the man with the hammer is writing the EPO Guidelines, woe betide everybody else.
ReplyDeleteDuring prosecution at the EPO, the description was amended to state that the channel-shaped bottom wall of the container is one that is "curved". The accused infringer's defence was that i) the claim had to be read as if it too included the word "curved" and when that is done ii) the claim, so construed does not cover the accused embodiment. Below is a Link to the other blog item. Just a glance at its title gives you an indication of the depths of difficulty this inconsistency between desciption and claim plunged the worthy judges of the courts of an EPC Member State. It will surely egg the EPO on, to stamp ever harder on any inconsistency it can divine.
http://patentblog.kluweriplaw.com/2022/07/20/the-role-of-the-objective-technical-problem-resulting-from-prosecution-in-determining-the-scope-of-protection/
It is difficult to understand the EPO's emphasis on this issue.
ReplyDeleteFirst, there is no explicit requirement in Art 84 for an adaptation of the description to the claims, the requirement is that the claims have support in the description. The adaptation requirement departs from the EPC by involving the addition of a condition to Art 84.
Second, this is a lose-lose situation : additional work and delays for the EPO and for applicants, no visible benefit, need for third parties to compare the description of a granted patent with that of the application as filed.
Is this the result of internal wars within the BOAs ?
Are there financial implications related to the sharing of renewal fees between the EPO and the Member States ? The longer it takes for the patent to be granted for whatever reason, the longer the EPO keeps renewal fees.
The issue will be one of the topics of the Stakeholder Quality Assurance Panels (SQAPs) within the SACEPO Working Party on Quality to take place in October and November 2022. The Panels are made up of seasoned professionals who review the files of granted patents in respect of a number of issues, this time the adaptation of the description will be among them, and present their conclusions to EPO people.
I agree that the EPO's interpretation of the second sentence of Article 84 EPC is somewhat surprising. It has the consequence that the EPO can raise an objection to the claims that can only be overcome by removing subject matter from the description.
DeleteThe EPO's practice also mandates the development of a logical and consistent understanding of the kinds of "non-claimed" subject matter can be retained in the description without giving rise to a lack of support objection to the claims. To date, the EPO has shown a surprising lack of interest on this point.
Moreover, the EPO's practice is somewhat confused. The only reference in Article 84 EPC to the description relates to the issue of support. However, examiners often raise objections to certain disclosures of the description on the grounds that they allegedly cast doubt upon the scope of the claims. To me, this conflates the issues of support and clarity. The clarity requirement applies to the claims, not the description. Whilst the description can be used to interpret the claims, the EPO needs to ensure consistency of practice vs. the interpretative principles that it uses to assess novelty and inventive step. To quote the CLBA:
"A discrepancy between the claims and the description is not a valid reason to ignore the clear linguistic structure of a claim and to interpret it differently (T 431/03) or to give a different meaning to a claim feature which in itself imparts a clear credible technical teaching to the skilled reader (T 1018/02, T 1395/07, T 1456/14)".
A perfect illustration of the EPO's confused thinking can be found in their treatment of "claim-like" lists of disclosures. This is because, even if those disclosures only relate to subject matter falling within the scope of the claims, examiners will nevertheless allege that they cast doubt upon the scope of the claims. I have yet to see any explanation of why this could possibly be so.
If the independent claims are clear as such, why do you need “claim-like lists of disclosures”, if it is not to confuse the issue in an attempt to blur the scope of protection?
DeleteIf you would add that the claim-like list of disclosures cannot be used to interpret the scope of protection of the actual claims, they could remain. Without this addendum the purpose of the claim-like clauses is pretty manifest.
In plain English, I call this cheating and it is good for the EPO to query such a behavior.
The same applies if in the description features contained in an independent claim are merely considered optional!
@Anon of 23 July 2022 at 08:34: with your accusations of "cheating", you sound rather like our well-known friend "Attentive Observer" and his alter ego DXThomas.
DeleteAnyway, regarding claim-like clauses, as you must know, these are often inserted into the description when filing a divisional application in order to ensure there can be absolutely no doubt that all of the subject-matter of the parent application is available during examination, e.g. as the basis for amendments. In many cases that list has served its purpose once an agreeable set of claims is reached, and there is no harm in deleting the list prior to grant.
On the other hand, it can happen that (whether in a parent or divisional) a list of numbered clauses is provided to disclose examples that fall within the scope of the claims, but which are nevertheless not explicitly claimed themselves. In that case, where is the harm in leaving such lists in the description if they do indeed fall within the scope of the claims that are accepted for grant? They cannot possibly cast doubt upon the scope of the claims, and can in fact help to clarify what is intended, for instance by giving examples of features falling within the scope of particular terms in the claims. Is that "cheating?" Does this mean in your view that patent applicants should now instead proceed to claim, explicitly, every single conceivable embodiment from the disclosure which falls within the scope of the claims?
@Anon of 23 July 2022 at 08:34: thank you for your contribution. It certainly provides an "interesting" perspective.
DeleteForgive me if I have missed anything, but I could not see in your comment anything that addressed the point I was making. To be absolutely clear, I was questioning why a lack of clarity arises (ie why doubt is cast upon the scope of the claims) merely by the inclusion in the description of a "claim-like" list of disclosures.
Remember that "claim-like" lists of disclosures serve a perfectly legitimate purpose. That is, they are intended to ensure that the application clearly and unambiguously discloses (in a concise manner) various embodiments of the invention. In this respect, "claim-like" lists of disclosures are a response to the EPO's practice under Articles 76(1) and 123(2) EPC.
It is perfectly possible that, during prosecution at the EPO, an amendment to the claims will be based solely upon a disclosure found in a claim-like list. The question then arises as to how the description should be adapted to align with the claims. Should the "claim-like" list of disclosures be deleted, including those providing the sole support for the subject matter of the claims? If so, can we conclude that there is a tension between EPO practice under the 1st and 2nd sentences of Article 84?
More to the point, why should the mere format of a disclosure in the description affect the clarity of the claims? Does the EPO believe that the skilled person would be confused by the inclusion in the patent specification of both a claim set and a "claim-like" list of disclosures? If so, why?
I would have thought that any hypothetical doubts in the mind of the skilled person would be dispelled by checking the headings of the relevant sections. If the relevant section of the granted patent does not say "Claims", then the chances are that what appears is not the claims.
I don't have much to add to the comments above, but it should be noted that, in the Main Session at least, the panellists argued that T1444/20 was, in fact, consistent with the guidelines.
ReplyDeleteT1989/18 was acknowledged as being inconsistent but was described as an "outlying decision". I think they even mentioned the fact it was not as widely distributed as the other decisions as evidence of it being an outlier.
So I'm not optimistic that there will be any change in the EPO position - there was absolutely no indication in the Main Session, though some of the attendees that asked questions in the Q&A part managed to put an alternative point of view forward.
As in T 1444/20 the Guidelines are criticized, I fail to see how this decision can be in conformity with the Guidelines?
DeleteThe PCT/GL/ISPE guidelines, section 5.29 « Inconsistency Between Claims and Description » provide a sensible approach :
Delete« Inconsistencies which do not cause doubt as to the meaning of the claims may be overlooked. »
The clarity requirement of Art 84 relates to the claims. If the words of the claim are clear, there is no need to look at the description (T 1642/17).
It is not a sensible approach to require the adaptation of the description after any amendment of the claims on the sole basis that an inconsistency might cast doubt on the scope of the claims.
Mr Hagel,
DeleteWhat you say is all very nice, but besides the point. If the claim is clear as such without having recourse to the description, why do you then need to keep in the description statements which cast doubt on the scope of the claims? Examples: claim-like disclosures or optional character of features contained in an independent claim, or embodiments which bare no relation with the claimed subject matter.
The reason is pretty manifest and it is a duty of the EPO to act against such attempts of what has to be called cheating! Such a clear claim is by no means supported by the description, cf. Art 84 last sentence!
Reference to the PCT Guidelines is to no avail, as in European procedure, the EPC and the EPO Guidelines are binding, neither the PCT nor its Guidelines!
The PCT allows certain possibilities which are not open in European procedure: e.g. priority problems, only re-establishment in the regional phase before the EPO.
Even if an IPEA (other than the EPO) has not queried amendments during the international phase, those amendments will have to be reviewed when entering the regional phase before the EPO.
@DXThomas (for it is clearly you):
DeleteGiven your insistence on the last sentence of Article 84 EPC, perhaps you could do us the courtesy of finally explaining why, legally, you believe that your interpretation of that sentence is the correct one? Please do not simply point to the "long line of case law" again. That case law likewise simply points to Article 84 but provides no explanation of why "support" should be interpreted as you argue that it should.
Again I ask: what are the arguments justifying that interpretation?
Article 27(1) PCT is surely of relevance to PCT/EP applications.
DeleteWhen mentioning a name courtesy would require not to hide behind anonymity.
DeleteBy the way, you are wrong with your guess!
Art 27(1) PCT might say something, but why is then that the EPO does not admit amendments accepted by an IPEA and checks them especially under Art 123(2), e.g. T 750/03 also quoted in T 106/06.
DeleteDXT/AO/Anon, you can pretend that you aren't posting the same things under different pseudonyms, but your unique writing style and repetitive arguments make it clear that it is you. It is almost like you are trying to pretend that there is a consensus supporting your opinion, somewhat like the EPO's communiqué...
DeleteAs said before courtesy requests not to stay anonymous if you mention names!
DeleteAnd on top of it you are plainly wrong!
I allow myself to draw the attention of the readers on T 2613/84 issued on 24.3.2022 I have commented on my blog::
ReplyDeletehttps://blog.ipappify.de/t-2613-18-art-84-support-by-the-description-should-correspond-to-the-technical-contribution-to-the-art-description-and-claims-cannot-be-at-odds/
This decision makes it clear what is to be understood by support of the claims by the description.
It also quotes two decisions T 133/85 and T 409/91 which are still very actual.
Dear Anonymous
ReplyDeleteYou are absolutely right that the PCT Guidelines are not binding on the EPO, yet they are a valuable source of inspiration which is highly relevant to the issue. The PCT Guidelines make the requirement to adapt the description conditional on a showing by the EPO that inconsistencies between the claims and the description cause doubts as to the meaning of the claims. In other words, the principle in the PCT Guidelines is to place the burden of proof on the EPO. This is a sensible approach : since the adaptation entails additional costs and delays, it makes strong sense to require the adaptation only when the inconsistencies are shown by the EPO to cause doubts as to the meaning of the claims, on the basis of a concrete analysis of the wording of claims.
Absent such showing, there is no basis in the EPC for an across-the-board requirement imposed on the applicant to remove inconsistencies, only justified by the vague hypothetical, supported by no specific evidence, that they might cause doubts s to the meaning of the claims.
Francis, that is exactly the point that I have been trying to make to Anon who thinks that it is "cheating" to retain in the description of a granted patent any "claim-like" lists of disclosures. If they relate solely to subject matter encompassed by the claims, is pure nonsense to suggest that the skilled person would view those disclosures as casting doubt upon the scope of the claims. And yet the EPO would have us delete those lists of disclosures based upon the hypothetical possibility that an unidentified person might, for reasons unspecified, perceive that they render the scope of the claims unclear.
DeleteThe EPO would not raise hypothetical objections under any other EPC Article (such as 54, 56 or 83) and expect applicants to make amendments to overcome them. So why should applicants be forced to amend the description based upon purely hypothetical objections under Article 84 EPC?
When for instance there are claim-like disclosures or optional features left in the description, or here are clear inconsistencies between claims and description and I maintain that by refusing to adapt the description to the claims the only aim is to cheat.
DeleteThe claim might be clear as such, but the description would allow a broader interpretation.
This is cheating whether you like it or not!
Anon, if you maintain that deletion of "claim-like" lists of disclosures is required (even if such disclosures only relate to subject matter falling within the claims), can you please explain why? Repeating your conclusion is not enough here. You need to show your working.
DeleteIf such disclosures "claim-like" lists of disclosures inherently cast doubt upon the scope of the claims, why do examiners only raise objects to them at a late stage of proceedings?
All those holding on the PCT and on the PCT Guidelines forget one important aspect: under the PCT no patents are granted.
ReplyDeletePatents are only granted by national and regional offices.
For example claim-like sentences and optional features in the description easily lead to inconsistencies between the claims and the description and have to be objected to by the EPO.
The PCT Guidelines refer to the PCT procedure and not to the EP procedure.
It might be a bother for representatives to have to tidy the description once the subject-matter of the claims has been decided.
However, lack of adaptation of the description to the claims can lead to the application be refused or the patent be revoked.
It is your choice as representative.
Dear Anonymous,
DeleteThanks for your lecture on PCT procedure. But please read again what I wrote : I agree that the PCT guidelines are not binding on the EPO but my view is that they provide an approach which makes sense (at least for practitioners such as myself) and can be a helpful source of inspiration, in addition it is desirable to avoid inconsistencies between the PCT guidelines and the EPO practice. I also note that you do not comment on the principle set out in the PCT Guidelines that the onus should be on the EPO for showing that the requirement to adapt the description is justified.
Dear Proof of the Pudding, thanks for your comment regarding the (lack of) use of hypotheticals by the EPO, it is a good point.
On the subject of the EPO raising unreasoned (ie purely hypothetical) objections under Article 84 EPC, I note that not one single supporter of the EPO's description adaptation practice has risen to the challenge that I set almost two months ago:
ReplyDeletehttps://ipkitten.blogspot.com/2022/05/board-of-appeal-agrees-that-description.html
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.
The EPO would have us believe that "inconsistencies" between the description and the claims case doubt upon the scope of the latter. However, my experience is that objections on this ground are always raised in the form of unsupported assertions. An example illustrating how and why inconsistences between the description and the claims led a national court to "misinterpret" the claims would at least represent a first step towards moving the EPO's objections from the purely hypothetical to the grounded in fact.
For 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.
Wouldn’t step 3 of the equivalents test come into play had the applicant identified stuff that wasn’t expressly claimed wasn’t the invention? Or in this case, because the description wasn’t adapted, step 3 could be answered no. So how the description is or is not amended will affect the scope of protection.
DeleteWhether insisting on this type of amendment is correct is another matter, but isn’t it fair to say that it makes a difference to answering the 3rd question.
So it’s not a matter of a court misinterpreting the claims, but more one of the applicant playing the game by limiting the claim in a very deliberate way, but still leaving open the question of a broader scope. There is a lecture on YouTube where judges are discussing this question and Jacob asks a question from a “well-respected patent attorney” how for the sake of argument a patent attorney could for what ever reason limited claim to sodium and nothing else. Cue awkward laughter and no real answer from the UK judges. An American judge did say she would have to look at what you were saying elsewhere such as patentability but there is still no answer to the original question about how you would limit the patent as desired.
Anon, no it is not fair to say. It would have been perfectly possible for the applicant to simply delete the allegedly inconsistent passages. That would not have made any difference to the assessment of equivalents.
DeleteOn the other hand, the effective insertion of disclaimers to everything that does not accord with the strict, literal meaning of the claims is precisely the kind of tail-wagging-dog approach that is the most serious problem with the EPO's practice.
An alleged infringement is either an "immaterial variant" of the claimed invention or it is not. The facts of the case will decide. Especially as the EPO never considers equivalents, they simply have no business tying the hands of the national courts on that issue.
I attended the lecture that you mentioned and recall the question regarding limiting the claims to a specific embodiment. I have since realised that the answer is simple: the facts of the case will decide the scope of protection afforded.
@proof of the pudding, thank you for answering my question which I can assure you was asked in good faith.
DeleteI think I misunderstood your challenge so thanks for clearing that up.
I agree that the EPO’s approach could bind a national court, which is what I thought (incorrectly) you were querying.
Your simple answer also make sense, but setting aside whatever role the EPO has in this, doesn’t this hurt third parties disproportionately? It would not be easy to do an FTO for this type of case without substantial evidence re equivalents. I don’t doubt some have deep pockets, but a robust FTO has increased significantly in cost as a result of this approach. Also, whilst it’s always good to get professional advice, the EPO’s language rules mean some third parties can’t place too much faith in what is claimed if the claims are the only thing in a language they understand? It’s a delicate balance between patentees and the public, but I don’t know what the answer. Someone way smarter than me can work that out.
It seems that the discussion has gone somewhat off-track - rather than discussing the EPO's misleading press release we are once again debating the merits of the EPO's requirement for description amendments.
ReplyDeleteSince that is the way that the discussion is going, it might be helpful at this point to summarise the arguments made on this blog by those defending the EPO's approach, and some thoughts from those of us on the other side.
1. The "established case law" requires it. T 1989/18 and T 1444/20 are isolated cases from a single board.
However, as many have pointed out, the established case law does not explain why it is required, whereas T 1989/18 and T 1444/20 at least explain why, in their view, the established position is wrong. What is missing is an explanation from the pro-amendment side of why T 1989/18 and T 1444/20 are wrong in their interpretation, and why the established (unreasoned) case law is correct (beyond mere weight of numbers).
2. The second sentence of Article 84 EPC demands it.
However, nobody seems to be willing to explain why the second sentence of Article 84 should be interpreted in this way. Simply "because the Boards say so" is not a valid answer (see point 1).
3. There are other things to worry about at the EPO (quality, etc).
This "nothing to see here!" argument is not a legally valid reason for ignoring problems elsewhere.
4. "We've been doing this for decades and it's never been a problem".
Again, not a legally valid justification. And most practitioners and users would, I submit, argue that the EPO's practice has changed, and for the worse, since the amendments to the Guidelines. That is why it is now being questioned even if it wasn't questioned for decades before (even if behind closed doors many of us found it strange and hard to justify).
5. "Hypothetical worries about ... the doctrine of equivalents" are for the national courts, not the EPO
Precisely! So why does the EPO seek to bind the hands of national courts on the interpretation of the specification? What jurisdiction does the EPO have to do that? Infringement, after all, is not a matter for the EPO.
6. Article 84 EPC requires a strict "one to one relationship between claims and description"
See point 2. The advocate(s) of this position seem curiously reticent to explain how they arrive at this interpretation of Article 84.
7. Claim-like lists are somehow "cheating".
Nobody seems to be willing or able to explain why this is cheating, or why it is cheating even if all of the items in the list clearly fall within the scope of the claims (how can they cast doubt upon the claim scope in that case?). Nor does anyone seem to be able to explain how the apparent (hypothetical) clarity problem only manifests itself at the last possible moment, or even after grant, when the presence of such lists was tolerated throughout examination.
Anything else to add?
Would any of the supporters of the EPO's approach actually care to engage with any of these points? We are going nowhere at the moment, and we will continue to go nowhere until we begin to understand why the EPO's advocates are so confident in their position, and yet so unwilling or unable to explain the basis for it.
Just have a look at T 1024/18 and you will have the explanation you are looking for!
DeleteAnon, no answers to Anon Y Mouse's questions are to be found in T1024/18.
DeleteTo summarise the key points of the legal reasoning in T1024/18.
1. The requirement of support by the description would "be reduced to a de minimis requirement" if it could be satisfied by merely repeating the wording of the claims in the description.
2. In order to justify its interpretation of the "supported by the description" (as requiring the description to be "consistent with the claims not only in some part but throughout"), the Board considered Article 84 EPC in its wider context, in particular its alleged connection with Article 69(1) EPC and the aim of ensuring legal certainty.
3. Eliminating "inconsistencies" between the claims and the description could avoid "misinterpretation" of the claims during national proceedings.
The problems with, and logical flaws in, this reasoning are numerous. However, I will highlight just a few.
To start with, point 1 flies in the face of the traveaux for Art 84. This is because the traveaux show that the word "fully" (which originally appeared before "supported") was deleted. This happened after the Conference and Working Party considered the options of deletion or replacement with a less restrictive wording. The deletion of "fully" was therefore clearly made with prejudice.
The problem with point 2 is even more fundamental, and gets to the heart of the dispute here.
With the apparent aim of ensuring absolute legal certainty, the Board interprets Art 84 in a manner that renders otiose the Protocol to Art 69. This is because, whilst the Protocol warns that the extent of protection should not be understood as "that defined by the strict, literal meaning of the wording used in the claims", the Board nevertheless insists upon adaptation of the description according to the EPO's understanding of the wording of the claims.
As I have previously explained, the EPO never conducts a thorough analysis of the claim language (for example, by taking and assessing evidence from those skilled in the art regarding the meaning conferred by the wording of the claims). It is therefore inevitable that the EPO will lean towards the extreme position that the Protocol warns against, namely interpreting the claims according to a strict, literal meaning of their wording.
Regarding point 3, it is hard to know where to start. This is because the Board essentially assumes that the EPO knows best, and that the national courts need help to avoid making mistakes when interpreting the claims of a patent granted by the EPO. Especially given that national courts will approach the issue of claim interpretation in a far more detailed and thorough manner than the EPO, it is impossible to see how the Board's assumption could ever be justified.
Seeking to enhance legal certainty for third parties is certainly a worthy objective. However, seeking absolute legal certainty at the expense of the rights of patent holders is neither a balanced nor a proportionate response to a perceived problem ("misinterpretations" by national courts) for which there is not even one concrete example.
Anon Y Mouse: I think that the original question (was the EPO' press release wildly misleading?) has already been answered with an unambiguous "yes". It is a sad reflection upon the current state of the EPO that no one seems to have been particularly surprised or upset by that answer.
DeleteAs to the questions regarding the EPO's practice on adaptation of the description, I do not believe that the supporters of that practice are either willing or able to provide the kind of straightforward answers that you are seeking.
Indeed, as you will have seen, @Anon of 25 July 2022 at 16:40 attempts to rise to the challenge that I set in May by positing that a "correct" adaptation of the description in the pemetrexed case would have involved the applicant effectively disclaiming everything falling outside of a strict, literal interpretation of the wording of the claims of that case. What Anon apparently fails to realise is that their argument actually proves the point that I originally made (in May), which was that the EPO's practice is by design intended to tie the hands of the national courts regarding interpretation of the claims, especially with respect to equivalents.
I have yet to see even the remotest hint of a justification for the EPO assuming such an outsize role in matters relating to post-grant claim interpretation. I certainly will not hold my breath waiting for any of the supporters of the EPO's practice to provide anything on this front!
@Proof of the Pudding:
DeleteThanks for your reply. Indeed, I agree that one of the many things that is lacking from proponents of the EPO's approach is an explanation of why the EPO feels that it needs to (or is legally entitled to!) take upon itself the role of minimising the (perceived) potential for (hypothetical) divergence in claim interpretation in (hypothetical) national proceedings. When this was discussed on this forum in April/May there was a large amount of hand-wringing and appeals to "putting all parties on a par" or "levelling the playing field", or words to that effect, but this appeal to emotion still doesn't address the fundamental legal issue.
With reference to your comment above exploring the reasoning in T 1024/18, I would simply add at this point that nobody as yet (including the Boards!) seems to have provided a clear and conistent position on the interaction between Articles 69 and 84 EPC, and whether it is legitimate to take Article 69 EPC into account in proceedings before the EPO. As I noted here (https://ipkitten.blogspot.com/2022/05/board-of-appeal-agrees-that-description.html) anonymously (see comment of 14 June 2022 at 10:28), there is, to my mind, wildly inconsistent case law from the Boards as to whether issues of claim scope arising under Article 69 EPC are a legitimate topic for the Boards to consider or not. The current practice seems to be for the Boards to rely (or not rely) on Article 69 as they deem convenient. That is not a sustainable practice, and speaks to me of the need for a referral to the EBoA in order to sort this mess out once and for all.
The boards have made abundantly clear that Art 69 is prima facie for the national judge and is only very rarely used. Art 69 is only used when the granted claim is really unclear and there is a need to resort to the description in order to understand the claim.
DeleteOn the other hand it is not possible to forbid OD and BA to have an opinion about the scope of protection in view of Art 123(3).
For the surplus, you might end up waiting for a while for a referral.
You will not get one from the president.
You might get one from a board with the same composition as that in T 1989/18 or T 1444/20
I am however not sure that the same legal member will manage to try to be more clever than his colleagues a third time.
As a party you might suggest a referral, but I cannot presently see a board daring to do so, unless it is the same as the two famous ones.
The question is at the same time highly political and I cannot see a BA or the EBA deciding against a long lasting EPO practice.
I have never seen the EBA telling the boards they are completely misunderstanding the EPC.
Even if there is a referral, what makes you so sure that the EBA will “sort out the mess”
in the way you would like to see it sorted out.
That it is a wish of yours is acceptable, but some wishes are never realised.
The EBA might endorse the long line of case law in matters of support as it has done for instance with the Swiss-type claims or the undisclosed disclaimers.
Hope dies last, but I do not see the EBA acting in the direction you wish.
@Anon of 26 July 2022 at 21:38, whilst you provide a pretty bleak assessment of the situation, I have to confess that I had already reached very similar conclusions.
DeleteRegardless of how this all plays out in the long run, the question to which we all deserve an answer is: what on earth makes this a "highly political" question?
The reason that we deserve an answer is because there is an awful smell surrounding the EPO's current description adaptation practice. The smell stems from the fact that the EPO's practice uses double standards to achieve a clearly illegitimate aim.
The double standards (Article 84 EPC, second sentence vs. every other provision of the EPC) relate to the relevance of Article 69 EPC and the requirement for objections to be sufficiently reasoned (as opposed to purely hypothetical).
The illegitimate aim is effectively making the EPO the sole arbiter of the meaning of the wording of the claims, despite the fact that EPO never conducts a proper assessment of the evidence for the purpose of interpreting the claims. This is illegitimate because the EPO has no authority to tie the hands of the national courts in such a manner. Moreover, by doing so, the EPO will unfairly deprive patent holders of protection (eg by equivalence) to which they are fully entitled.
And the EPO will not see sense on these points all because of "politics"?!
To me this suggests either that the EPO's strings are being pulled by (politically influential) person or persons unknown, or that EPO insiders who have pushed the current practice are struggling hard to avoid losing face. Even if it is neither of these (completely unacceptable!) alternatives, it is hard to see any reasonable explanation of why this should be a "political" matter.
So is the EPO willing to provide complete transparency on why it is so keen on maintaining its description adaptation practice, and upon ignoring the soundly-reasoned counter-arguments raised by the profession? I will not hold my breath waiting for this, and so I guess will have to put up with the stench for the foreseeable future.
to Anonymous 26 July 2022 at 21:38:00 GMT+1:
DeleteI agree with you that the EPO and its non-independent branches BA and EBA will hardly change their interpretation of the support requirement (which is quite peculiar, as it not applied in the other patent offices in the world, despite art. 6 PCT) .
However I do not agree with you that said interpretation is a "long lasting EPO practice", since this practice started to be applied to European applications at the end 2021 and before then the EPO granted more than more than 2.000.000 patents without requiring the deletion of unclaimed subject-matter.
Pudding, I agree with you that over the EPO these days hangs a nasty smell. But that stench arises from rather more important matters than Art 84 EPC. I'm thinking about the EPO's behaviour as employer, its distainful treatment of its own employees, not to mention its disregard for the rule of law. We know who D X Thomas is and we know how strongly he feels about conforming the description. But he has retired from the EPO and as far as I know has no axe to grind any more.
DeleteLet us concentrate on the most charitable explanation I can conceive: that M. Thomas and other long-term servants of the EPO are proud of what the EPO has achieved, these past 40 years, and are hurt to see it all blown away by "politics". The EPC deliberately excludes lack of clarity as a ground of invalidity, so it has always been incumbent on the EPO to allow though to grant only claims that are indisputably "clear". For proud and loyal EPO long-term servants, it is I suspect an affront to see the EPO grant patents in which the description describes an invention which is not the same as the one defined by the claims.
As litigators know, there is ALWAYS a degree of "disconformity" between the description and a claim narrowed in prosecution, not least because it is NEVER possible to imbue a claim with clarity in an amount of 100% and because even when the claim is "clear" its scope of protection, thanks to Art 69, remains less than 100% clear. The goal of 100% conformity is an illusion, as any litigator well knows.
Given that a patent specification is supposed to be an integrated document, it is reasonable for an EPO Examiner to object to flat-out contradictions between the description and the claims. But frankly, it is absurd to chase the rabbit further down the hole in an endless quest for 100% "conformity". Worse, it is patronising to the judges of the national patents courts. One wonders how much professional jealousy there is, within the EPO that they (the real experts) are excluded from the "Königsdisciplin" of deciding who gets enjoined for infringing a clear claim which has been duly issued by the expert and conscientious Examiners of the EPO. Professional jealousy, whenever it arises, always poisons the atmosphere.
Or, to be cynical, is it just that EPO management sees ultra-strict practice under Art 84 as another way to maximise EPO fee income? Is that the smell that Proof of the Pudding detects?
@ Proof of the pudding,
ReplyDeleteIn your comment of Monday, 30 May 2022 at 10:50:00 GMT+1, you refer to T 1024/18.
In T 1024/18 the board held 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”.
The board drew the logical conclusion 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”.
The conclusion you have drawn from this is quite wrong and the Board DID NOT USE clarity (regarding the meaning of the wording of the claims) as justification for the EPO’s practice on support, as it made clear that clarity and support are entirely different requirements.
A claim can be perfectly clear and still not be supported by the description.
A case of lack of support is when the claim is unclear when essential features in the description cannot be found in the claim. This inconsistency can be overcome by adding the essential feature in the claim.
Another possibility of an inconsistency is when a feature in the independent claim is mentioned as optional in the description. This inconsistency can be overcome by removing the optional feature in the description.
Clarity and support are indeed separate requirements under Art 84 and they can eventually be considered to converge when there is no inconsistency between the claims and the description.
It is not permitted to an applicant/proprietor to alter the technical message delivered by a claim by leaving in the description a statement inconsistent with the wording of the claim as such. And it is rightly so!
If my claim for a second medical use initially recited the use of "pemetrexed disodium and equivalents thereof", as recited in the description of the invention, and the examiner required the deletion of "and equivalents thereof" from the claim as lacking clarity, applying the examination guidelines the deletion of these words from the description would presumably also be required 'for consistency'. Would the actions of this examiner then deprive me of my rights under the A.69 Protocol?
ReplyDeleteAnonymous, I suppose you think this is a "Gotcha" sort of question but I suspect it will be laughed off by proponents of the EPO established practice under Art 84. Their answer to your question would be a flat "No, of course not. Whatever gives you that idea?"
DeleteAye, there's none so blind as those who will not see.
DeleteNo, it would not. Also, as I have indicated in another comment, the same conclusion would apply to deletion of passages from the description. The biggest problem with the EPO's description adaptation practice is where it requires subject matter to be labelled as "not the claimed invention". That is where the mischief is to be found.
Delete@ Anonymous of Wednesday, 27 July 2022 at 10:49:00 GMT+1
DeleteMerely claiming the use of "pemetrexed disodium and equivalents thereof", even as recited in the description of the invention, would earn you a clear cut objection under Art 84, first sentence. Merely repeating the wording of the claim is not to be considered as support of the claims by the description. A purely formal support, e. g. a verbatim repetition in the description of a claimed feature, is not sufficient for fulfilling the requirement of support by the description, cf. T 2483/16, Reasons, Point 2.1. What is unclear in a claim does not become clearer if it is repeated by in the description.
The breadth of a claim should be commensurate with the contribution to the art of the invention defined in the claims. If only disodium has been disclosed in the original file, you might be stuck with this sole disclosure and you cannot claim much more. If a plurality of salts have been disclosed they can either be claimed as alternatives or you can attempt to formulate a generic claim. But merely referring to equivalents will not do.
The EPC does not define equivalents, so that claiming equivalents is a no-go. Equivalents are mentioned in Art 2 of the protocol on Art 69, but without any definition. During the diplomatic conference of 2000 an Art 3 was proposed by the EPO. It contained a definition of what should be considered an equivalent. The contracting states did not adopt the definition proposed and Art 3 was deleted.
For this reason we have presently as many DoE as we have national jurisdictions. Be it only for the fact that there is no uniform DoE you will never be allowed to claim equivalents as such at the EPO. It is for the proprietor to show that there is infringement by equivalents. And infringement is not a matter for the EPO.
I would recommend Martin Wilming's post which goes to some detail on Art. 84 - and how it may have been perverted over time https://www.patentlitigation.ch/for-discussion-has-the-requirement-that-claims-be-supported-by-the-description-been-perverted-over-time/
ReplyDelete@Proof of the Pudding & MaxDrei
ReplyDeleteI agree that the EPO’s campaign on the adaptation of description looks bizarre.
On reflection I do not see the money trail, ie the EPO’s objective would be to prolong prosecution in order to keep 100% of renewal fees for a longer time, as plausible. The issue stems from conflicting BOA decisions, not from the EPO management.
I see a possible motive in the upcoming launch of the UPC. This is going to call into question the current leading position of the EPO in the European patent landscape and some people are getting nervous, as clear from the UPC-bashing frequently found in comments from ex-EPO people. The EPO’s emphasis on the adaptation of the description could be a way for the EPO to pre-empt the issue vis-à-vis the UPC and assert its leadership. Confronted with this type of « threat », it is logical to find opposing positions within the BOAs.
As for the idea that the EPO could somehow tie the hands of the national courts dealing with infringement cases, it is clear that the EPO has no competence to interfere with the dealings of national courts – it is competent to apply Art 69 and its protocol only in respect of compliance with Art 132(3) – and also it is unrealistic as a key issue when claims have been amended to avoid novelty/inventive step rejections or revocations is the weight of the prosecution history or « file wrapper estoppel » in the court’s assessment esp. for the doctrine of equivalents. This is an issue for which only national courts, and in the future the UPC, are competent.
Francis, I hesitate to enter the realm of speculation. However, I have reason to believe that the EPO's "tightening" of their description adaptation practice may well represent a reaction to the UK Supreme Court's decision in the pemetrexed case.
DeleteEven if my suspicion is correct, we are still a long way from finding an adequate answer to the question that I posed. This is because the "tightening" of the EPO's practice is a completely inappropriate response to an individual judgement of an independent, national court.
Why would the EPO be concerned about such a judgement? What makes the EPO so sure that the judgement reached the "wrong" conclusion? And even if there are reasonable answers to those two points, what business does the EPO have in attempting to "harmonise" national court judgements on matters of infringement?
There are far more appropriate (and effective) steps that could be taken to reduce the level of divergence between outcomes of infringement actions at different national courts. It is impossible to understand why, against all common sense, the EPO has attempted to insert itself as a key player in this arena. (For the record, I am not persuaded that this has anything to do with the UPC. The timing of the key Board of Appeal decision, as well as of the original change to the GL, does not seem to fit well with that hypothesis.)
Thank you F. Hagel. Above, I mused that "professional jealousy" of the infringement courts might be playing a role here, but your point about the EPO being apprehensive about a looming loss of pan-European primacy in making patent law strikes me as a related and equally plausible explanation. The EPO is leveraging, bigging-up its role as prosecution police force, as a way to retain its primacy in adjudicating patents after issue. D X Thomas would deny it, I am sure. His motives are purer. But it is not him who decides what goes into The Guidelines, what "line" it shall take, going forward.
ReplyDeleteDear Max Drei,
DeleteThere is nothing for me to deny here. The EPO has been given the job to grant patents for a series of countries, and its aim is to put all applicants/proprietors on a par.
I said it many times and it is often forgotten, a UP is no more than a patent granted or maintained by the EPO and its BA. First instance divisions and BA are primarily bound by the decisions of the EBA. First instance divisions are bound by decisions of the BA as far as those are mentioned in the Guidelines.
Infringement has never been a problem as such for the EPO. It is a problem for proprietors and third parties which for this go to national courts if one thinks that its rights are infringed and the other thinks he is not infringing patent rights. This is far beyond the reach of the EPO.
When an opposition is filed at the EPO, the latter will also have to decide on validity. This examination of validity is to be carried out along the case law of the EBA/BA as the case might be.
In a Munich conference on the UPC Sir Robin Jacob was of the opinion that the number of oppositions at the EPO will become negligible as it looks like “Waiting for Godot”. Not only has the EPO strengthened the opposition procedure, but the BA have the firm aim to lower the backlog which has been created by the absence of recruitment of new members for a number of years.
I am far from convinced that the number of oppositions will diminish at the EPO, be it only from a question of fees and costs to be charged to the losing party. And when you see the nightmare created by the language rules before the UPC, it becomes even less likely that oppositions will diminish at the EPO.
That the UPC might come to different conclusions in matters of validity is perfectly possible. This is already the case at present. National courts are independent from the BA and vice-versa. The BA have taken some advances from national jurisdictions, e.g. the now defunct “Swiss-type”, but has no obligation to follow national case law. Conversely, when looking at added matter, the BGH although it claims to follow the case law of the EBA, has a different, much more lenient, approach.
The problems comes more from the proponents of the UPC who would like to see it becoming the leading court in patent matters. For infringement, this is perfectly possible, but for validity I have strong doubts. I see diverging case law in matters of validity before the EPO and before the UPC. The net result is that the UPC will add another layer of case law which will simply confuse issues and not be helpful whatsoever.
This could have been avoided for instance by leaving the EPO to decide on validity and the UPC to decide on infringement. This would have insured coherence of case law on each side, but was to the detriment of the proponents of the UPC, so it was a no go. It is also not acceptable for the EU and the CJEU that it does not have any direct say on what is going on in matters of patent case law. But this is clear result of the negotiations in the early seventies between EU and non-EU contracting states.
I read many years ago that while the proprietor can limit its patent during all its active life, why the opposition period should be limited to 9 months?
We are here far from the adaptation of the description, but since some commenters have come up with the UPC, I considered a clarification to be useful.
The job of the EPO is to ensure that all proprietors are on a par and that the claims are commensurate with the contribution to the art and that the description cannot be inconsistent with what is claimed.
Dear Mr Thomas, I think that it is time that you explained the legal basis for the EPO's aim to put all applicants/proprietors on a par. That phrase does not have a meaning that is well understood by those of ordinary skill in the art of patent prosecution. You therefore need to clarify.
DeleteDaniel, I like to think that not much separates our respective positions on Art 84. I agree with you that the ambit of the claims ought not to exceed that which is enabled by the description. I agree with you that in this sense the description must "support" the claims (claims which, it goes without saying, must be "clear").
DeleteThe problem, perceived by you and others within the EPO, occurs when the claims are narrowed during prosecution. The obsession within the EPO, that the description must in consequence be purged of everything which is (however implausibly) "inconsistent" with the allowed claims goes way beyond what is required for compliance with Art 84 EPC. This obsession is i) peculiar to the EPO ii) unsupported by the text of Art 84 EPC and iii) damages the otherwise high repute with which the EPO is held world-wide.
How the obsession has arisen, and what is fuelling it, remains, to me, a mystery.
@ Proof of the pudding,
DeleteFirst comment: my reply was for Max Drei and not for you. What gives you the right to interfere?
Second comment: should you not be able to understand or not be willing to understand what it means "to put all applicants/proprietors on a par", I cannot really help you.
Third comment: you manifestly seem to belong to the group of people who are rather willing to misunderstand what is said or written than to the group of those trying to understand.
Fourth comment: in order for you not to end up drowning in the pudding, I will try to explain why the role of the EPO is to put all applicants/proprietors on a par, although I doubt that my explanations will reach you.
Explanations:
Any natural or legal person can come to the EPO and claim it has made an invention.
The job of the EPO is then to check, irrespective of the applicant, whether there is at all an invention and if there is an invention to verify whether the patentability criteria are fulfilled.
Should the EPO be of the opinion that there is a lack of sufficiency under Art 83, then there is no invention all and as there is also no contribution to the art, See for instance G 1/03, Point 2.5.3.
If there is a contribution to the art, then it has to be decided whether this contribution is novel (Art 54) and inventive (Art 56) over the existing prior art. This should not come as surprise to you.
Should, following filing, the applicant discovers that he could actually claim more than he has disclosed, he will not be allowed to do so for the legal certainty of third parties. Third parties should not be confronted with teachings in the claims or in the description/drawings not part of the original disclosure, cf. Art 123(2).
You will certainly agree that the monopoly granted, clad in the claims, has to be commensurate with the contribution to the art.
For this reason, case law of the BA has decided according to Art 84, first sentence, that claims have to be clear as such without recourse to the description. A further requirement is also contained in Art 84, last sentence: the claims have to be supported by the description.
If the claims are clear as such, the description may not contain statements which allow to raise doubts about the actual meaning of the claims. In other words any inconsistency between the claims and the description has to be avoided and henceforth the description has to be adapted to the claim. See for instance a very recent decision T 2613/18, Reasons, Point 2.1.1.
The conditions I have mentioned above here are valid for any applicant/proprietor of any origin/citizenship, be it a legal or natural person.
This is the reason why the role of the EPO is “to put all applicants/proprietors on a par”.
What else more do you need for explanation?
In case of infringement, it is the job of the proprietor to show that there is possible infringement by equivalents, whatever DoE is applied by a national jurisdiction.
In all fairness to the competitors and possible infringers it has to be avoided that by leaving inconsistencies between the claims and the description, the proprietor tries to take advantage of those inconsistencies in order to obtain more than it has contributed to the art, equivalents comprised.
This is why there is the Art 69 and its Protocol, in which equivalents are mentioned but not defined. This gives the possibility of a national jurisdiction to decide on any DoE it wishes.
But the patent as granted should be clear of any inconsistencies between claims and description.
To avoid such an undue advantage represents another reason for the EPO to put all applicants/proprietors on a par.
Has the penny now dropped? I hope so!
By the way, a litigation lawyer I know very well explained to me not later than yesterday that it is of utmost importance for the description to be adapted to the claims, as it avoids lengthy and actually unnecessary discussions in court.
But Daniel, this is getting ever sillier. Even if I go to your preferred citation of T2613/18, Reasons, 2.1.1, for the text which you suppose settles the matter once and for all, what I find is:
Delete"The requirement of "support by the description"
reflects the general legal principle that the extent of
the patent monopoly, as defined by the claims, should
correspond to the technical contribution to the art in
order for it to be supported...."
Sorry, but I'm still not finding in this citation any command (in pursuance of compliance with Art 84) to excise words from the originally filed description, merely because those words happen to disclose to the reader matter that goes beyond what the allowable claim embraces.
Might you care to try again, to explain to us why Art 84 gives the EPO no choice other than to insist that such matter be excised?
Dear Mr Thomas, thank you for taking the time to explain your point of view.
DeleteIf I may, I would like to summarise my understanding of your explanation of the legal basis for the EPO's aim “to put all applicants/proprietors on a par”, as it applies to Art 84 EPC. What follows below paraphrases your responses. Nevertheless, I believe it captures the essential points that you made regarding Art 84, second sentence (though please do let me know if I have missed anything).
1. The monopoly granted has to be commensurate with the contribution to the art.
2. In case law of the BA, Art 84, second sentence has been interpreted to mean that the claims must be supported by the description.
3. According to that case law, even if the claims are clear as such, the description must not contain statements that could cast doubt upon the meaning of the claims.
4. A patent proprietor could try to take advantage of inconsistencies between the claims and the description, "in order to obtain more than it has contributed to the art, equivalents comprised".
As a first point, I have to say that I was rather hoping for a more robust reasoning ... for example starting from the wording of Art 84 EPC and then carefully applying the interpretative methods permissible under the VCLT. Instead, it seems that, with the exception of point 4 above, the only legal basis you rely upon is established BA case law. As others have pointed out, the trouble with that BA case law is that it also lacks any robust reasoning (or at least reasoning that is anywhere near on a par with the level of that provided in the "dissenting" BA decisions).
I accept that there is little chance that (yet again) drawing your attention to the lack of robust reasoning in the established BA case law will not persuade you to acknowledge that there may be some problems with the "established" interpretation of Art 84, second sentence. However, I wonder whether thinking carefully about the implications of point 4 above might help you to grasp why others, including me, believe that the EPO's current description adaptation practice goes too far.
Whether you realise it or not, an implication of point 4 above is that the EPO's practice assumes that national courts cannot be trusted to ensure that patent proprietors are only afforded protection that is commensurate with the contribution to the art made by their patent. That is, the EPO's practice effectively assumes that "inconsistencies" between the description and the claims will confuse national courts to such an extent as to render them vulnerable to falling prey to attempts by unscrupulous patent proprietors to obtain over-broad protection.
Firstly, I would encourage you to think for a moment about whether there is any evidence to support such an assumption. (I can answer this point: there is no such evidence. This has been made abundantly clear by the absence of any responses to the challenge that I set in May.)
Secondly, and bearing in mind the answer to the first point, I would encourage you to imagine standing before a judge of a national court (such as a UK High Court judge) and explaining to them precisely why point 4 above justifies the EPO's practice on adaptation of the description. Would you feel comfortable standing in the witness box and explaining to the judge that the EPO does not grant patents with any alleged "inconsistencies" between the description and claims because they assume that, if they did otherwise, national judges could not be trusted to "correctly" (in the EPO's eyes) interpret the claims?
DeleteIt seems to me that determining the scope of protection afforded by the claims of a patent (and, in doing so, considering all forms of potentially relevant evidence, including prosecution history) is one of the key competences of national patent court judges. I would therefore have thought that any such judge might bristle at the suggestion that they need to be spoon-fed (by a "strict" adaptation of the description) in order to avoid falling into the trap of interpreting the claims of a patent in a manner that is over-generous to the patentee.
We all make mistakes, and certainly judges of national courts are no exception. However, it is enormously insulting for the EPO to design their practice based upon an assumption that national judges will be incapable of consistently carrying out one of their core tasks in a competent manner. Would you not agree?
Dear Me Hagel,
ReplyDeleteThe EPO’s campaign on the adaptation of description looks anything but bizarre. It is manifestly the result of the Audit department noticing that some divisions did not bother adapting the description to the claims at the end of the examination procedure. In such a situation, it is no surprise that the corresponding part of the Guidelines has been strengthened. That some divisions have gone over the top is not in debate. As long as Art 84 is as it is the description will have to be adapted to the claims. T 1989/18 and T 1444/20 will not change this.
Please do not forget that the monopoly conferred by the claims has to be commensurate with the contribution to the art of the claimed invention. Any statement in the description which attempts to broaden the contribution to the art of the claimed invention is thus not allowable.
In opposition this will not happen as the opponent and the proprietor will in general attempt to get an adaptation of the description which could help them in future litigation. The EPO is however immune to this and there are numerous decisions of the BA which make clear that the EPO is not there to give ammunition to one or the other party for future procedures at national level. Sometimes the haggling going on when the case is remitted in order to adapt the description is flabbergasting.
The money trail is indeed not a reason as we can see since that 2014 onwards an acceleration of the rate of grant. The contracting states are quite happy as the national renewal fees can be cashed in much earlier. If the tails want to continue to wag the dog, it better delivers patents as quickly as possible.
As there is no valid and established DoE for all contracting states it is difficult to follow you when you claim that the EPO would actually attempt to tie the hands of national jurisdictions. The EPO grants patents for which the claims have to be supported by the description that is void of inconsistencies between the two. What happens after grant is none of the interest of the EPO with the exception of the opposition or limitation procedure.
It becomes ludicrous when you then come up with the UPC. That the EPO’s emphasis on the adaptation of the description could be a way for the EPO to pre-empt the issue vis-à-vis the UPC and assert its leadership cannot be taken seriously. As far as infringement is concerned, the UPC will not have a different position than presently national courts with respect of the EPO, besides the point that its reach is larger. On the other hand when one looks at the position adopted by certain courts in respect of assessing infringement abroad, the utility of the UPC can be put in doubt. See the communication of Me Dhenne in Kluwer Patent Blog of July 8, 2022.
One problem which has been carefully swept under the carpet with the UPC is the possibility of contradictory decisions between the BA of the EPO and the UPC in matters of validity. During opposition, the EPO will also take a decision on validity. Just think of the problem of added subject-matter and/or disclaimers.
There is a clear problem here as a UP will be a patent granted or maintained by a division of the EPO which has to abide by the case law of the boards and especially that of the EBA. On the one hand, the UPC will be free to diverge from this case law, as some national jurisdictions do, but on the other hand it cannot force the EPO and its boards to adopt its case law. This is a real factor of uncertainty about the whole UP/UPC system which is far from negligible.
It is really far-fetched to link the problem of the adaptation of the description with the upcoming UPC. It borders on conspiratorial theories.
Anon, I can agree that the UPC and the flow of money do not explain the EPO's description adaptation practice. However, I do not agree that the absence of a uniform, established DoE for the Contracting States means that the EPO's practice will not have the effect of tying the hands of the national courts regarding the determination of equivalents.
DeleteLet us remember that the EPO's practice can require the insertion of 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". Do you really claim that there is no chance that such statements could have no effect upon a national court's decision on whether the subject matter in question falls within the extent of protection provided by the claims (whether by equivalence or otherwise)?
As things currently stand, there is no valid reason for the EPO to insist upon the insertion of such phrases. Things might be different if the EPO conducted proper assessments of the extent of protection afforded by claims. However, as I have repeatedly pointed out, that never happens.
The Groupthink within the EPO gets more and more bizarre. Consider what the latest posting from"Anonymous" includes, which I copy and paste here:
ReplyDelete"Please do not forget that the monopoly conferred by the claims has to be commensurate with the contribution to the art of the claimed invention. Any statement in the description which attempts to broaden the contribution to the art of the claimed invention is thus not allowable."
We are considering here the originally filed description, written in support of the oriiginally filed claims. Another poster here talks about Applicants who "cheat" and here we have another view from inside the EPO, that retention of the originally filed description text must be seen as an illegitimate "attempt to broaden" the narrower claims allowed through to issue by the EPO.
Every time there is comment from inside the EPO it confirms for me that the EPO executive management (not even its Boards of Appeal) thinks it, and not the courts, shall be the judge of what infringes a European patent. No wonder so many patent practitioners are affronted.
@MaxDrei
DeleteI agree with your summary. It is clear from the EPO’s press release of July 7 that the EPO’s objective for the requirement to adapt the description to amended claims is to influence national post-grant patent proceedings. There is certainly at the EPO the view that, given its pan-European extension, it is entitled to exercise influence vis-à-vis national courts. This concern can only grow with the launch of the UPC.
The pemetrexed decision has been cited in above comments as concerning for the EPO and a likely cause for the current EPO’s emphasis on adaptation of the description. I will add its progeny l’Oréal v. RN Ventures, UK Patents Court 5 Feb 2018, [2018] EWHC 173 (Pat) which relates to a case in which the description was adapted to the claims and the prosecution history was cited by the defendant to challenge an interpretation broader than the words of the claims. the court dismissed this argument by referring to the pemetrexed decision, stating that the consideration of the prosecution history in infringement proceedings was the exception, not the rule.
An explanation for the EPO’s emphasis on the adaptation of the description could then be the aim to produce stronger evidence of the applicant’s intent to restrict the scope of the claims, so as to overcome the national courts’ reluctance to make it a rule to consider the prosecution history in claim interpretation.
The EPO’s position is related to an approach of patent quality which in my view gives too much weight to the statistics regarding national courts’ decisions involving European patents. Such data are unreliable first because the percentage of European patents used in court proceedings is a minuscule sample, and second this sample is likely affected by a strong bias – there is a lawsuit reaching a court decision only when both parties have reasons to think that they can prevail, otherwise they settle the dispute or the patentee drops the claim.
The "long-standing practice" has clearly changed in the last couple of years.
ReplyDeleteExample 1. Description states "The invention provides a method of treatment using compound X.". Clearly, linguistically, claims covering "Compound X per se" do not cover the use of X in a method of treatment. MOT claims are also specifically forbidden under the EPC. Is the claim to "X per se" not supported by the description merely because of this statement regarding MOT? I note above that "fully" was intentionally deleted from the EPC. Will a national court enforce the claim against infringement by a doctor prescribing X to a patient? Of course not.
The EPO argue that there is an inconsistency that should be removed. Traditionally, we amended the offending statement to read "The disclosure provides a method of treatment using compound X". However, examiner's now take it upon themselves to amend the statement to "The invention does not cover a method of treatment using compound X.". Harmless? Yes. Added matter? No, because the claim could never have been interpreted to cover MOTs. Unnecessary? Completely.
Example 2. Description states "Prodrugs of compounds of formula (I) are within the scope of the invention. Without commenting on Art 84, usually the objection is overcome by amending to "Prodrugs of compounds of formula (I) are within the scope of the disclosure.". However, examiner's now take it upon themselves to amend the statement to "Prodrugs of compounds of formula (I) are not part of the invention.". Harmless? No, because the scope of the claim is now dependent on the origin of the compound – i.e. not formed post-administration from another compound of formula (I). Added matter? Possibly. Unnecessary? Completely.
ReplyDeleteT 2766/17 has been presented in the EPO press release of July 7 as well as on this post as one of the recent decisions supporting the requirement to adapt the description if the claims are amended. This is actually incorrect. While acknowledging that such requirement is “established case law”, T 2766/17 asserts in Reason 6 : “The current Board concurs with decision T 1989/18” (which holds that the requirement has no basis in the EPC).
T 2766/17, however, accepts that the requirement to adapt the description is justified “if the description contains statements contradicting the plain wording of the claim.” In such a case, the basis for the requirement is not that the claims be supported by the description but clarity.
It is of note that the balanced position of the Board of T 2766/17 appears equivalent to the recommendation of the PCT Guidelines 5.29.
Another element of particular relevance in this situation of divided opinion within the Boards of Appeal is that the Board of T 2766/17 does not include the legal member who had been considered instrumental in the decisions T 1989/18 and T 1444/20 which have taken issue with the requirement to adapt the description.
Based on this, and my examples (yesterday), it seems the EPO examiners are simply no longer competent enough to understand and interpret claims or the description to identify a true lack of clarity, and resort to insisting on nonsense amendments with dubious unjustified reasons: "long established practice" = "it's what my nan and grandad did, but we don't know why or how, because they were smarter than us".
DeleteI interpret reason 6 as agreement only existing in that claims should be clear, not a blanket endorsement in the cited decision of there being no legal basis to amend the description in the EPC:
Delete“The current Board concurs with decision T 1989/18 and, as a rule, with the cited conclusion drawn in T 454/89 (point 4.1 (vii) of the Reasons), that for the purposes of Article 84 EPC, the claims must be clear in themselves”
I agree with your assessment that “support” in Article 84 EPC is found not relevant to the need to amend the description, but it does nonetheless need amended if the clarity of the claim is affected.
I could be reading the (comments) room incorrectly, but it appears that there is somewhat of a consensus that the description can indeed affect the clarity of claims. A simple example is where the description indicates claim 1 features as optional. Changing the description to say these are not optional doesn’t seem controversial.
I struggle to agree with either extreme of no amendments under any circumstances, or alternatively remove all ambiguity of what is inside and outside of claim 1 as per EPO GLs.
The US FDA have a correct understanding of the law when issuing their own guidance documents:
ReplyDelete"In general, FDA’s guidance documents do not establish legally enforceable responsibilities. Instead, guidances describe the Agency’s current thinking on a topic and should be viewed only as recommendations, unless specific regulatory or statutory requirements are cited. The use of the word should in Agency guidances means that something is suggested or recommended, but not required."
The US, along with all non-EPC countries, also somehow manage to deal with patents where the description has not been replaced with a copy of the claims. Europe, on the other hand, now even has a problem with the description being mistaken for the claims, so in future the description shall be deleted to avoid "confusion". How Article 84 is to be fulfilled is guidance I await in trepidation.
But in the US there is a file-wrapper estoppel! Do not confuse the issues.
DeleteIrrelevant DXT. For one, issued claims may never have required amendment during prosecution.
Delete@ Proof of the pudding, your comment of August 1st,
ReplyDeleteYour question was unclear. If you wanted a specific reply to the problem of Art 84, you should have said so. You kept your question very general and I replied in general but made some inroads to the support of the description. .
You are absolutely convinced of the righteousness of your position. I leave this to you, but it is not a surprise that I cannot follow you.
You even go as far as to claim that the EPO is wanting to tie the hands of national judges. This claim is ridiculous to say the least. Every national jurisdiction is free to choose the DoE it thinks fit and it is not for the EPO to interfere with this choice, and the EPO never did. Any statement to that effect is void and results from your personal interpretation.
When evaluating a claim a national judge will in general interpret it in the light of the description. It is for this reason that the EPO is insisting to avoid inconsistencies between claims and description.
If for instance, a feature is contained in the independent claim it cannot be at the same time considered optional in the description. This is a clear inconsistency and according to the interpretation of Art 84 given by the vast majority of the boards it has to be removed, whether you like or not. The same applies mutatis-mutandis to claim-like clauses.
We are not on the same wavelength and I fear we will never be.
I am thus stopping any discussions on this topic. I do not wish to continue turning in circles without any convergence whatsoever.
I will simply note that two decisions at odds with the views of the established case law on the topic of adaptation of the description will not bring a change in EPO's policy.
I would have no problem in explaining my point of view to a national judge. He is then free to accept it or not as he is free to consider any DoE he wishes. Bringing the description in accordance to the claims is a requirement of the EPC. As long as this requirement exists, the EPO will require it. It does by no means tie the hands of the judge.
The day the requirement of adapting the description is lifted, the description will not have to be adapted. Then the file history might have to be taken into account and we all know that national judges are reluctant to go along this path. They want to look at the claims and at the description and I have full understanding for this. But to be able to do so correctly, the description should not be at odds with the claims and vice-versa.
I have witnessed fierce discussions on the adaptation of the description between opponent and proprietor. It was manifest that what they had in mind was possible later litigation. It is not the role of the EPO to provide ammunition for one or the other party for later.
Besides the cases in T 1989/18 and T 1444/20, I have never seen an appeal because the opponent or the applicant/proprietor were not satisfied with the adaptation of the description decided by the division. To me this is significant. I have never understood the song and dance about those two odd decisions.
Unless I am personally attacked, I will not say anything more. My point of view is well known. As you will surely not agree it will remain your problem and I could not care less. There is a moment to stop discussing even it is difficult. It is more reasonable.
I will continue publishing in my blog decisions of the BA and give my honest opinion/comments about those. Even if it has to do with adaptation of the description. On the one hand, the topic is exhausted and on the other hand, there are certainly other topics more interesting than this one.
Should people feel the need to state my name in any reply to an anonymous statement, they should however have the decency not to hide in anonymity.
Dear Mr Thomas, thank you for letting me know that you intend to stop responding to my comments. I agree that we are not on the same wavelength. If you will permit me a few observations, I believe that I can reveal at least part of the reason why.
DeleteFirstly, the position that I hold has nothing whatsoever to do with "righteousness". I have merely considered the facts and the evidence available and, by applying a logical reasoning process, arrived at certain conclusions. Therefore, if you wish to persuade me that I have arrived at the wrong conclusions, you will need to:
- demonstrate why facts or evidence upon which I rely do not show what I think they do; and/or
- point to flaws in my chain of logic.
In this regard, I have to say that I am very disappointed by your comments. Instead of addressing the facts / evidence or reasoning upon which I rely, you merely allege that I have arrived at wrong (or "ridiculous") conclusions. That is, in an ironic turn of events (given the subject matter of this discussion thread), your response consists of statements that lack support.
To illustrate, you state that "Every national jurisdiction is free to choose the DoE it thinks fit and it is not for the EPO to interfere with this choice, and the EPO never did". However, you do not dispute that the EPO's practice is intended to ensure that national courts do not "misinterpret" the claims of a granted patent (ie interpret the claims of the patent in a manner that is not commensurate with the patentee's contribution to the art).
Thus, at the same time as advocating for EPO practice that is undoubtedly intended to steer the national courts away from certain interpretations of the claims, you claim that said EPO practice is not intended to tie the hands of the national courts with respect to interpretation of the claims. You will forgive me for concluding that your position on this point is not entirely consistent.
Perhaps you are imagining adaptations of the description that only comprise the removal of blatant inconsistencies. In such instances, I can agree that the effect of such adaptations may be harmless. However, the situation is often much more complicated for alleged "inconsistencies" that are targeted by the EPO's description adaptation practice. Consider, for example, the prodrug example provided by Anon of 31 Jul 2022 at 16:21.
It is only when two sides reach a mutual agreement upon which (if any) facts and evidence are uncontested and which are disputed that there can be any chance for a constructive debate. In this respect, avoiding tackling seemingly "inconvenient" facts (or scenarios) is not a helpful strategy ... unless, of course, you are aspiring to be a politician.
@ Proof of the pudding,
DeleteIt is interesting to note that you cannot resist and want to have the last word.
I leave you with this behaviour. I could not care less, but if it helps you so be it.
it is very interesting to note that you give the answers yourself. How practical.
For this topic I will leave to swim in your pudding as you seem very keen to do so.
Please do not any longer address me any comments on the topic of the adaptation of the description.
I hope you can at least respect this request.
For me the matter is settled.
Mr Thomas, I believe that you have finally blown up the irony meter. It could just not handle you accusing another of wanting to have the final word ... in a comment representing your further attempt at having the final word, after your earlier attempt to do the same failed.
DeleteThe irony meter was already struggling to cope with your extreme sensitivity to comments that you perceive to be discourteous towards you ... which sensitivity is often most evident in comments in which you demonstrate discourteousness towards others.
Metaphorically speaking, I have broad shoulders and so can easily handle accusations that my views are "ridiculous". I can even handle completely unsupported allegations that my views are "null and void". Such allegations do not instil in me any urge to respond in kind. However, I do wonder how you might receive similar insults, and whether, after having been so insulted, you would stay silent just because I indicated that I considered the matter to be closed.
By the way, I would like to thank you for illustrating why we are not on the same wavelength. It seems that you are not interested in engaging in a constructive debate ... but instead only in airing your views and, without explaining why, telling others that they are wrong. As I am always open to being persuaded by superior logic, I had hoped for a much better quality of debate. Still, you live and learn.
More arrogancy than irony on my meter.
DeleteIn my view, the problems with the EPO's practice can perhaps be illustrated by the following questions, to which I have yet to see adequate answers.
ReplyDeleteFirstly, if the EPO's practice is aimed at preventing "misinterpretations" of the claims by removing "inconsistent" disclosures, how does the EPO identify the "correct" interpretation of the claims, and thereby the disclosures that are "inconsistent" with that interpretation?
More particularly, how does the EPO determine with absolute certainty that disclosures falling outside of a strict, literal interpretation of the claims do not fall within the extent of protection of those claims (for example, due to the possibility that those skilled in the art might afford a broader interpretation to the wording of the claims and/or the possibility that the relevant disclosures might be "immaterial variants" of the claimed invention)?
Secondly, if the EPO's interpretation of the claims turns out to be incorrect, are national courts nevertheless bound by a decision of the patentee to consent to the labelling of certain disclosures of the description (for which protection might otherwise be afforded) as "not encompassed by the wording of the claims", "not according to the claimed invention" or "outside the subject-matter of the claims"?
Finally, what are the criteria for deciding whether an allegedly "inconsistent" disclosure should either be:
A) removed / labelled as not the claimed invention, on the grounds that the manner in which the disclosure is presented casts doubt upon the scope of the claims; or
B) retained (eg for information / sufficiency purposes), on the grounds that the manner in which the disclosure is presented does not cast doubt upon the scope of the claims?
Clearly, discussions of the prior art fall under category B. The question is what else falls under that category (and why, or why not)?
Any constructive answers gratefully received.
The EPO needs to realise it would pay a heavy price for the requirement to adapt the description after claim amendment so as to remove inconsistencies : the optics would be catastrophic from the standpoint of applicants. Burdensome, costly, worthless, this is how the requirement is perceived. The EPO probably likes to see itself as applicant-friendly, this policy would make it applicant-unfriendly.
ReplyDeleteI have hopes that the EPO will soon become aware of this reputational risk and, if not turn back, at least restrict the adaptation requirement by putting the onus on the ED to show that an inconsistency affects the clarity of a claim. This is the sensible solution recommended by PCT Guideline 5.29 and T 2766/17.