Board of Appeal decisions considering description amendments are now so frequent that PatKat can only just keep up. Hot on the heels of T 2194/19 (IPKat), comes yet another decision addressing the legal basis for the description amendment requirement (T 3097/19). The Board of Appeal in this latest decision explicitly disagreed with T 1989/18, and found legal basis for adaptation of the description in line with the claims in Article 84 EPC and Article 69 EPC. The growing number of contradictory decisions on description amendments intensifies the pressure for an EBA referral.
Description amendments catch-up
The recent controversy over description amendments began with a significant tightening in the 2021 EPO Guidelines for Examination. The Guidelines require that, when amending or adapting the description in line with the claims, the applicant must either delete subject matter not covered by the claims or explicitly state in the description that such subject matter is not part of the invention (F-IV, 4.3).
Supporters of the description amendment requirement point to Article 84 EPC and Article 69 EPC. Article 84 EPC states that "the claims shall define the matter for which protection is sought and that they shall be clear and concise and be supported by the description". Article 69 EPC states that "the extent of the protection conferred by a European patent or a European patent application shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims". It is argued by description amendment supporters that, if the description is to be used to interpret the claims, the claims can only clearly define the invention if they are not contradicted by the description.
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| A clowder of decisions |
Opponents of the EPO's description amendment requirement argue that the claims by themselves should clearly define the invention without reference to the description, given that it is the claims that define the matter for which protection is sought (Article 84 EPC). Furthermore, making substantial amendments to the description during prosecution also runs the risk of affecting the interpretation of the claims by the national courts.
The decision of the Board of Appeal T 1989/18, published shortly before Christmas 2021, was the first to set the ball rolling on recent Board of Appeal consideration of the description amendment requirement. In T 1989/18, the Board of Appeal considered Article 69 EPC irrelevant to the matter of description amendments, given that it is not concerned with the definition of the subject-matter for which protection is sought, but instead just deals with how the claims should be interpreted (IPKat).
The latest decision (T 3097/19
The decision in T 3097/19 related to an appeal of the Examining Division to refuse EP 12871077.9 for inter alia lack of inventive step (Article 56 EPC). The patent application related to methods of detecting search keywords in video streams. On appeal, the Board accepted the inventiveness of the applicant's auxiliary request and moved on to consider the Examining Division decision to refuse the application because the description had not been adapted to align with the claims. Importantly, the Board of Appeal had no objections to the clarity of the claim language on its own (r. 25).
The Board of Appeal argued that the description was not aligned with the allowed claims in a number of ways. First, the description included a summary of the invention that did not include all of the claimed features. Second, some of the exemplified embodiments of the invention also do not contain all of the claimed features. The invention summary and embodiments were therefore broader than the invention as claimed. Finally, the description also included boilerplate language that the invention was not limited to the exemplified embodiments and that other embodiments could be obtained by making some unspecified changes to the embodiments that were provided. Because of these contradictions between the description and the claims, the Board of Appeal concluded that the scope of protection conferred by the claims was unclear (Article 84 EPC). The auxiliary request was thus refused.
Legal justification of the description amendment requirement
In T 3097/19, the Board of Appeal directly addressed the question of whether there was legal basis for the requiring amendment of the description in line with the claims. The Board of Appeal first construed the introductory clause of Article 84 EPC as requiring the scope of protection conferred by the claims to be "precisely determined" (G 2/88). The Board of Appeal also pointed to Article 69 EPC as providing that the invention for which a patent is granted is defined by the claims in the context of the description. As such, the Board of Appeal concluded:
"if a claim is directed to something which is different than that described to be the invention, then the application for grant is self-contradictory, and it can be questioned for which matter the protection is actually sought. For the scope of protection to be determined precisely, the definition provided by the claims of the matter for which protection is sought must therefore be consistent with the definition of the invention provided by its description".
Final thoughts
In this latest decision therefore, the Board of Appeal expressly disagreed with the conclusions of T 1989/18 and T 1444/20 (and now T 2194/19), and agreed with T 1024/18 and T 2766/17 (r. 34). In order to sustain its position, the Board of Appeal also accepted that there was a tension between its position and the prior case law establishing that the claims should be clear in and of themselves, without reference to the description (e.g. T 454/89). Therefore, regardless of your position on the legal basis or otherwise of the description amendment requirement, there is now a clear disagreement between the Boards of Appeal on this issue and justification for an EBA referral.
Rather worryingly, the Board of Appeal also noted that the current Examination practise of postponing description amendments until the claims are deemed allowable, is also not in line with the requirement for the claims to be aligned with the claims. According to the Board, "strictly speaking" the description should always be amended so as to remain consistent with the claims (r. 26), even during examination. If we thought the current requirements were onerous, just imagine the mess that would be created by having to amend the description every time the claims were amended. We can only pray that the EPO doesn't get any ideas from this observation...
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)
- EPO: "EPO practice confirmed on adaptation of description" (19 July 2022)
- Board of Appeal case law against the description amendment requirement starts to mount up (T 2194/19) (16 Nov 2022)
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Posts
Since it’s been alleged this debacle
ReplyDeleteis due to EPO’s dislike of certain national decisions, such as that by UK Supreme Court, I have re-read.
Whilst courts should be free to make their own decisions, they could perhaps do it in a less antagonistic way. The decision itself and this time stamped gem tell us the EPO examiner “was hopelessly wrong” when raising the added-matter objection.
https://m.youtube.com/watch?t=62m20s&v=y84hUeArgMs&feature=youtu.be
Shame no one can tell us why it was wrong. Under EPO practice, it’s clear cut and surely the applicant couldn’t have possibly wanted to claim that which is not disclosed since doing so would result in an invalid patent (see here http://patentblog.kluweriplaw.com/2022/09/08/english-courts-find-the-formstein-defence-fits-the-mould/). No doubt patentability validity & scope of protection squeezes will be the exception for some, but last I checked, there is no hierarchy in grounds of validity. Why didn’t the the patentee apply to amend their patent during the trial (after all it wouldn’t have broadened the scope according to their own arguments, since the infringement was within the scope apparently) but also explain why it wasn’t added-matter through lack of disclosure. This could have avoided so many problems.
The EPO’s current approach is equally as antagonistic.
Applicants and third parties will suffer as a result of this turf war.
Anon of 19:11, what part of the UK Supreme Court's decision is it that people find so antagonistic? From previous discussions on this topic it seems that the comments on added matter are perceived as particularly unwelcome, but if you look to the decision it simply says this at paragraph 89:
DeleteIt seems to me clear that the reason why the examiner considered that the claims in the patent should be limited to pemetrexed disodium was because the teaching in the specification did not expressly extend to any other anti-folates. It is unnecessary to decide the issue, but, at least as at present advised, I am inclined to think that the examiner was wrong in taking that view. Indeed, in the course of his well-presented argument for Actavis, Mr Alexander QC seemed to accept that Lilly could have expressed its claims more widely than it did (albeit that this was not a point which was carefully explored). However, even if the examiner was right or at least justified in taking the stance that he did, I do not consider that that consideration can have any bearing on the question whether any pemetrexed salts other than pemetrexed disodium should be within the scope of the patent pursuant to the doctrine of equivalents. The whole point of the doctrine is that it entitles a patentee to contend that the scope of protection afforded by the patent extends beyond the ambit of its claims as construed according to normal principles of interpretation.
What is there to find objectionable here? The judge makes it clear that these comments are obiter as far as they concern whether the examiner was right or not; he makes it clear that his provisional view that the examiner was wrong is based on the advice received (thus, it is not definitive - alternative advice could have persuaded him the examiner was right); his opinion on this matter is tentative ("I am inclined to think") rather than definitive; and, in the end, he says that whether the Examiner was right on added matter or not has no bearing on the application of the doctrine of equivalents.
I really struggle to see what is so unacceptable here. Perhaps someone could explain?
PS - the video you linked to should not have any bearing on the matter. Firstly, it's clear that a respected German judge is also inclined to think that the examiner was wrong. Secondly, this is an exchange of views and discussion in a public debate after the fact - not the judgement itself. Thirdly, the "hopelessly wrong" comment is simply personal opinion from Robin Jacob, who was not a member of the Supreme Court and was not involved in any of the lower court decisions, and who had been retired as a judge for a number of years before this discussion.
DeleteSomething went very wrong with the markup there. The parts I intended to highlight were:
Delete"It is unnecessary to decide the issue"
"at least as at present advised, I am inclined to think..."
"this was not a point which was carefully explored"
"even if the examiner was right ... I do not consider that the consideration can have any bearing on the question"
"the whole point of the doctrine"
This seems to be crystal-clear that the judge was hedging his opinion and, in the end, found that the issue of added matter was simply not a key issue for addressing the questions at hand.
@ Anon Y. Mouse,
DeleteWhether as obiter dictum or not, it is not for Lord Neuberger to say how the EPO has to apply Art 123(2). The advice given was necessarily coming from a lawyer from over the Channel and was manifestly incorrect.
The UKSC can decide any DoE it thinks fit. It is not for the EPO to interfere. For the same token it is not for UKSC to interfere with the way the EPO handles Art 123(2).
The examiner had no other possibility than to raise an objection under Art 123(2).
The obiter dictum was absolutely unnecessary.
In this respect it was clearly unacceptable and objectionable.
But, Anon of 10:22, the UKSC was clear that in the end the question of 123(2) and its application by the EPO was irrelevant to the decision.
DeleteHow is this in any way "interfering" with the EPO?
And how is the UKSC's remark - "unacceptable and objectionable" or not - in any way relevant to the EPO's practice regarding description amendments?
I don't see why the UKSC can't express a tentative opinion on Art 123(2) when the UK courts regularly issue decisions on the corresponding provision in the UK patents act. Let's be realistic, you wouldn't be complaining if the UKSC said "It is unnecessary to decide the issue, but, at least as at present advised, I am inclined to think that the examiner was right in taking that view".
Delete@ Anon Y. Mouse,
DeleteThat’s exactly the problem. The UK decision, perhaps inadvertently, recognises the conflict between the 123(2) objection and reference to the prosecution history being allowed if “it would be contrary to the public interest for the contents of the file to be ignored”. It tells us not to conflate disclosure and scope of protection, but is that really what happened.
Firstly, the EPO’s rationale for strict 123(2) compliance is to protect the public. Similar provisions exist in the UK statute. However, rather than address this tension, the decision just disregards 123(2) and suggests it was wrong, even though it’s said to be ultimately irrelevant.
Secondly, there is an argument that the patentee did not intend any other permetrexed salts to infringe since this would have resulted in an invalid patent for violating 123(2). This in turn makes it much easier to answer question 3 in the negative, contrary to the approach taken by a UK court applying the Supreme Court’s test (http://patentblog.kluweriplaw.com/2022/09/08/english-courts-find-the-formstein-defence-fits-the-mould/)
As to a retired judge making these comments in the presence of Supreme Court Judges in front of the UK IP profession, such comments tend to carry weight.
For what it’s worth, I don’t think the EPO’s current GLs are a justified reaction, but I do wonder whether professional courtesy could have avoided what has unfolded. Let’s face it no one likes being told they are “wrong”, especially in absence of the why.
I am an optimistic fool and am hopeful that the UPC will result in the granting and enforcing forums working in tandem, rather than in opposition.
The EPO isn't bound by decisions of national courts. And the obiter comments about Art 123(2) aren't even binding in domestic law in the UK. It beats me why people are so upset about that part of the judgment.
DeletePeople aren't so upset about that part of the judgment. There is one serial blogger that is particularly upset.
DeleteThere is a clear disagreement between three Boards of Appeal on the one side finding that the description does not to have to be adapted and on the other side a large body of case law to the contrary. Whether this justifies a referral to the EBA is not immediately apparent.
ReplyDeleteThere are two ways for a referral. either by the president of the EPO or by a board.
I cannot see that the president will refer a question to the EBA as the adaptation of the description is required in the Guidelines, cf. C-V, 4.5. A referral can thus only come from a Board. I am not so sure that a Board would file a referral on this point.
Even if there is a referral, it can be deemed not admissible, and if admissible, the EBA might simply confirm the existing large body of case law. This has happened in the past, cf. non-disclosed disclaimers or Swiss-type claims.
I very old times there was a communiqué from the EPO stating that for each AR an adapted description should be filed. The established practice is that an adapted description is only required when an agreement on a allowable set of claims has been reached. That is what is foreseen in C-V, 4.3.
I would further like to draw your attention that if the applicant or the proprietor merely files AR without an adapted description, and on top of it, does not turn up at the OP the consequence can be quite drastic.
In the absence of a complete set of documents, either
- The application is rejected T 893/01, T 109/02
- The patent is revoked T 725/00, T 986/00, T 1024/18
There are however decisions in which the board remitted to the first instance in spite of the absence of the
- applicant T 256/10
- proprietor T 484/12
Such a remittal is rather an exception than the rule.
If the boards would not consider it mandatory to adapt the description to the claims, all those decisions would never have been taken.
Where opponents argue that making substantial amendments to the description during prosecution also runs the risk of affecting the interpretation of the claims by the national courts, surely makes the argument for why the description must support the claims, as otherwise it might affect the proper ineterpretation of the claims post grant. In the patent system, we have not yerlt entered the Orwellian age, the description cannot say something is an embodiment when it is not or that something which appears in the independent claims is optional. That some practitioners find it a waste of their precious time to fix these matters, says more about them than the law.
ReplyDeleteAnon of 08:46
DeleteI suggest that you have overlooked the fact that the EPO Boards have frequently told us that Article 69 plays no role in proceedings at the EPO - even in post-grant opposition proceedings - with the possible exception of assessing compliance with Article 123(3) EPC.
As such there is a clear separation between EPO proceedings (reliance on the description under Article 69 EPC generally not allowed) and national proceedings (reliance on the description under Article 69 EPC generally allowed).
With this separation in mind, there is no contradiction in the stance of those who oppose the EPO practice.
A case of the Emperor's new clothes for all those Boards and their supporters who believe there is justifiable legal basis (never mind need) to hack the descripton to be a a mirror image of the claims.
ReplyDeleteCatching sight of the Emperor just after breakfast is making me a little queasy.
"According to the Board, "strictly speaking" the description should always be amended so as to remain consistent with the claims (r. 26)".
ReplyDelete1. OMG!
2. Repeat 1.
With the strict assessment being applied by relying on Article 69 EPC, there is no room for any doctrine of equivalents or such other interpretation of the claims under the Protocol. That being the case, there is no requirement for the Protocol to exist. Except, it does exist, doesn't it?
There is a huge difference between a clear contradiction (description defines an essential technical feature not included in the claims) and the EPO practice. There is also a huge difference between the decisions requiring amendment and the requirements of the Guidelines to include wording such as "not according to the claimed invention". The examining division are forgetting their place, which is to apply the law agreed by the member states (including via Board decisions) and not to write laws that suit to make their comfortable lives even easier.
As a final point, those who wish to threaten applicants with demands for fully adapted descriptions with every claim set filed should remember the huge burden and cost this places on applicants, who are simply working hard at great expense to innovate and obtain the patents to which they are legally entitled under WTO TRIPs.
The EPO spending applicant's money on self-promotion events such as inventor of the year awards when making up their own rules to discourage such inventors, shows its hypocrisy.
Amazing that such a trivial point is heading for the EBA.
ReplyDeleteWhat we need is a case on appeal where the claims per se are unclear - but are rendered clear by the description. If it is mandatory for the description to be in line with the claims because the invention is defined by them jointly (by the claims in the context of the description) then that should surely be OK? If not OK, then that is because the claims alone must define the invention and… the description doesn’t matter…
@ Anon Y. Mouse
ReplyDeleteThe comment on Art 123(2) by Lord Neuberger was unnecessary to decide the issue, only mentioned in an obiter dictum, but it resulted from an advice given to him by a lawyer involved in the matter. The advice was manifestly wrong.
In the pemetrexed case the examiner had no choice but to raise an objection under Art 123(2). He has to follow the Guidelines and the decisions of the EBA. Those are abundantly clear, even if they are not to the liking of many representatives or national judges.
It is not for the EPO to say to a national judge which DoE he should adopt, but it also not for a national judge, even at the UKSC, to decide how an examiner applies Art 123(2).
The obiter dictum was totally unnecessary and thus objectionable.
Anonymous, you still haven't answered my questions.
DeleteRegardless of whether this was "unnecessary and objectionable", how does this in any way amount to "interfering" with the EPO, and how does it in any way have any relevance to the EPO's practice on description amendments?
Given your evasiveness on this point and the repetitive nature of your arguments, I suspect that your identity is not as well hidden as you think it is.
@Anon Y. Mouse
DeleteWhat were your questions?
To my understanding, there was one relating to the obiter dictum in Lord Neuberger’s decision: “Perhaps someone could explain?” An explanation was given why the obiter dictum was "unnecessary and objectionable". What else do you want to hear?
Should you not understand, I repeat: a judge in a national court may have an opinion, even in an obiter dictum, how the EPO has to apply Art 123(2). But this does not mean that the opinion is necessarily correct. This is the more so when the obiter dictum was drafted after an “advice” as this “advice” was manifestly incorrect.
It does not mean that the EPO is not open to any criticism and ignores what national judges have to say. When a comment does not correspond to the practice of the EPO supported by decisions of the EBA/BA it will not be followed.
The same applies to the German judge in the YouTube sequence. We all know that the German Federal Court (BGH) claims to follow the case law of the EBA/BA in matters of Art 123(2). This is correct when deciding during examination, but not correct when deciding on validity. Various solutions have been proposed by the BGH (disclaimer, footnote etc..) but none was accepted by the boards.
I will not say anything about Sir Robin Jacob in the YouTube sequence other than in my opinion, he was “hopelessly wrong”. i personally found the comment and the tone in which it was delivered particularly derogatory for the examiner who only did his job. Sir Robin Jacob also was apparently not aware of the case law of the EBA in added matter.
There were no other questions in you comment.
For the rest, there are two schools of thought about amendments to the description, and constantly repeating them is not the most efficient way to deal with the question.
As being yourself anonymous, you should in any case refrain from any insinuations about the possible identity of an anonymous commenter.
Apparently you missed these questions which were present in my comments of 10:59 and 12:06 yesterday, so I'll repeat them:
Delete"Regardless of whether this was "unnecessary and objectionable", how does this in any way amount to "interfering" with the EPO, and how does it in any way have any relevance to the EPO's practice on description amendments?"
Dear patently,
ReplyDeleteIt is interesting to read that “the claims alone must define the invention”. When I read Art 84, first sentence: “the claims shall define the matter for which protection is sought”. Did I miss something?
The description discloses the invention and its components which are then transformed in features of a claim.
It is thus necessary that the description is adapted to the claims so that the latter are “supported by the description”, cf. Art 84, end of the 2d sentence.
Dear not-so-"Anonymous" of 11:35:
DeleteYou say that the requirement for amendment flows from the "supported by the description" requirement.
But in T 3097/19 the Board explicitly tied the amendment requirement to the "clarity" requirement.
So in this latest decision the Board has reached the same conclusion as you, but based on completely different reasons to the Boards in the previous line of "pro-amendment" case law (at least where that case law has bothered to provide reasons).
Is it support (as you suggest) or clarity (as T 3097/19 suggests) that justifies this requirement?
Doesn't the disagreement between the Boards not only whether amendment is needed at all, but also why amendment is needed, add weight to the calls for the Enlarged Board to clarify this?
"It is thus necessary that the description is adapted to the claims so that the latter are “supported by the description”, cf. Art 84, end of the 2d sentence."
DeleteWhat? How does that follow?
My description has A+B and A+C. My original claim was A, but I had to amend claim 1 during prosecution to A+B.
Now, my claim 1 is supported by the description. Deleting A+C would not "give rise" to such support: the claim was supported from the outset by the originally filed description. I cannot see how the "support" requirement can possibly give rise to the need to delete subject-matter from the description. Support is not generated through this process.
Again, Art. 84 is a requirement of the claims. Any other reading is bizarre. It does not say "only the allowed claims must be supported", or "the description must not support more than the claims", or any of these other imaginary variations.
Dear SG, the prevailing view inside the EPO seems to be that i) if a description includes anything that "contradicts" the allowable claim or is "inconsistent" with the allowable claim then it is giving the claim less than 100% "support" and ii) anything less than 100% is just not acceptable. They have a more expansive yet stricter understanding of "support" than you do, it seems.
DeleteOne wonders whether some Examiners have long resented being lectured, "kicked around" or bullied by assertive attorney prosecutors but now find the requirement to conform the description an exquisite boot on their other foot, to kick back very satisfyingly against such zealous prosecutors.
For me, the interesting point is what does "adapted" mean. For example, is it possible, for example, to retain in an "adapted" description a disclosure of your A+C feature combination without having to amend the description by the addition of wording (corresponding to further teaching to the skilled reader), to wit that A+C is NOT a part of "the invention".
That's the thing Max, I'm merely using their own definition of "support". I'm playing the game on their terms, but they don't seem to understand it properly themselves.
DeleteThe EPO explains what they mean by "support" right here: https://www.epo.org/law-practice/legal-texts/html/guidelines/e/f_iv_6_1.htm
It says "The claims must be supported by the description. This means that there must be a basis in the description for the subject-matter of every claim and that the scope of the claims must not be broader than is justified by the extent of the description and drawings and also the contribution to the art (see T 409/91). Regarding the support of dependent claims by the description, see F‑IV, 6.6."
See how this definition is again set out solely in terms of requirements for The Claims? There must be basis in the description for the subject-matter of every CLAIM (tick, for my example above), and the CLAIMS must not be broader than that justified by the description (again, tick for my example above).
Anyway, I think I'm moreorless preaching to the choir here (or at least wasting my time explaining to someone who already understands the issue). This issue just needs to be referred for a decision to finally sort it out. Could go either way really, but I would hope that a rigorous examination of the so-called legal basis would lead the board to the conclusion that the EPO's current practice doesn't really have one.
@ Max Drei,
DeleteA reply to SG’s and your question depends on what the situation is at the end of examination or opposition.
If the claim for A is not any longer patentable, then the applicant can limit the claim either A+B or A+C as both options were originally disclosed.
If A+C is as well manifestly not patentable, A+C has to be deleted or marked as not representing the claimed invention. There is no doubt about this.
If it is clear that a claim with A+B is patentable, the claimed invention boils down to A+B and not A+C.
If it is not sure whether A+C is patentable, leaving A+C in the description poses a problem for the ED: it has to check whether it is patentable as it manifestly does not fall under the claimed invention A+B.
In such a situation, it is easier for the ED to simply require that A+C is to be deleted or marked as not being part of the invention as claimed. The second solution is way better as it can allow in later proceedings to save the patent with A+C. But A+C cannot stay in the description of the granted patent just like this.
In order to avoid discussions with the representative, some ED simply used to turn a blind eye to the adaptation of the description either by their own volition or following oral instructions. Time allocated and spent on the adaptation of the description could be saved and the production could be increased. This behaviour was manifestly spotted by the quality department and considered as an inconsistency which should not occur. This is the prime reason for tightening the screws about adaptation of the description.
That some representatives can be awkward is a matter of fact. The same also applies to some examiners or board members. I would thus not necessarily think of tit for tat situation. There are sighs of relief on either side when certain representatives or certain examiners or even board members retire. But this is life's rich tapestry.
"If it is not sure whether A+C is patentable, leaving A+C in the description poses a problem for the ED: it has to check whether it is patentable as it manifestly does not fall under the claimed invention A+B."
DeleteSo if embodiment A+B is claimed the ED should also check whether embodiment A+C only present in the description is patentable? Are you sure?
Dear anonymous of Monday, 28 November 2022 at 09:57,
ReplyDeleteClaiming that “there is no room for any doctrine of equivalents or such other interpretation of the claims under the Protocol” is manifestly not correct. The best proof is that there are different DoE in different contracting states.
Even Lord Neuberger defined its own DoE so that the disastrous effect of the previous “Improver” decision could be set aside.
Applicants are certainly working hard at great expense to innovate and obtain the patents to which they are legally entitled under WTO TRIPs. This does however not mean that the legal requirements imposed by the various legislations are simply ignored by reference to TRIPs.
When following this idea it would then be best to abolish any examination and resort to a simple declarative patent system. In such a situation nothing has to be amended, neither the originally filed claims nor the description. The problem is that the proprietor will discover his patent on the day of the infringement or when the validity is challenged.
As a compromise, a documentary search could be carried out and the result of the search could be made public.
With the EPC as it is, the examining divisions are not forgetting their place, and they apply the law agreed by the member states (including via Board decisions) and they do anything but write laws that suit to make their lives even easier. Examining and opposition divisions act according the Guidelines which are what they are, but cannot be changed just because some boards think they are more intelligent and know better what is in the EPC than the vast majority of the boards.
If you think that the life of examiners is “comfortable” why don’t you apply to a job of examiner? I take bets that you would quickly become disillusioned. Life at the EPO has never been comfortable and in the recent years even less.
Such type of comments is as unnecessary as the obiter dictum of Lord Neuberger in the pemetrexed case.
Dear Anonymous Thomas,
DeleteI did not say there was no room for any doctrine of equivalents. My words should be read in the context of the preceding and subsequent sentences. Add "In the event that the current ridiculous application of the guidelines on description amendments are deemed infallible,....." and my position may be clearer.
"When following this idea it would then be best to abolish any examination and resort to a simple declarative patent system." The United States and elsewhere manage to conduct a thorough examination system without the requirement to hack the description.
"Life at the EPO has never been comfortable and in the recent years even less." Laughable. Benefits and working conditions second to none. Try living off dry sandwiches from a corner shop every day in place of the Ritz.
I am in agreement with the EPO examiner in the pemetrexed case, in that the added matter objection was reasonably been made. However, the attorney should have pushed for "pemetrexed" alone and took the case to appeal. "Pemetrexed" has full basis in the application as filed. The Supreme Court should maybe have commented on both aspects - ultimately I lay blame at the attorney's door. However, the UK Supreme Court has every right to comment, obiter or otherwise on patent examination. It would be a sign that the EPO is out of control if it believes it is beyond comment or criticism from national courts. Do you speak formally for the EPO?
“Benefits and working conditions second to none.” Hahahaha. I almost fell from the chair when I read that. If that’s the case, please apply yourself to enter the Ritz. The EPO will be very happy to recruit you as there are barely any qualified candidates applying nowadays. Please join, EPOnia’s lawless working space is waiting for you!
DeleteA chair? Wow, count me in.
DeleteList your benefits - all of them, including salary (after taxes), pension, working hours, etc, and we can all see how hard done by you are.
Is that what this is about? Hard done by EPO examiners working to rule and not willing to read long descriptions with big words?
What an absolute s***show.
ReplyDeleteThe best outcome would be for a referral to the EBA and for the Enlarged Board to ditch all requirements to amend the description (except as required by Rule 42 EPC) and to state that "supported" in Article 84 means "relating to a reasonable generalisation from matter disclosed in the description" and no more. As such, any Article 84 EPC issue would be addressed by amending the claims and not by amending the description. We can then stop this expensive charade of confusing description amendments, people can focus on the claims to determine the scope of protection, and the courts can adjudicate where these is a difference of opinion between the infringer and the patentee over the scope of the claims in the minority of cases where it is genuinely unclear how to interpret the claims.
@ Anonymous of Monday, 28 November 2022 at 15:02:00
ReplyDeleteSince you have cited my name, I will reply in my name and inform you that it goes a bit far to insinuate that some comments are from me when they have been posted in an anonymous manner. This seems actually to be a constant in this blog and it is even approved and published.
I want to make clear that I did not write the comment at stake, although I can follow it and to a large part endorse it.
In any case, my position on the adaptation of the description is well known and all what I have seen about this topic here and on other blogs does not induce me to change my position. You have yours, I have mine, and that’s it. At least I have the courage of my opinions. You dwell in anonymity.
I do however agree with you that the “United States manage to conduct a thorough examination system without the requirement to hack the description”. The downside of this liberal attitude towards the description is that there exists something called “file wrapper estoppel”. You do not want to adapt the description but at the same time you do not want to have the file history taken into account. Let me just say you cannot have your cake and eat it. But this say should not be a surprise for you.
Before you claim that the situation at the EPO is so honky dory as you make out, I would suggest you to apply at the EPO. Would you decide to leave your country of origin with wife and kids, sever all ties with the health insurance and pension system in the UK for a mere 5 year contract? A life time appointment is only obtainable after two 5 years contracts! Are you prepared to work in more than your mother tongue? As long as you do not, decency wants you not to come up with such derogatory comments.
I can reassure you, I have never spoken formally or informally for the EPO. It happens that I spent a large number of years there, actually from its opening. By now I have been 50+ years in patents. I am allowed to have an opinion on decisions of the boards as any other person. That it does not correspond to yours is irrelevant to me.
US file wrapper estoppel is a separate issue, with overlap possible. It is also a good thing when it comes to having a doctrine of equivalents.
DeletePrevious posts on this blog in respect of other appeal decisions have raised specific examples demonstrating real problems with the EPO approach. Unfortunately, once others have thrown their opinions into the ring, the responses to real issues fail to appear. Until the next appeal report when the same opinions are thrown into the ring. And onwards we march.....
Anonymity is a problem for you? Retired, yes? A game we play on blogs is guessing which anonymous comments you have written in support of your non-anonymous posts.
The "apply to the EPO" argument is as weak as it gets. For the record, I have worked away from home many years, including abroad, while leaving my wife and young children at home. Through necessity to feed and house them, not through a desire to travel the world. I have never had anything given to me on a plate and have had to fight against discrimination.
And for the record, what we do is much easier than working own a coalmine.
The continued attempts by you-know-who to pretend that he's not writing pro-EPO comments under the guise of anonymity are, frankly, laughable. Even if it weren't for the clearly identifiable writing style, there are other total giveaways in the continued vehement objections to anonymity (while clearly using it himself!), the repetition of the same talking points time and time again without the slightest attempt to discuss in good faith, plus the increasing frequency of snide, totally inappropriate remarks based on nationality (here we have a derogatory reference to "lawyers over the Channel").
DeleteIt's odd that the Board of Appeal did not feel the need to follow the Guidelines for Examination with respect to "Orders on remittal". The Guidelines specifically anticipate this scenario and indicate that the Board of Appeal may remit a case to the Examining Division for description amendments when a claim is otherwise allowable (E-XII, 9.1 (b)). No reasoning was given as to why the Board did not consider it suitable in this case.
ReplyDeleteDear Anonymous of Tuesday, 29 November 2022 at 10:46:00,
DeleteThe boards have stressed at numerous occasions that they are not bound by the Guidelines and are in principle only bound by the EPC and any interpretation (dynamic or not) given by the EBA. They are even allowed to criticise the Guidelines, cf. Art 20(2) RPBA20.
You actually raise an interesting question. Following a remittal after appeal on opposition it can happen that the adaptation of the description ends up in a long and tedious exercise.
In such a situation, the opponent wants a certain interpretation of features of the claims or of the prior art added in the description. The opponent often wants also a lot of things excised from the description (but not when in the role of proprietor…). Conversely, the proprietor opposes all those moves.
It is clear that both parties want to prepare future litigation. It is however not the role of the EPO to give ammunition to one or the other party for future actions before national courts.
All this could be avoided if the boards would not decide just on the claims but also on the adaptation of the description when they find an allowable set of claims. Art 111(1), second sentence, is interpreted in a restrictive way by the boards. For them “any power within the competence” goes as far as ending with a partial decision limited to the claims.
When a board sets aside a decision of an ED/OD, for example on Art 54, 83 or 123(2), it is legitimate to remit for further prosecution as some other fundamental aspects of patentability might not have been discussed yet. This should however not be the case when adapting the description.
To avoid such a remittal, necessarily giving extra work to first instance departments, it would be better that the boards decide on a complete set of documents. This would mean that the proprietor has to file an adapted description before the boards.
After all, the boards have decided in the past that in presence of an allowable set of claims but in the absence of the proprietor the application is refused or the patent is revoked. Some boards have even considered that an allowable set of claims without an adapted description in presence of the applicant/proprietor cannot lead to a successful appeal.
This touches upon another problem which has been aggravated by the RPBA20: the front loading of much work to first instance departments. When the description has not been adapted, then there is even a back loading.
The net effect for the boards is that they can come up with a good production/productivity. It was a political decision of the AC to lower the backlog and the treatment time of the boards. The first instance departments have no choice but to accept this.
Well well. So now we read that:
Delete"It is however not the role of the EPO to give ammunition to one or the other party for future actions before national courts."
I can't help thinking that insistence on strict "conformity" by amendment of the description during prosecution at the EPO is doing exactly that. Every amendment is another piece of "ammunition". Better to leave the description unchanged, to memorialise what Applicant declared on the filing date. After all, in a "First to File" system, such memorialisation is absolutely fundamental to i) validity of the claims and ii) priority contests between rival Applicants. Let's for example watch the drama of the monumentally expensive CRISPR Cas 9 oppositions at the EPO unfold, and see how much "ammunition" the prosecution amendments have provided.
Dear Max Drei,
DeleteAlthough relating to the minutes of OP, I would like to draw your attention to T 996/18, T 319/19, T 3272/19 and T 552/18.
What is said here by the parties in respect to the minutes translates more often than you might think in a heavy dispute between proprietor and opponent when it comes to the adaptation of the description. What they could not get into the minutes comes up when the description has to be adapted.
I have witnessed impressive battles on the adaptation of the description after remittal which went on for nearly a whole day. At the end of the day, the OD had to decide what it thought was best taking into account the legal framework and the interests of the parties.
During such battles on the adaptation of the description, the aim of both parties was abundantly clear: get a better position in view of later litigation. It is clear that a decision of the EPO can possibly have an influence on later battles, but this is irrelevant when it comes to take a decision according to the legal requirements of the EPC.
You might insist and say that the description should be left untouched. Although I have a certain sympathy for this point of view, it is not possible to ignore the way the vast majority of the boards interpret the EPC and especially Art 84. And examiners are bound by the Guidelines. Only T or j decisions quoted in the Guidelines are binding for departments of first instance.
I also invite you to look at T 1969/18 published today. The board acknowledged that adaptation of the description and/or drawings of the patent in suit requires due care and may require a considerable amount of time for evaluating and arguing by the proprietor, the opponent and the EPO.
It this thus costly, but it is necessary. The board added that the opponent must be given sufficient time to formulate any objections and the proprietor must have sufficient opportunity to respond to such objections.
What applies in opposition applies mutatis mutandis in examination.
Daniel, do you really mean T1969/18? Unless I'm very much mistaken, that one was published ages ago, not yesterday.
DeleteOf course, in our discussions, there is a difference between what the law "is" and what it might be, instead, if the EBA were to wind back the clock. But every time you defend the status quo, you seem to dig yourself deeper into the problems with it.
As you say, in a case being litigated through the courts, argument at the EPO about whether the description is in "conformity" with the claims being litigated can drag on for hours, possibly even days. And all for what? You think that EPO insistence on strict conformity somehow makes life easier for the courts, reduces the likelihood of the courts doing one party or the other an injustice. I'm not a litigator but I feel confident that if the courts were given instead the issued claims and the originally filed description and drawings, they could much more easily and efficiently decide i) what is the scope of protection ii) whether the claim is "supported" by the description and iii) whether matter was added during prosecution at the EPO.
The UPC is going to be paradise for the big litigation firms. Let's not give them any more opportunities to multiply the "issues" between the litigating parties, and blow every piece of litigation up into a mammoth undertaking which only the corporate global titans can contemplate.
Dear Max Drei,
DeleteI apologise for the typo. It is T 1968/18 published today.
https://www.epo.org/law-practice/case-law-appeals/recent/t181968eu1.html
I understand your position and the fears going with it, but life is as it is and we might disagree, but we have to accept it.
I do not have the feeling that I dig myself deeper into the problems with it.
You need not accept what I say, and here again I understand your position.
I am just reporting my experience in the matter is and how I see the situation on the basis of the case law.
I agree with you that the UPC is going to be paradise for the big litigation firms. On the other hand, I think that the big litigation firms will blow every piece of litigation up into a mammoth undertaking which only the corporate global titans can contemplate, irrespective of what the EPO might have done in matters of description. I still have not seen a patent revoked because of amendments in the description.
To me, the problem is more the overall quality of the patents granted by the EPO. A survey over three quarters of the year shows that, after appeal, barely 10% of oppositions are rejected. The rest can be roughly divided between revocation and maintenance in amended form.
The number of cases in which prior art is found which was missed, for whatever reason, when carrying out the original search is astounding. Extrapolating to all the granted patents, I am not sure that all patent holders will be successful at the UPC in their infringement cases. Validity will be a big problem in the future.
The addition in T 3097/19 of a requirement for a « precise determination » of the extent of protection based on the 1st sentence of Art 84 is more than a « dynamic » interpretation of the EPC - I would rather call it « creative » ! The Board seems to apply to the interpretation of the EPC the principle of purposive construction for the assessment of claim scope, so dear to UK courts.
ReplyDeleteThis shifts the basis for the requirement to adapt the description so as to remove inconsistencies with the claims from the initial reliance on the « support » requirement of Art 84 to a brand new requirement. Which suggests the Board of T 3097/19 was doubtful regarding the value of relying on the support requirement.
If confirmed, this purposive construction approach would likely generate undesirable uncertainties as to the interpretation of EPC specific provisions and as to the admissible approaches to interpretation. It is of note in this respect that the Board accepts (Reason 36) that its approach may be « in tension « with the case law of the BOAs.
The requirement for a « precise determination » of the extent of protection is in realistic terms out of reach. With claim wording having apparently clear meaning, thus meeting the clarity requirement, there are always ambiguities which remain, even with very simple words, as apparent when a national court assesses the scope of claims in infringement proceedings.
A case very much in point here is the UK decision L’Oréal vs RN Ventures [2018] EWHC 173 (Pat) relating to a skin treatment device : « 62. Mr Moody-Stuart suggested that Mr Herbert was applying an “overly precise understanding of the terms, derived from his degree rather than coloured by the experience of the skilled addressee at the time”. I agree with this submission. »
If the « precise determination » of the extent of protection is to become the new mantra of Art 84, chances are the adaptations required by the EDs will increasingly fall prey to the 123(2) trap, especially in view of the very strict approach of the EPO of Art 123(2) and of the jurisprudence of national courts which follow the same approach.
A striking illustration is the depiction of the term « substantially » in a claim as unclear, pursuant to Guideline F-IV 4.7, and its deletion by an ED as part of a 71(3) notification. This is a type of situation I recently found in a granted patent. For example, the term « substantially vertical » or « substantially circular » in a claim is replaced by the ED by « vertical » or « circular ». This comes down to selecting the lower or upper limit of a range of values. If the description does not explicitly disclose the selection of (strictly) « vertical » or « circular », the selection can arguably be depicted as « singling out » a value within the range, and inadmissible under Art 123(2).
to be continued
Part 2
ReplyDeleteWhile this is not linked to the removal of inconsistencies, it is worth noting that the mention of a prior art document may raise a new matter issue (T 471/20 discussed in IPKat post of 5 January 2022). This happened to be the case in UK Court of Appeal, Cartonneries de Thulin v CTP White Knight [2001] RPC 6, cited in the UK Manual of Patent Practice (MPP) section 76.14 : « As noted in the MPP, this decision held the patent invalid for new matter resulting from the mention of a prior art document. »
This decision is relevant in that it incorporates the test to assess new matter set out in section 76.06 of the MPP, which states that both deletions and additions may be new matter. The test boils down to whether the amendment alters the construction of the claims. Deletions of entire passages are of particular concern.
There is an utter disproportion in the current practice of the EPO between on the one hand, the EPO’s overemphasis over removing inconsistencies, which has dubious basis in Art 84, judging from the divide between BOAs and the varying arguments of the BOAs which support the EPO practice, and the benefits of which are nebulous (assuming the EPO has no business interfering with national courts’ asssessment), and on the other hand, the major risk for a patentee of a court striking down the patent for new matter.
It would be indeed an odd situation if an applicant challenges the ED’s requirement to remove an inconsistency, or an amendment carried out by the ED as part of a 71(3) notification, by arguing that it would be inadmissible new matter. Wouldn’t it be the world upside down ?
A simple suggestion would be to complement the Guidelines dealing with Art 84, particularly GL F-IV 4.3 and GL F-IV 4.7.2 calling for the deletion of « substantially », by a robust warning that the ED must make sure that their requirement to amend the description and/or the claims will not raise Art 123(2) issues. In any event, the EDs should exercise strong restraint in their requirements for amendments to the description.
I would like to draw the attention of the readers on T 1968/18 published on 30.11.2022.
ReplyDeleteIn this decision the opponent requested that the case should not be remitted to the OD in order to adapt the description.
The board agreed with the proprietor and remitted to the OD. I refer to Point 8 of the reasons.
It is also interesting to look at T 977/94 quoted in T 1968/18.
https://www.epo.org/law-practice/case-law-appeals/recent/t181968eu1.html
Daniel, thanks for T1968/18. Reading Point 8.2 of the Reasons, my jaw drops in amazement. Frankly, I see this text as an open invitation to the interested circles to put in issue the established practice of requiring adaptation to achieve strict conformity.
DeleteWishful thinking, you will tell me. That may be, but I see no sign that the level of contentiousness of this "adaptation" issue is dying away. Quite the contrary, I would say.
T 977/94, you say. I note that it is in French and it seems to be the decision on which the entire edifice of "conforming" the description is founded. That's a Decision from, like, 30 years ago. Not every line of jurisprudence withstands the test of time. In recent years, the UK Supreme Court, for example, has retreated, several times, from lines of English case law on patent infringement and validity which it had always thought to be be self-evidently axiomatic and unassailable.
I understand that you are amazed by the reasons brought forward in T 1968/18, but they are there. For me, the reference to T 977/94 is anything but innocent.
Deleteit simply shows that there is a long trail of decisions on the adaptation of the description. I do not think that three decisions to the contrary will change a lot.
I agree with you that case law may change, but I have difficulties in seeing it here.
interested circles may put in issue the established practice of requiring adaptation of the description, and it was already done at SACEPO level, but I do not think that the EPO will budge.
T 977/94 is not relevant, since it confirms that what it claimed should also be in the description. In this case, everyone agrees that the description has to be amended by adding the claimed features. To do this, usually applicants copy and paste the initial claims at the end of the description, a practice which is (was?) allowed by the EPO.
DeleteYou must have had a very cursive look at T 977/94.
DeleteDear Patent Robot,
You must have had a very cursive look at T 977/94. I took the bother to look again at the decision. I also compared the description of the patent as granted with the description amended following the limitation of the claims.
I could not find in this decision what you claim, i.e. “that what it claimed should also be in the description. In this case, everyone agrees that the description has to be amended by adding the claimed features”.
Although the statement is not to be found in the decision, I can agree with it. it is still possible to add the claims to the description, provided the claims have been filed with the description. If the claims have not been filed with the description adding the claims to the description is only possible if they do not infringe Art 123(2).
The patent has been maintained according to an AR filed during the OP. Claim 1 of this AR consists of claims 1+5 (particles of spheroidal shape represent more than 30% by volume of the soldering components of the coating) + 6 (the organic binder is present in the coating in a proportion comprised between 0.5 and 1 .5% by weight) as granted.
In the description of the patent as granted, col, 5, l. 16-19 one reads: “Preferably, the spheroidal particles should represent at least 30% by volume of the total solder products.
In the description of the patent as granted, col, 5, l. 32-34 one reads: “A proportion between 0.5 and 1.5% by weight, based on the total coating is suitable”.
In the new patent specification, col. 4, l. 49-51 one reads: “Spheroidal particles must make up at least 30% by volume of the total weld product”.
In the new patent specification, col. 4, l. 49-51 one reads: “A proportion of between 0.5 and 1.5% by weight, based on the total coating, is required.”
We are thus quite far from merely adding the claims into the description. What was considered facultative in the description of the patent as granted has become mandatory in the new specification.
The prior art, a public prior use, revealed during the opposition has been added at the beginning of the description. It was due to this public prior use that the claims had to be limited.
This is what I call adapting the description to the claims. This goes much further than what you claim
Dear DXThomas,
DeleteThe example of T 977/94 is not relevant, as it refers to a feature of one embodiment disclosed in the description which does not correspond to the same feature of the same embodiment specified in the claims.
In this case I agree with you that the description must be amended.
The problem is that the EPO has now started to consider as an "inconsistency" also embodiments of the description which do not literally fall within the scope of the claims.
Unclaimed subject-matter in the description does not violate Art. 84 (clarity), as the subject-matter does not fall within the scope of the claims by definition, so it cannot interfere with their clarity, nor Art. 84 (support), as unclaimed subject-matter cannot (entirely) support the claims by definition. Of course, the description should always comprise an embodiment supporting the claims.
Please consider that applicants and their representatives are not against any amendment of the description. They contest the EPO when it forces applicants to excise unclaimed subject-matter from the description.
Just came across this decision https://eplaw.org/nl-pharmathen-v-novartis-appeal/. Just went into the EPO register, as I was curious to see if the EPO examiner required amendments of the specification to delete any embodiments that were not encompassed by the claims. As you can guess, it was not the case.
ReplyDeleteDespite having a broader specification than what it seems to be encompassed by the claims, based on the reported decision, the Dutch Court of Appeal did not seem to have any issue to understand the scope of the claim ! Maybe equivalent should not exist as well, as it was suggested in one of these comments….
Someone should really look at the Travaux Preparatoires, where clearly the meaning supported is to be understood as finding a basis. Once this is done, someone should explain why today’s guideline and this latest decision is not in line with the practices of the 80s, 90s, 2000s and 2010s.
Why some board of Appeal or the EPO is trying to fix an issue that is not in their hands.
I agree with what has been said previously Art 84 is not here to purge the patent specification. If it was why stopping to embodiments and not deleting all the background section how is that supporting the claim art 84?
You must be the same Anonymous as the one having posted the last entry on my blog. The text is identical.
DeleteThe reply is identical here. Most of it is already in my reply above.
Some amendments were carried out in the general presentation of the invention and the examiner deleted all statements of “incorporated by reference”.
For the rest he simply replaced when it was question of “the invention” by the “disclosure also relates to”. This is exactly what happened in the famous pemetrexed case.
This is to me the reason why the EPO decided to tighten the screws with respect of adaptation of the description.
Taking pretext of a case in which the Guidelines were not followed for justifying that the description should not be adapted is done in bad faith and hence no justification for your position.
I might just add that this latest decision is absolutely in line with the practices of the 80s, 90s, 2000s and 2010s. Just have a look at T 977/94 and compare the description as granted and the description of the patent as amended.
It seems you are not willing to recognize all the shortcomings of these decisions. It is a fact there is not legal basis for it (guidelines are no legal basis and you know this). The reason is simple at the origin the requirement that you advocate for was not needed ! No need to further comment on these type of decisions as you are not willing to see what sticks out like a sore thumb.
DeleteWell this is a new one, DXT! Mentioning a case that you happen to disagree with, and exploring its consequences, is “bad faith”! Now we’ve really heard it all.
DeleteTo the anonymous of Friday, 2 December 2022 at 08:13:00 and at 08:54:00,
DeleteI have nothing to add or retire from my previous statements. I maintain that taking pretext of case in which the examiner did not follow the Guidelines and did not insist for a proper adaptation of the description cannot have been done in good faith. I am sure you might find more examples of this type, it remains that this is not what should be done by EDs.
This is the reason why in matters of adaptation the description screws have been tightened by the EPO. Unless there is a decision of the EBA, the situation is as it is.
I can agree with you that the Guidelines are no legal basis as such, but they have the aim to assure that all users are on a par. Every party knows what they can expect.
There decisions which have not been taken over in the Guidelines and there is nothing wrong about this. Two examples:
1) the three point-test, ex essentiality text;
2) a request for OP is not considered as accomplishment of the omitted act in case of further processing.
All decisions of the EBA are taken into account in the Guidelines as those are not only binding for first instance departments but also for the BA.
You might have a sore thumb, I do not.
I hope we can at least agree that we disagree. You are entitled to your point of view which I understand but cannot follow and vice-versa.
We should indeed leave it at this.
The situation is getting awkward. To begin with, the current practice as set out in the last version of the Guidelines has relied on the support condition of Art 84, which appears inconsistent with a major objective of the support condition, which is to act as a bulwark against the introduction of new matter when claims are amended. Since the assessment of new matter refers to the application as filed, it appears illogical for the EPO to require changes to the description as filed, especially when considering the very strict approach of the EPO to new matter.
ReplyDeleteNow, T 3097/19 drops the initial argument and shifts the basis of the adaptation requirement to a creative interpretation of the 1st sentence of Art 84. Creative indeed, but is it consistent with Art 84 and the case law of the BOAs ?
Well, not quite.
First, Art 84 requires the claims to be « concise ». This requirement entails the use of broad, functional language in the claims, which seems at loggerheads with the « precise determination of the extent of protection » requirement by T 3097/19.
Second, when looking at T 977/94 cited in T 1968/18 concerning remittal to the OD for adaptation of the description, reported by Mr Thomas on his blog, we find an interpretation of the 1st sentence of Art 84 which calls for including all essential features in the claims (let’s say « completeness »). Quote from Reason 2 : « La revendication 1, n'exposant pas cette caractéristique essentielle, ne satisfait pas à la condition posée à l'article 84 CBE, première phrase, puisque ladite revendication ne définit pas de façon complète l'objet de la protection demandée par l'indication de toutes ses caractéristiques essentielles. » (Claim 1, as it does not mention this essential feature, does not meet the condition set forth in article 84 EPC, since said claim does not define in a complete manner the object of the protection applied for by mentioning of all its essential features).
This interpretation makes sense and it is quite different from that set out in T 3097/19.
In addition, what we find as to the current practice of ED is that there are frequent cases in which the ED makes substantial amendments to the description as part of the 71(3) notification without any prior discussion with the applicant and without solid justification for each amendment.
So, the thread is not yet exhausted. I'm grateful to the Anonymous of Sunday December 4th, for reminding us what T977/94 said. It reminds me of Section 32(1)(i) of the UK Patents Act of 1949 (the twelve grounds of revocation). Here is the text of the ninth ground:
ReplyDelete"i)that the scope of any claim of the complete specification is not sufficiently and clearly defined or that any claim of the complete specification is not fairly based on the matter disclosed in the specification"
You might see echoes of that ground of revocation in the EPO's Art 84 and you might see echoes also in T977/94.
I think that Art 84 is there to ensure that i) all essential features are recited in the claim and ii) the description provides "fair basis" (ie "support") for the full width of the claim.
No more, and no less, than that.
@MaxDrei
ReplyDeleteSorry for not posting the Anonymous comment of 4 December under my name.
I fully agree.
I will add something. The 1st sentence of Art 84 is explained in GL F-IV 4.3 (ii) as requiring for the claim to mention all essential features. This is established case law, as clear from the reference to T 32/82 (see Reason 15) of 1984. T 977/94 merely restates this interpretation. This applies as you point out to the claims, not to the description.
It is astounding that T 3097/19 gives an entirely different interpretation of the 1st sentence of Art 84, without any reasons. Is it not mandatory for a BOA to provide solid reasons when it departs from the established case law and the Guidelines ? Meantime, as I said before, T 3097/19 undermines the reliance on the support condition of Art 84 for requiring the removal of inconsistencies from the description.
Dear Anonymous of Sunday, 4 December 2022 at 14:45:00 and dear Max Drei,
ReplyDeleteWhat T 977/94 says is anything but a scoop. It starts by saying that Art 84 requires that all essential features should be in a claim.
I would think that this is nothing new under the sun and has been pursued by the boards from day 1, with the addition that the claims have to be clear on their own without recourse to the description.
It is clear that those essential features have to be in the description as filed. In the contrary, we would end up with a problem under Art 83 or 123(2). The claims have to find “support” in the description as filed, but this has nothing to do with the “support” which is mentioned in the last sentence of Art 84. From time to time boards even employ the word “support in the original disclosure” when dealing with Art 123(2).
If a feature from the description or from a dependent claim is incorporated in an independent claim, that feature becomes therewith essential. It can therefore not be left as optional in the description. This is the “support” which is at stake when it comes to the last part of Art 84.
When in T 977/84 speaks about adaptation of the description, for instance in the catchword, it refers manifestly to the “support” under Art 84 and not under Art 123(2).
That ED indulge in making adaptations of the description in the communication under R 71(3) without any prior discussion with the applicant and without solid justification for each amendment is a different matter.
This practice does not correspond to what is said in the Guidelines. Any substantial amendment in the description, and even more in the claims, without any discussion is not correct and does not have to be accepted by the applicant. But this again is not a scoop.
I would allow myself to classify this type of behaviour as an attempt to twist the arm of the applicant. In view of a grant, the examiner hopes that the applicant might be prone to “swallow” such amendments.
I would go as far as such an intention to grant is not based on the text submitted by the applicant. If an applicant accepts and thus approves these amendments he cannot complain later. I have thus full understanding if applicants refuse such a brute way of doing.
But adaptation of the description under Art 84, last sentence cannot be refused, at least for the majority of the boards.
Daniel, we always end up at the same point. You say:
ReplyDelete"If a feature from the description or from a dependent claim is incorporated in an independent claim, that feature becomes therewith essential. It can therefore not be left as optional in the description. This is the “support” which is at stake when it comes to the last part of Art 84."
and everybody outside the EPO replies: Why not? Every other Patent Office operates under a statute which requires that the claims are supported by the description but no other Patent Office makes EPO-style strict "conformity" a condition of allowance.
It is "only" the case law of the EPO that imposes conformity. If the EPO President decides that strict conformity has had its day, procures from EPO management a legal opinion to suit his purposes, and then refers the matter to an obedient EBA, who knows what the outcome will be.
Dear Max Drei,
ReplyDeleteIt is a well-established practice and case law that the features in an independent claim are all considered essential. This goes back to the early days of the EPO! If essential features are not in the independent claim an independent claim lack clarity as it is not supported by the description.
If a feature is contained in an independent claim but only stated as being optional, then the scope of the claim is ill-defined as the claim and the description give contradictory information. I do not understand why this could be a problem.
In a further litigation the proprietor could claim that in spite of some features being mentioned in an independent claim, they can actually be ignored as the description says so. Would you like to be confronted with this type of argumentation?
Whether the features are considered essential in the description or not, or if the independent claim is limited by feature from the description or from a dependent claim does not change the facts.
This is nothing new under the sun and I am surprised that you query such a fundamental issue.
I will leave it at this as we are turning in circles!