Board of Appeal case law against the description amendment requirement starts to mount up (T 2194/19)
It is almost a year since publication of T 1989/18 made waves in the European patent community with its finding that the requirement to amend the description in line with the claims lacked legal basis. Since T 1989/18 we have had a number of Board of Appeal decisions on both sides, finding either legal basis or a lack of legal basis for the description amendment requirement. Of these decisions, those finding legal basis for the requirement have been in the majority, also reflecting the clear view of EPO management. However, despite what the EPO might wish (IPKat), the issue is far from settled. A new Board of Appeal decision, T 2194/19 (24 October 2022) is now the latest to enter the debate on the side against the description amendment requirement. T 2194/19 adds further weight to the argument that the currently onerous description amendment requirements placed on applicants should be relaxed at the very least.
Description amendments refresh
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). Before 2021, the simple replacement of "embodiment of the invention" with "embodiment of the disclose" was usually enough to satisfy the Examining Division that the description was in line with the claims. The Guidelines now expressly state that 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).
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| Board of Appeal decisions starting to add up |
Proponents of the requirement that the description should be amended in line with the claims point to Rule 42(1)(c) EPC, which states that the description should "disclose the invention, as claimed, in such terms that the technical problem, even if not expressly stated as such, and its solution can be understood".
Opponents of the EPO's description amendment requirement argue that it lacks legal basis in the EPC and is overly burdensome (in terms of time and cost) 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.
Embodiments falling outside the scope of the claims (T 2194/19)
T 2194/19 is a short decision relating to an appeal of an Examining Division decision to refuse an application on the basis of inter alia, inconsistencies between the claims and the description. Particularly, the claims specified a particular memory size, whilst the description mentioned embodiments having a larger memory size than that specified in the claims.
According to the current EPO Guidelines for Examination "[a]ny inconsistency between the description and the claims must be avoided if it could throw doubt on the subject-matter for which protection is sought and therefore render the claim unclear or unsupported" (F-IV, 4.3). The Guidelines go on to explicitly state that such an inconsistency may arise if an embodiment in the description "comprises a feature which is demonstrably incompatible with an independent claim". The Examining Division decision to refuse the application on the grounds of inconsistencies between the claims and the description was therefore in line with the current Guidelines.
The Board of Appeal, however, disagreed with the Examining Division's approach. The Board of Appeal particularly took direct issue with the reasoning that, for the claims to be supported by the description, all the embodiments included in the description should necessarily fall under the scope of the claims. The Board of Appeal found that such an approach could not be derived from the EPC or the case law of the Boards of Appeal. In cases where embodiments in the description may give rise to inconsistencies or contradictions between the claims and the underlying description, the Board of Appeal found that the onus is on the Examining Division to justify such an objection. "[T]he mere indication that the embodiment does not or no longer fall under the respective claim(s) is not sufficient in this regard".
The Board of Appeal further found that Rule 42(1)(c) EPC cannot be the legal basis for establishing a general and broad requirement for an adaptation of the description to the claims. In the words of the Board of Appeal "It is simply not what this provision says." For the Board of Appeal, the stipulation in Rule 42(1)(c) EPC that the description discloses the claimed invention in such terms that the technical problem and its solution can be understood "cannot be taken to mean that all the embodiments described in the description of a patent application have to fall within the scope of the claims." By focusing on the pernickety question of whether certain embodiments mentioned in the description fall in or outside of the claim scope, the EPO has lost sight of what is the real question, namely whether the invention can be understood.
Notably, whilst the two previous decisions finding against the description amendment requirements were from Boards of Appeal with the same Legal member (Lukas Bühler), the new decision was from an entirely different Board.
Final Thoughts
In less than a year, we have had three decisions from the Boards of Appeal finding a lack of legal basis for the description amendment requirement as currently stipulated by the Guidelines (T 1989/18, T 1444/20, T 2194/19). This increasingly divergent case law increases the likelihood that a referral to the Enlarged Board of Appeal (EBA) will be necessary to settle the issue. It is a mystery to PatKat why the EPO remains so dogmatic on the question of description amendments, especially as the issue has only really been brought to a head following the introduction of the more stringent requirements in the 2021 Guidelines. Whatever the reason for the EPO's position, the growing disagreement amongst the Boards of Appeal and the Guidelines creates unwelcome legal uncertainty for EPO users. The need for clarity is increasing.
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Reviewed by Rose Hughes
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Sunday, November 13, 2022
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Posts
"It is a mystery to PatKat why the EPO remains so dogmatic on the question of description amendments."
ReplyDeleteIt is really a mystery: there should be something we do not know behind this irrational behaviour of the EPO.
A possible explanation for the EPO’s apparently « irrational behaviour « is that it is an over-reaction to the Pemetrexed UK Supreme Court decision of 12.7.2017, which seems to have strongly upset the EPO at upper level. The requirement to adapt the description would thus be a device to thwart potential patentees’ efforts towards a broadened construction of the claims before national courts, considered illegitimate by the EPO.
DeleteA problem is, the EPO has no business policing patentees’ behaviour before national courts or otherwise interfering with the interpretation of patent claims by national courts.
Some comments have mentioned that the adaptation of the description would create a prosecution history estoppel which could be effective to prevent a patentee from seeking a broadening of the scope before national courts. However, the doctrine of prosecution history estoppel is not accepted as a rule by national courts in Europe, it may at best be given consideration.
The EPO practice also seems utterly disproportionate. The likelihood of such patentees’ behaviour before national courts considered illegitimate by the EPO is extremely small (litigated patents are a very small percentage of granted patents, and of course it can be assumed that such behaviour would only occur in a minute fraction of court proceedings), whereas the EPO practice creates across-the-board additional burden and costs, leave alone potential 123(2) issues.
@Francis Hagel
DeleteIf this is indeed a reaction to the permetrexed decision, this suggests to me that the powers-that-be at the EPO failed to read that decision particularly carefully, if at all. Paragraph [74] states:
74. Looking at matters more broadly, the addressee of the Patent would, as I see it, understand that the reason why the claims were limited to the disodium salt was because that was the only pemetrexed salt on which the experiments described in the specification had been carried out. However, it does not follow that the patentee did not intend any other pemetrexed salts to infringe: the suggestion confuses the disclosure of the specification of a patent with the scope of protection afforded by its claims.
Paragraph [74] then states:
Particularly given the facts set out in para 25 above, it seems to me very unlikely that the notional addressee would have concluded that the patentee could have intended to exclude any pemetrexed salts other than pemetrexed disodium, or indeed pemetrexed free acid, from the scope of protection.
So the first part of paragraph [74] seems, to me, to pour cold water on the relevance of the description, to the extent that even if the description in that case had clearly marked salts other than sodium as "not being part of the invention" (or if it had even omitted any mention of them at all), the Court would not necessarily have come to a different conclusion. This is all the more so given the reference to paragraph [25] in the second part that I quoted above. Paragraph [25] defines the Court's findings relating to the common general knowledge of a chemist at the relevant time. It appears that this was decisive; to me this acts as a strong pointer that in reaching its conclusion on infringement, the court Considered the common general knowledge to be far more important than the disclosure of the specification.
Given that, I am inclined to take the view that the EPO is seriously mistaken if it thinks that the Court only reached its decision due to the apparent failure (seen in retrospect) of the Examining Division to fail to ensure that the description was adapted "properly". By definition, adaptation of the description in any particular case cannot alter the content of the skilled person's common general knowledge relevant to the invention; the common general knowledge is not dependent on what the specification says.
Overall, if this is the justification for the EPO's scorched-earth position on description amendments, it seems to be based on false premises.
I agree with Patent Robot. While I have no truck with dogma per se, there is no clear rationale for the current approach. If they are trying to help the national courts (and UPC) or the public with claim interpretation, they are failing. The idea that you need to scrub inconsistent disclosures from the description in order to clarity the scope of protection implies that the scope of protection is determined by the description, and not solely by the claims with the description and drawings for interpretation only. Every single other person in the patent world understands that you look to the claims to determine infringement. Equivalents can fall under the claims, but it is irrelevant whether those equivalents are in the description or not.
ReplyDeleteNot only does amending the description not make it easier to interpret the claims, I would go even further and argue that the draconian official approach, which is inconsistently applied by examiners, will cause chaos when the courts have to reckon with what effect a description amendment (or a lack of one) has on the scope of the claims.
The only benefit that I see, as a European patent attorney, is in my billing figures. Amending the description, advising on amending the description, and (worse) dealing with cack-handed examiner amendments in the Druckexemplar are eye-wateringly expensive tasks for applicants, and it is the European patent attorneys making out like bandits. While this may be a great short-term fillip for hard-up attorneys, in the longer term, the costs for complying with this idiosyncratic requirement can only possibly suppress demand for European patents, with downsides for everyone
Anon, I agree with all that you say, except for this:
Delete"Equivalents can fall under the claims, but it is irrelevant whether those equivalents are in the description or not."
If an embodiment is explicitly marked as not forming part of the invention, doesn't that change the calculus on whether or not it can be an equivalent for the purposes of infringement?
In that case, applicants are potentially better off striking it out altogether, retaining the ability to argue that such an embodiment would infringe by equivalence (after all, there's no file wrapper estoppel and nothing to indicate that it's not an equivalent) than leaving it in the description with a red flag sticking out of it to say that it's off-limits. I believe this is the approach taken by the Swiss courts, and it seems to have been implicitly endorsed by Arnold LJ when he seemed to approve of the "disclosed but not claimed is disclaimed" approach.
Please allow me to clarify myself:
Delete"Equivalents can fall under the claims, but it should be irrelevant whether those equivalents are in the description or not."
This was my intention, but of course the nuances of one's thoughts are often lost in a hastily and poorly thought through post in the comments section of a blog .
I take this opportunity to ask those who think that the EPO's approach is correct, once again, to explain what the legal basis for it could be (other than "because lots of boards have said so").
ReplyDeleteUsually the answer is "Article 84 EPC, second sentence". If so: does the requirement for description amendments come from the "clarity" requirement, or the "support" requirement? (Normally we are told it is "support", but opinions seem to differ on this.) And if it is one of these: how? In other words, what is the logical chain of reasoning that means that Article 84 must be interpreted in this way?
It is a simple enough question, and given how confident the EPO's supporters seem to be that their approach is correct, it is a question that you might think would have been answered in the case law or some other legal analysis. And yet...
Mouse, if you are hoping for clarity and consistent, persuasive logic on this point from the supporters of the EPO's practice, then you will be waiting an eternity.
DeleteHowever, you may have more luck if all that you want is an acknowledgement that there is room for debate upon whether the EPO's practice has adequate legal basis. That would seem to be a perfectly legitimate ask in the circumstances.
Indeed so, Proof, at least regarding your first paragraph!
DeleteGiven that the EPO's most prominent supporter (on these forums, at least) on this topic seems not to even acknowledge that there is room for debate, and prefers to suggest underhand motives are at play among those who even try to open such a debate, I'm not particularly confident in your second paragraph either...
As a prelude, I could be mistaken but the decision appears to state that claim 1 had a smaller memory size (see reason 6.1) than that mentioned in description, so the article’s comment to the contrary perhaps could be changed? This does change the context somewhat. I really appreciate the effort in preparing the articles, Rose! Keep up the excellent work.
ReplyDeleteI do not strongly support either side’s view in this debate. I am very open to reasoning to settle the matter.
It appears however that Boards who come to either conclusion are using reverse legal method. They start with their conclusion and work their way backwards.
As correctly pointed out by opponents, the legal basis and reasoning for description amendments is left wanting.
This case has similar problems. In reasons 6.2.1. It relies on T944/15, reasons 17 to support its view that the “invention” does not necessarily and always equates with the “invention claimed”. You can look at the cited decision for yourself, but the link to what is in reason 17 to the current Board’s view is not apparent.
The Board also states its view in reason 6.2.2, without any legal reasoning, that although inconsistencies seemingly shouldn’t be present, an embodiment outside the scope of claim 1 is not an inconsistency. So what is? I am sure the irony is not lost that this board also cites T1806/06 for this, this citation being the gold standard for supporters.
I am in favour of a referral to resolve this.
Well spotted - "smaller" corrected to "larger", thanks for your attentive reading!
DeleteI was surprised that IPKat did not come earlier with T 2194/19.
ReplyDeleteThis decision has already been commented in two blogs:
https://europeanpatentcaselaw.blogspot.com/2022/11/t219419-tous-les-modes-de-realisation.html
https://blog.ipappify.de/t-2194-19-non-adaptation-of-the-description-the-saga-continues/
The situation seems clear:
- on the one hand those considering that those three decisions should be applied immediately and
- on the other hand, those considering that those decisions are isolated decisions which should not be followed.
T 2194/19 has one positive aspect: if an examining (or an opposition) division requires certain deletions it has to justify such a necessity. It does not exclude as the present post implies that the description does not have to be adapted to the claims. For the rest, it does not seem more convincing than the two first ones.
What are three, or let’s say two and a half, divergent decisions against the mass of decisions requiring the description to be admitted.
I fail to see here an increasingly divergent case law.
I also do not think that it increases the likelihood that a referral to the Enlarged Board of Appeal (EBA) will be necessary to settle the issue.
A referral will most probably not come from the president of the EPO who is, in the broadest sense, behind the present Guidelines.
If a referral comes, it might come from a board.
I would just bring forward that a referral always entails a certain risk. It might not bring the answer wished by the present supporters of those three decisions.
Experience shows that in a series of cases, the EBA has endorsed the existing practice:
- G 1/03 is a good example of this. Undisclosed disclaimers had no legal basis at all in the EPC, contrary to the present situation in which the requirement of support is to be found in Art 84. The difference lies in the interpretation of this requirement.
- G 2/10 has confirmed the position of the EBA in matters of added-matter, novelty etc and has enshrined what is to be considered the "gold standard". This was not necessarily the wish of the party having provoked the corresponding referral.
Another example are Swiss-type claims. The necessity for Swiss-type claims has become redundant with the amendment of Art 54(5). In the same vein I would observe that R 42 can also be amended.
My position with respect to the present topic is well-known and I do not intend posting any further comments.
"What are three, or let’s say two and a half, divergent decisions against the mass of decisions requiring the description to be admitted."
DeleteThe "mass of decisions" only ASSUME ipso facto that unclaimed subject-matter is "inconsistent" with the claims, so that they never explain the legal basis why unclaimed subject-matter must be deleted/marked.
On the other hand, I agree with you that "Experience shows that in a series of cases, the EBA has endorsed the existing practice:", as e.g. G 4/19 does even overlook (art. 52 of) the EPC and uses unfounded arguments based on art 125 EPC to justify the existing practice at the EPO.
It is not necessary to argue over whether the case law is increasingly divergent, as that is not a requirement for a referral to the EBA.
DeleteAlso beyond dispute is the fact that the "minority" case law once and for all settles the fact that there is room for reasonable minds to differ on the question of whether the EPO's current practice has adequate legal basis. Moreover, unless you wish to cast aspersions on the Boards of Appeal that have issued those "minority" decisions, it also confirms that those of us who agree with them do not necessarily have impure motives for doing so.
Dear Patent Robot,
DeleteI might be mistaken, but I do not know any legislation or jurisprudence accepting double patenting. A granted EP and a national patent cannot, in principle, coexist. The national patent, with the same claims ceases to have effects once the EP has been granted and validated. The same applies to two EP or two national patents claiming an “internal” priority.
This might change with the UPC, at least in France and in Germany. I see here the concern of some governments that, in the event of revocation by the UPC, the proprietor would lose everything.
If you carefully read G 4/19 a lot of the discussion turned around the legitimate interest of the proprietor for an extension of patent protection through double patenting. In G 4/19, the EBA did not deem it necessary to determine the conditions for a legitimate interest in the proceedings or to examine if there is a need to fill a lacuna in the Convention. The EBA held that the prohibition is to be derived from the legislative intention underlying the Convention and that no lacuna exists. You might disagree, but the EBA has decided the prohibition of double patenting.
Although the EBA did not decide on the legitimate interest of a proprietor for an extension of the patent term, I am of the opinion that there cannot be any legitimate interest for the proprietor in extending the patent protection.
For the same token there cannot any legitimate interest in keeping statements in the description which are at odds with what the claims covers.
Be it for double patenting or not adapting the description, the aim is to me very clear: gaining an undue advantage over competitors. This cannot be a legitimate interest.
Your reply is quite revealing, whether you like it or not.
Dear Proof of the Pudding
I can agree with you, that it is not a requirement for a referral to the EBA to have masses of divergent decisions. In principle one could be enough.
In view of my reply to Patent Robot, it should be clear that those of you who agree with the three decisions do "necessarily have impure motives" for doing so. Otherwise they would not cling to the stance that the description does not have to be adapted.
I repeat here that when the subject-matter of an optional feature in the description is incorporated in an independent claim, that feature cannot be left optional in the description. The same applies, if due to prior art revealed during search, examination or opposition, some embodiments or ways to carry out the invention originally disclosed are not any longer patentable. Claiming that they are still embodiments of the so limited claims is not correct.
Clause-like sentences might not be claims, but keeping in the description the original claims in form of clauses must have a good reason. I never hear a convincing one. For me, this reason cannot be legitimate.
Thanks to both of you for offering the possibility of putting the picture straight.
That some EDs are over pedantic in this matter is something which is not correct. But adapting the description so that the claims are supported by the description is a legitimate aim of the EPO.
Dear DXThomas, I am offended that you continue to malign my character by suggesting that I have "impure motives" for questioning the legal basis for the EPO's description adaptation practice. However, I suspect that I will need to get in a queue (behind the Boards of Appeal responsible for the "minority" decisions) when it comes to explaining to you that your allegation is not only unfounded but also completely illogical.
DeleteRemember, the question is whether the EPO's practice has adequate legal basis, and is not, I repeat not related to anyone's views on the desirability (or otherwise) of retaining statements in the description that are arguably at odds with the claims.
Frankly, you seem to be working backwards from the assumption that the description should not contain statements that are "inconsistent" with the claims. Having made that assumption, it is no wonder that you cannot understand why anyone would question the legal basis for the EPO's practice. However, that is not how the law works. One needs to start with the provisions of the EPC and work forwards from there.
Dear DXThomas,
Deleteyou "do not know any legislation or jurisprudence accepting double patenting".
I just checked the EPO website and I found 10 (ten) EPC States which allow national/EP double patenting.
Moreover, further EPC States allow national/national double patenting, in particular patent/utility model double patenting.
Thus, the reference to 125 EPC in G 4/19 was totally wrong.
At any rate, the EPC does not prohibit double patenting, as it is clear from the travaux preparatoirs that this prohibition was a matter of national law not the EPC.
In fact, in one case the EPC allows double patenting: an applicant just have to borrow their double application to a friend during the grant procedure.
Dear Proof of the pudding,
DeleteI do not malign your character by suggesting that you have "impure motives" for questioning the legal basis for the EPO's description adaptation practice. To use your own words, I am simply considering that “your allegation is not only unfounded but also completely illogical”. It is at least at odds with a long line of case law. Do you claim that you are the holder of “the truth” in this matter?
I do not claim to hold the truth, I just look at Art 84 as it stands and take some conclusions in view of what lots of boards have said. The day Art 84 is amended and the last sentence is deleted, I will be in a position to follow you. But I do not think that this day will come soon.
Claiming that there is no basis in the EPC for adapting the description to amended claims actually boils down to accuse lots of boards of appeal of taking illegal decisions. I would be a bit more careful. This certainly explains why you need to use a pseudo.
As long as you do not give any reply to my comments, I will consider that you have “impure motives”, whether you like it or not. That you are offended by this position is not relevant for me.
Here are the comments at stake:
- When the subject-matter of an optional feature in the description is incorporated in an independent claim, that feature cannot be left optional in the description. What can be the legitimate interest for an applicant/proprietor to behave like this?
- The same applies, if due to prior art revealed during search, examination or opposition, some embodiments or ways to carry out the invention originally disclosed are not any longer patentable. Claiming that they are still embodiments of the so limited claims is not correct and there cannot be any legitimate interest for an applicant/proprietor to behave like this.
- Clause-like sentences might not be claims, but keeping in the description the original claims in form of clauses must have a good reason. I have never heard a convincing reason at all for this behaviour. For me, should there be a reason, I fail to understand that it can be legitimate.
Not wanting to adapt the description in such cases can only be done in order to give more breadth to the claims that they actually deserve in view of the contribution of the invention to the art.
You are clinging to your position that there is no basis in the EPC for amending the description. This is your good right, but it will not come as a surprise that I cannot follow you on this point.
It is also your good right to think that the last sentence of Art 84 does not represent a legal basis for requesting the adaptation of the original description once the claims have been amended. I am of a different opinion, which again will not come as a surprise.
I am far from working backwards. I take Art 84 as it stands and apply it exactly as many boards have done since the EPO opened its doors. Some rather apodictic decisions at odds with a long line of case law will not induce a change on my side.
By hiding behind the postulate that there is no basis in the EPC for the adaptation of the description, you avoid any discussion.
In the absence of a reasoned reply to the questions raised above, I will not reply any more.
By reasoned reply, I mean something more tangible than the mere absence of a legal basis, which is actually not correct.
Dear Patent Robot,
DeleteI have learned something and the source where I can find a certain information. I thank you for this.
Patent/utility model double patenting is not to be equated with double patenting. It is double protection with two different instruments.
I leave you to claim that “the reference to 125 EPC in G 4/19 was totally wrong”. I would be a bit more respectful towards the EBA. In this respect it is better for you to stay anonymous.
In reasons B.1.1, the BA discussed the applicability of Article 125 EPC to the question of double patenting. With the help of Art 31-33 VCLT, the EBA concluded that “Article 125 EPC may serve as the legal basis for a prohibition on double patenting”, see Reasons, Point 37. It is your right to disagree, but it is not what the EBA decided.
In G 4/19, the EBA considered double patenting in the light of the “travaux preparatoires”. See Reasons B.2.1, Points 47 ff. It also considered the minutes of the Diplomatic Conference. See Reasons B.2.1.5, Points 60 ff. The “travaux preparatoires” were also considered in Reasons C.1.2 Conclusions from the Minutes of the 10th Meeting of Working Party I, Point 85. In Reasons, Point 89 the EBA summarised its position with respect of the “travaux préparatoires”
I have thus difficulties when you claim that “it is clear from the travaux preparatoirs that this prohibition was a matter of national law not the EPC”.
Your statement: “In fact, in one case the EPC allows double patenting: an applicant just have to borrow their double application to a friend during the grant procedure” is quite revealing. It shows that what you intend to do is to circumvent the prohibition of double patenting.
I compare this position with the one you adopt when you blatantly refuse to amend the description. You just want to gain an edge over your competitors.
It happens that the EPO and the vast majority of the boards do, rightly, not want you to play this game
@DXThomas:
DeleteDo the Boards responsible for T 1989/18, T 1444/20 and T 2194/19 have "impure motives"? Do they make allegations that are "not only unfounded but also completely illogical”? Do they "accuse lots of boards of appeal of taking illegal decisions"?
As you never seem to tire of reminding us all, the EPO does not operate a common law system. Ironic, then, that you appear to insist that the earlier line of case law is sacrosanct and that the decisions referred to above, which are currently in a minority, can under no circumstances be correct because they deviate from that line of case law.
When it comes to other topics of discussion under the EPC, you seem to be quite happy on your blog to acknowledge the dialogue between the Boards and the gradual evolution of case law. Why is this one issue such an exception? I genuinely struggle to understand your fixed position on this point.
Now I ask, once again: why do you consider that Article 84 must be interpreted in line with your position? Please, do not simply refer to the long line of case law saying that it is so. As I will not get tired of pointing out, that long line of case law provides no reasoning explaining why Article 84 should be interpreted that way; it simply assumes that it should be so interpreted. Clearly that interpretation cannot be self-evident, or we would not have these dissenting decisions.
That you disagree with the dissenting decisions is clear and is entirely fair, but surely they illustrate that reasonable minds - including the Boards! - can differ on the interpretation of Article 84 in this respect. I am entirely prepared for the fact that, ultimately, these decisions may continue to be in a minority and that if it comes to it, the EBA may confirm the existing practice. So be it. But in the meantime, what readers of this blog want to know is: why is the earlier line of case law the correct one, in your view?
Dear DXThomas, our differences of opinion boil down to our different interpretations of the meaning of the phrase "the claims shall ... be supported by the description".
DeleteI can concede that reasonable minds can differ regarding the correct interpretation of that phrase. Indeed, I acknowledge that there is a "long line of case law" that at least arguably supports your interpretation.
The problem for me is that you do not appear to be either willing or able to concede the same point, or to acknowledge that there is even the slightest chance that the "minority" line of case law may be correct.
Your approach in "discussing" the meaning of Art 84 EPC with me seems to amount to nothing more than a series of false flag operations: you accuse me of holding views that I have not expressed, or of having motives that are entirely a product of your imagination, and then you proceed from there.
To illustrate, you now (apparently) accuse me of asserting that there is no legal basis for adapting the description. But I never made that assertion. There is a subtle distinction between that assertion and simply agreeing with the "minority" line of case law. Also, I never claimed to be the holder of "the truth". I simply believe that the "minority" case law contains the most persuasive reasoning regarding the interpretation of relevant provisions of the EPC (including Art 84). Does this mean that I am effectively accusing the "majority" Boards of acting unlawfully? I think not.
In response to your specific scenarios, I would simply ask whether, in principle, retaining "unclaimed" (or "inconsistent") subject matter in the description casts doubt upon the scope of the claims. I can think of plenty of scenarios where it would not. And yet, even in those alternative scenarios, the EPO's current practice would still require adaptation of the description ... on the basis of the completely unproven and illogical assertion that retaining those disclosures would cast doubt upon the scope of the claims.
Even in scenarios where retaining a disclosure arguably casts doubt upon the scope of the claims, are we really saying that "strict" adaptation of the description is the only sensible course of action? As there are many, many other jurisdictions (including the US) where such "strict" adaptation is not required, I think that the clear answer to this question is "no". This is because an alternative approach would be to simply rely upon the courts to interpret the scope of the claims based upon the available evidence (including, where relevant, claim amendments made during prosecution).
Both approaches have their pros and cons. I just happen to think that the cons of the "strict" adaptation approach outweigh the cons of the alternative approach. However, I wonder whether you are even prepared to acknowledge that the "strict" adaptation approach has any cons at all.
Dear Anon Y Mouse, Proof of the pudding, Patent Robot,
DeleteWe are turning in circles and the discussion is not progressing.
I can follow your point of view, but cannot share it.
I have said many times that I do not agree with a pedantic approach to the question as put to light by some divisions.
On the other hand, I am still waiting to receive an answer to the questions i have put now twice on the table.
Let's be practical an let me repeat my questions for the third time now:
In all three following cases, do you think that the description should be adapted, or do you think it should not be adapted?
1) When the subject-matter of an optional feature in the original description is incorporated in an independent claim, can that feature be left as optional in the description?
2)The same applies, if due to prior art revealed during search, examination or opposition, some embodiments or ways to carry out the invention originally disclosed are not any longer patentable. Is it correct to continue saying in the description that they are still embodiments of the limited claims?
3) Clause-like sentences might not be claims, but keeping in the description the original claims in form of clauses must have a good reason. I have never heard a convincing reason at all for this way of doing. Can you give a sound reason?
In my opinion there is no legitimate interest for an an applicant/proprietor to answer that the the description should not be adapted.
The only interest I can see in not wanting to adapt the description, is the will to confuse and obscure what the claimed invention actually is or means.
As long as there is no reasoned reply to those simple questions, I will remain silent.
It should be clear that by reasoned reply I do not want a mere reference to the three decisions which have been amply discussed.
I struggle with DXThomas's evangelical view that the sentence "They shall be clear and concise and be supported by the description." unambiguously and necessarily means that "when the subject-matter of an optional feature in the description is incorporated in an independent claim, that feature cannot be left optional in the description". I applaud the confidence, but I fear for the sanity.
DeleteArticle 84, second sentence, merely requires support. Prosaically, support can come in many forms. A narrow base may provide support for a broader top. A broad base may provide support for a narrower top. A base may provide support for a top that is of exactly the same same breadth.
The same is clearly true of the description and the claims. A narrow disclosure in the description can provide support for a broader claim. A disclosure in the description can provide support for a claim that is of exactly the same same breadth. So why cannot a broad disclosure in the description provide support for a narrower claim? Why must the description be narrowed?
I think nobody would argue that if a claim says "Device having X" and the description says "Device may or may not have X" then there is an inconsistency. But does this inconsistency make the claims unclear or unsupported? The claims say the device has X. It is arguable that the description supports a Device having X and the claim clearly requires X. Inconsistency does not necessarily create a lack of clarity or of support. There is no requirement in Article 84 that the description be consistent with the claims.
It comes down to whether you see the requirement for support as requiring "mere literal support", i.e. the text of the claims appears in the description as such, or requiring "substantive support", i.e. the subject matter claimed is of commensurate scope with the description. The EPO has long favoured the latter, but its approach to description adaptation implies that a literal approach to support is important.
Dear DXThomas,
DeleteThese are my answers to your questions:
"1) When the subject-matter of an optional feature in the original description is incorporated in an independent claim, can that feature be left as optional in the description?"
Yes, the feature can be left optional since there is no doubt that it has been claimed. With the amendment, it would be difficult to argue that this non-optional feature can be susbstituted by an equivalent feature. Furthermore, the amendment could create issues in case of divisionals which are based on the same embodiment and do not claim this feature.
2)The same applies, if due to prior art revealed during search, examination or opposition, some embodiments or ways to carry out the invention originally disclosed are not any longer patentable. Is it correct to continue saying in the description that they are still embodiments of the limited claims?
No, but no patent attorney would write "embodiment of the claims" in the description. The embodiment should be instead "of the invention" or even better "of the description". In this case the embodiment should be left at least to provide technical information to the public (no embodiment is identical to the prior art).
3) Clause-like sentences might not be claims, but keeping in the description the original claims in form of clauses must have a good reason. I have never heard a convincing reason at all for this way of doing. Can you give a sound reason?
Yes, the EPO requires applicants to copy the original claims in the description (changing "claim" to "embodiment") to satisfy the support requirement of Art. 84. I did it many times when the application was filed by the inventors, who usually do not check that all features in the claim are also in the description.
Now my questions to you:
1) Under Art. 84 should an unclaimed embodiment of the disclosed product/method deleted from the description?
2) Would answer 1 be the same if the unclaimed embodiment was equivalent to the claimed embodiment?
3) Would answer 1 be the same if the claimed embodiment did not sufficiently disclose a feature sufficiently disclosed in the unclaimed embodiment?
4) Would answer 1 be the same if the unclaimed embodiment contained a disclaimer?
I submitted a detailed comment yesterday but it seems to have been eaten by the filters.
DeleteIn brief: I agree entirely with the rationale put forward by "Feeding the troll" - is "support" a substantive requirement or a mere literal one? This seems to be at the heart of the disagreement.
I also agree with Patent Robot's answers above.
A few comments of my own:
To Q1: "When the subject-matter of an optional feature in the original description is incorporated in an independent claim, can that feature be left as optional in the description?"
YES. If the original description supports ab initio both "X" and "X+Y", why does amending the claims so that they relate only to "X+Y" now create a problem of support? I cannot understand how, if an original disclosure can support both "X" and "X+Y", limitation of the claims to only "X+Y" suddenly transforms that ab initio support in to an ex post facto lack of support. If there had been a lack of support for "X+Y" at the time of amendment, then an Article 84 objection would have been raised at that stage. In your scenario, we assume that no such objection arose, as the amendment was deemed to be permissible and inter alia supported - so why does such an objection suddenly manifest itself at the last possible minute?
To Q2: "The same applies, if due to prior art revealed during search, examination or opposition, some embodiments or ways to carry out the invention originally disclosed are not any longer patentable. Is it correct to continue saying in the description that they are still embodiments of the limited claims?"
In my view this question is a leading question, because it is phrased the wrong way round. The question seems to look at things from the point of view of the description. But Article 84 relates to the claims. If the description as originally filed provided ab initio support for multiple different embodiments, then each of those embodiments is surely supported regardless of whether or not each one is claimed. Claiming only one (or a subset) of those embodiments, which were indisputably supported ab initio, cannot suddenly generate an ex post facto lack of support based on the self same text. It is illogical.
To echo what Patent Robot has said - no patent attorney would say "embodiment of the claims". More commonly it would state "embodiment" or, perhaps, "embodiment of the invention". In the latter case I can agree that there may potentially be a lack of clarity if and only if the description is taken into account in interpreting the claims - but not a lack of support as such. And for there to be a lack of clarity seems to require Article 69 to come into play in order to use the description to interpret the claims. But as the Boards of Appeal - mostly, but not completely - consistently remind us, Article 69 has no role in pre-grant proceedings at the EPO, and the claims must be interpreted as they stand. In any case, the skilled person is surely competent enough to figure out for themselves whether or not a given embodiment falls inside or outside the claims. Further, there is a question here of whether the "invention" as described in the text is deemed to be coterminous with the "extent of protection" or not.
From a pragmatic point of view, marking "embodiments of the invention" as "embodiments of the disclosure" would be unobjectionable in most cases. This was the old practice until the EPO started insisting otherwise. What is not acceptable is marking embodiments as explicitly "not forming part of the invention". This seeks to tie the hands of national courts with respect to the interpretation of the claims and the implementation of Article 69, which is none of the EPO's business.
To Q3: "Clause-like sentences might not be claims, but keeping in the description the original claims in form of clauses must have a good reason. I have never heard a convincing reason at all for this way of doing. Can you give a sound reason?"
DeleteYes. Claim-like clauses are typically inserted when filing a divisional application in order to ensure that all of the subject matter of the parent application is unambiguously contained in the divisional application as filed.
In many cases those clauses have served their purpose when the allowable divisional claims are agreed upon, and there is no harm in deleting them.
In other cases those clauses may simply serve as a convenient shorthand way of listing embodiments of the invention. In that case we are in a situation akin to Q1 or Q2. So my attitude would be much the same. In the particular case where all of those clauses unambiguously fall within the scope of the granted claims, even if they are not expressly the subject of a claim themselves, do you still consider that they should be deleted? If so, why?
Mouse, I have to say that I find the EPO's objections to "claim-like clauses" to be the most illogical (and infuriating).
DeleteI have seen many examples of descriptions of original (ie not divisional) applications that contain claim-like clauses. The primary purpose served by such clauses is usually to provide a clear and concise description of combinations of various preferred embodiments. During prosecution of such applications, it is therefore perfectly possible that the claims may find clear and unambiguous basis solely in one or more such claim-like clauses.
What would the EPO do in such circumstances, especially if the all such claim-like clauses relate to the subject matter of the amended claims? Would they insist that those clauses are reformatted (to make them less "claim-like")? If so, on what basis? And would insisting upon the use of a specific (less clear and concise) format for precisely the same subject matter represent a triumph of form over function?
I always thought that it was a straightforward matter to determine which subject matter was claimed by a patent. That is, I thought that all one needed to do is to turn to the section of the patent headed "Claims". Apparently, though, the EPO is concerned that those skilled in the art might be confused by the presence, in other sections of the patent, of clauses that look a bit like claims (even though they are clearly not presented as such). Whilst their concern is touching, I rather suspect that those skilled in the art are not so easily confused as the EPO seems to think.
I take the chance to present for review a comment I have already made elsewhere, to see if it attracts any reaction here. It concerns the rigidity of the current Guidelines, already incorporated in standard paragraphs of ED Communications issuing now.
ReplyDeleteApplicant MUST either delete the description text that attracts objection under Art 84 or amend it to state that its disclosure is NOT the invention. There is no alternative (TINA). My feeling about many such passages of text is that to amend them to state that they are NOT the invention is to i) increase rather than reduce the level of confusion in the mind of an interested and attentive reader skilled in the relevant art and ii) set up an Art 123(2) point for a future opponent.
History does not vindicate politicians who invoke TINA. In each case, it turns out, there is an alternative. One would wish that the next edition of The Guidelines is less dognatic than the present edition.
Dear Max Drei,
ReplyDeleteI replied in my blog in matters of TINA.
I also agreed with you that history does not vindicate politicians who invoke TINA.
I do not consider that the Guidelines are as such dogmatic. It is the interpretation of the Guidelines made by some divisions which is pedantic, bordering on dogmatic.
I repeat that with some goodwill, there can be an agreement satisfying both sides.
Some of the requirements of certain divisions are simply not reasonable, especially when they are not correctly reasoned, cf. the present decision. The same applies to the obstructive attitude of some representatives in this matter.
I have not yet seen one case in which the adaptation of the description would have led to an objection under Art 123(2) in opposition or in a validity dispute before a national court.
Even if this would be the case, it could be remedied in re-establishing the original version. The only limit would be that it does not allow an interpretation which extends the scope of protection of the claims under Art 123(3).
The reason of the adaptation of the description to the claim is exactly to avoid the proprietor enlarging to its advantage the scope of protection over what has been actually claimed. the proprietor is doing so in leaving some statements in the description exactly for this purpose.
This does not withhold a national jurisdiction to apply Art 69 and its Protocol of Interpretation and to define its own doctrine of equivalents.
Dear DXThomas,
Deletehave you ever heard about the inescapable trap?
I believe that if an applicant deletes subject-matter from the description and then receives an art. 100(c) attack (and/or an art. 100(b) attack) in opposition proceedings due to this deletion, he cannot reintroduce this subject-matter in the description, because it would violate art. 123(3), wouldn't it?
Robot, the "inescapable trap" would only apply if reintroducing the subject matter into the description would extend the protection conferred by the patent. Whilst nothing is certain in this regard, I can envisage scenarios where it should be perfectly permissible to reintroduce matter into the description that was deleted before grant. However, whether this would be permitted under national law provisions governing the allowability of post-grant amendments is another matter entirely.
DeleteI have to say, however, that the complexities of the requirements under national law are not the only reason to question DXT's rather casual assertion that subject matter can simply be re-inserted if an Art 123(2) issue arises. This is because it appears to me that DXT is trying to have his cake and eat it.
To explain, DXT would have us believe that it is essential to delete subject matter from the description that is "inconsistent" with the claims. The reason for this? Well, apparently it is that such "inconsistent" disclosures cast doubt upon the scope of the claims. It now appears that DXT would also have us believe that reintroducing such "inconsistent" disclosures would have no effect upon the extent of protection conferred by the patent ... hence completely contradicting his reasoning for insisting that such subject matter should be deleted pre-grant.
As predicted, my wait for clarity and consistent, persuasive logic continues...
May wait continues as well. See the questions above here.
DeleteIt is difficult to see how a representative can be 'obstructive' but then that comes from a former EPO examiner and may be indicative as to how these view their clients. BTW, I thought 'Patentanwalt' was a protected title in Germany.
DeleteI still don't understand the problem with looking at the description as originally filed as an historic record of what the applicant filed at the outset. The claims define the scope of protection. Judges of national courts in countries that don't have the requirement to 'adapt' the description to the claims can apparently figure out the scope of protection. The EPO is once again offering a solution no one asked for to a problem that they imagined. I look forward to being rolled back in due course, just like what happened with their time-limited divisionals fiasco.
ReplyDeleteSG: the question is whether there is any "half way house" between i) leaving the description as a"historical record" and ii) excising from the description anything which a zealous Examiner finds to be "inconsistent" with the allowed independent claim.
DeleteDXT puts down to i) impure motives and ii) over-zealous examining, the present distress of EP representatives obliged by the 2021 Guidelines EITHER write "NOT the invention" OR completely excise the offending description passages but I think that those Examiners are merely following faithfully the dictates of the Guidelines. This latest Decision is an attempt to blunt the severity of the Guidelines but it strikes me it does not solve the problem, only waves a hand over it.
There is a lot of heat in this issue. You mention the 2 year cap on divisional filing, another well-meant but ill-conceived measure. I too recognise a parallel with the present heated bebate. And I still think it patronising of the EPO to suppose that judges are going to get bamboozled by silver-tongued litigators acting for the patent owner unless the EPO removes from the description everything that might otherwise "mislead" those judges.
Dear SG,
DeleteComing with the time-limited divisionals, which indeed were a fiasco, is not very helpful, to say the least, when it comes to adaptation of the description. it does not bring matters forward one iota.
The day the last sentence of Art 84 will be deleted, I will be able to agree with you.
If the description is not any longer to be adapted, what I can envisage as well, a kind of file wrapper-estoppel will have to be introduced like it exists in the US.
File history will have to be taken into consideration in case of litigation of a national or supra national jurisdiction.
Not adapting the description and refusing to see the file history taken into account boils down to have your cake and eat it. Thanks to Proof of the pudding to remind me of it.
Art. 84 sets out a requirement for the claims, and the claims only. How you can read it in a way that obliges any changes to the description is a mystery to me:
Delete"Article 84
Claims
The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description."
Various claims can be assembled. Some of which will be supported by the originally filed description, some of which will not. Changing what the originally filed description said makes no difference to which claims can or cannot be supported based on the application as originally filed. Deleting or excluding certain embodiments does not magically give rise to support of a claim that was not already supported anyway. That is a fiction!
On the one hand, Monsieur Thomas apparently feels free to suggest that other posters here have bad motives for daring to question the established case law, and apparently feels free to make unfounded allegations about their character which they should apparently just accept ("that you are offended by this position is not relevant for me").
ReplyDeleteYet, on the other hand, as we have seen plenty of times both here and elsewhere, he apparently sees no contradiction in behaving petulantly and taking great offence at comments that he perceives to be less than scrupulously polite towards him or the Boards (complete with rather comical attempts at dark, conspiratorial mutterings such as "Your reply is quite revealing, whether you like it or not"; and "I would be a bit more respectful towards the EBA. In this respect it is better for you to stay anonymous"; and "we have not kept cows or chickens ... a bit of respect would do you good" and so on...).
This reader cannot be alone in finding this behaviour somewhat ironic. Frankly, it leaves rather a bad taste in the mouth that someone so eminent and with such experience apparently cannot conceive of the fact that disagreement and debate can occur without bad faith on either side. The practice of law is ultimately about debating the merits of competing positions; at present this debate feels rather one-sided, but it is not for lack of trying.
If Monsieur Thomas would rather hurl accusations than engage in a debate on the merits, then I hope that he would forgive us for concluding that such behaviour is "revealing, whether he likes it or not" about the merits of the arguments on his side of this debate.
You are not alone. I have commented upon the irony of such behaviour previously.
DeleteDebating on the merits would be nice. However, it seems to me that there must have been an incident (or several incidents) in DXT's past that left him with an inherent distrust of the motives of patent attorneys. I therefore believe that we are all paying for the (perceived) misdeeds of those attorneys.
It would make sense to shift the requirement to remove inconsistencies to the clarity leg of Art 84, this would avoid the debate about the expanded interpretation of the support requirement.
ReplyDeleteOf note here is Section 5.29 of the PCT ISPE Guidelines :
« […] Another form of inconsistency is that in which the description and drawings include one or more embodiments of the invention which appear to fall outside the subject matter covered by the claims (for example, the claims all specify an electric circuit employing electronic tubes and one of the embodiments employs semiconductors as an alternative). Here again the applicant should be invited to amend the claim or the description and drawings to remove the inconsistency and thus avoid any possible uncertainty which could arise later as to the meaning of the claims. However, inconsistencies which do not cause doubt as to the meaning of the claims may be overlooked. »
This relies on the clarity leg of Art 84, as what is to be considered is the uncertainty or doubt as to the meaning of the claims. And it does require the removal of the inconsistency only when it causes doubt (present tense) as to the meaning of the claims. The onus would be on the ED to prove it. If the inconsistency only creates a possible uncertainty which could arise later, the applicant is invited to amend the description but is not required.
It is true that the PCT Guidelines are not binding on EDs during the EPO phase, and the contexts are different, but this is at least a source of inspiration. And harmonisation between PCT and EPO Guidelines would be welcome for practitioners.
To DXThomas: if you are still waiting for a reply, it must be because you missed the part of my previous comment that started with in "In response to your specific scenarios".
ReplyDeleteIf, however, you are waiting for direct responses to your questions regarding your invented scenarios, then you will not get those responses from me. This is because it seems to me that you are asking the wrong questions, in the sense that you are considering the matter from too narrow a perspective.
For example, you ask a loaded question about whether there is any legitimate interest in retaining "non-claimed" subject matter in the description. But this is because you are only considering the hypothetical impact of retaining that subject matter on the post-grant interpretation of the claims. But, of course, making amendments to the description has other potential legal effects, including with regard to the addition of new matter.
Also, you fail to consider practicalities for applicants. The EPO's current practice essentially demands that applicants review each and every disclosure of the description, decide which fall within the scope of the claims as amended, and then excise (or label as "not the invention") those disclosures that are deemed to fall outside of the scope of the claims. Even for relatively short descriptions, this will be an onerous (and potentially eye-wateringly expensive) task that is fraught with legal risk for the representative, and possible downstream consequences for the patentee if that task is not carried out with great care. This is not least because, in contrast to how a national court would assess claim scope, the representative performing that task is very unlikely to have the benefit of expert evidence on the interpretation of the claims (or on embodiments that might represent "immaterial variants" of the claimed invention).
I think that it would help you to appreciate the different views expressed here if you were to accept that resistance to adapting the description need not be (and, in my experience, never has been) about trying to gain some kind of unfair advantage. Also, as you will see from my previous comments, there is no reason why national courts cannot deliver fair and just results even for patents where no attempt whatsoever has been made to adapt the description to the amended claims.
Dear contributors,
ReplyDeleteIt is tiring to fend off all the numerous attacks I have been subjected to.
I do not deny having sometimes been provocative, but the flood is not warranted.
Any reply from my side is followed by a large flow from the other side.
I simply have had enough, but i maintain that the behaviour put to light leads me to think that the obstructive attitude in matters of adaptation of the description has some reasons which are difficult to owe up.
The day Art 84 and/or R 42 will be amended and expressly state that the description does not have to be amended, then I will follow you. But then you will have to accept that the file history is taken into account. You cannot have your cake and eat it.
I should applaud the reasoning brought forward by all of you, but in all honesty, I cannot.
My position is clear, and I see no reason to change it.
I am not convinced by the argumentation delivered and I could not convince you all as well. The "replies" to my questions are biased and it would not bring much to go into details in a reply.
It seems thus better to leave it as it is and simply agree that we disagree. But even this has been refused.
If some of you would be inclined to think that I am chickening out, they are deeply mistaken, but it comes a moment when it is wiser to stop.
Probably the traditions and the weather on the other side of the channel are contributing factors to the positions taken.
I will thus keep my thoughts to myself rather than seeing them distorted as it has been the case.
It has never been the aim of the EPO to police national judges and tell them what to do, but the example given in the pemetrexed case by the UKSC is an example which should not be followed.
In this case it was the UKSC which wanted to police the way of working of the EPO. In view of the merits of the case, the objection under Art 123(2) was absolutely warranted and it was not correct for the UKSC to come up with a reprimand to the examiner as has been done.
Good bye! Keep well, but let me finish by saying that I do not expect that the situation will change much at the EPO! Whether you like it or not.
Well, there we have it - the DXT playbook in full:
Delete1. Make controversial assertions about the meaning Article 84 without explaining them
2. Invite other contributors to comment, while making unwarranted accusations about their motivations
3. When replies are received (including in direct reply to direct questions), complain of a "flood" of responses which are "biased" and therefore unworthy of comment
4. Reassert original assertions, with still no explanation as to why they are apparently correct
5. Repeat (completely erroneous) previous remarks about the relevance of the pemetrexed decision, which betray little sign of actually understanding said decision
6. Throw toys out of pram and flounce, with completely unwarranted and distasteful parting shot based on assumed nationality of commenters.
If this is what passes for the standard of debate at the upper reaches of the EPO, no wonder it seems to have its head in the sand on this topic.
Well the examiner is always right. Surely you have learnt that by now.
DeleteYou forget:
Delete7. Start again from 1., as if nothing happened.
Commenters are wondering what are the experiences that Daniel Thomas has undergone, which can explain the vigour of his defence of the uncompromising line taken by the 2021 Guidelines. I think it significant that in his post of today, signing out of this thread, he cites once again the UK Supreme Court Decision in the pemetrexed case. My suspicion is that M. Thomas thinks that if only the ED in that patent had held to a strict line on "conforming the description" the Supreme Court would not have been able to write the decision it did, (finding that (in a nutshell) K infringes a claim limited to Na). He seems to feel affronted by i) the reasoning and ii) the unfortunate remarks in the Decision about Art 123(2) EPC. He seems to think that courts ought not in future to have such freedom to get their decisions wrong.
ReplyDeleteDon't get me wrong: I'm not the greatest fan of deciding infringement cases under a DoE (doctrine of equivalents) but my sense is that i) the UK Supreme Court was minded to align itself with the mainland by settling a DoE into English law and that ii) it would have made no difference in the pemetrexed case if the description which the EPO allowed through to grant had exhibited a higher degree of "conformity" with the allowed claims than the description considered by the Supreme Court.
But I'm not a chemist. What do the chemists reading this thread think? Does Daniel Thomas have a point, when he cites pemetrexed as a reason for the EPO urgently to tighten up on "conformity"?
It's not the vigour of the defence that commenters object to - vigorous defence of a position is fine. Clearly there are different opinions on this topic, and strongly-held views - that is absolutely fine, and it is the nature of things.
DeleteWhat is not acceptable is the manner in which the defence is conducted - long on accusations of (essentially) misconduct and fraud, short on any actual reasoned points that might form the basis for a constructive discussion. As we have seen, attempts to actually enter into discussion of details are simply hand-waved away as not being worth his time.
Now, regarding the Pemetrexed decision, I refer to my reply to Francis Hagel all the way up at the top of this thread. If I've understood correctly, the reasoning indicates that the Supreme Court in that case was not inclined to give much, if any, weight to the disclosure in the description. Rather, its decision seems to have been based largely on its findings of fact with regard to the common general knowledge. Like you, I struggle to see how a stricter adaptation of the description would have changed matters in that situation.
The comments relating to Art 123(2) EPC in the decision are, essentially, incidental and do not seem to form a significant (if any) part of the ratio decidendi. Any umbrage taken by DXT on the basis of such comments is therefore entirely misplaced, while his apparent offence-taking at the rest of the reasoning seems to contradict his (otherwise correct) suggestion that it is not the EPO's aim to police the decisions of national judges. In his world, that restraint seemingly only applies as long as the national judges reach the "correct" decision.
Max, I too am not a fan of the UKSC's decision in the pemetrexed case. That is because I believe that it sets different patentability standards for equivalents (vs. embodiments that are considered by the EPO during examination). Nevertheless, like you, I believe that DXT's reasoning, and hence also his conclusions, are flawed. I have explained (at length!) why this is in comments on previous threads relating to adaptation of the description.
DeleteIt is a shame that, despite being presented with many, many arguments as to why he might not be viewing this matter through an entirely objective lens, DXT continues to dogmatically stick to his position and to refuse to even concede that the "minority" BoA decisions illustrate that there is room for reasonable minds to differ. However, signs of extreme (over)sensitivity / overreaction in some of his comments suggest to me that it will be impossible to overcome his perception bias.
And now another decision refusing an application for failure to adapt the description:
ReplyDeletehttps://www.epo.org/law-practice/case-law-appeals/recent/t193097eu1.html
Surely it is time for an EBA referral to resolve the issue one way or another.
There is a long lasting line of case law which is very clear. What do three decisions weigh against the sheer mass of decisions requiring adaptation of the description.
DeleteThe board in T 3097/19 has very carefully justified its decision.
Point 3 of the catchword says:
3. The purpose of the claims to define the matter for which protection is sought (Article 84 EPC) imparts requirements on the application as a whole, in addition to the express requirements that the claims be clear, concise and supported by the description. The Board deems it to be an elementary requirement of a patent as a legal title that its extent of protection can be determined precisely. Whether this is the case for a specific patent application (or an amended patent) can only be decided with due consideration of the description. Claims and description do not precisely define the matter for which protection is sought if they contradict each other (see reasons 27 to 34).
What do three decisions weigh against the sheer mass of decisions requiring adaptation of the description
DeleteThat is the DX Thomas approach (indeed, the similarity of the wording makes me think that it is DX Thomas himself).
The volume of case law on either side is not relevant - even a single decision diverging from the established line of case law can be enough to justify a referral. All that is needed is for a Board to take the initiative to make that referral. That there are only three dissenting decisions at present is neither here nor there.
Even if the volume of dissenting decisions is small, there are clearly two ideologically opposed camps in the Boards of Appeal now. They are both setting out their positions in ever greater detail in a series of decisions which seem to be taking a tit for tat approach in response to one another. T 3097/19 is indeed notable that it has sought to justify its conclusion with legal reasons, which is a welcome contrast to earlier decisions in the same line of case law such as T 1808/06.
Under such circumstances a referral seems appropriate.
Whether the answer given by the EBA will be as wished for by one camp or another is beside the point. The important thing is that it should bring an end to the debate and provide some clarity.
@ Anonymous of Monday, 21 November 2022 at 18:33:00 GMT
ReplyDeleteWhen staying anonymous you should have the decency not to bring forward supposed names in your comments.
If you want to bring in names, get out of anonymity and do it in the open!
You’re not fooling anyone, you know.
DeleteIf you’re not even willing to address simple comments like the one above I’m not sure why you think anyone should pay attention to anything else you say.
After you, Daniel.
DeleteT 3097/19 only considers the clarity requirement of Art. 84, while the support requirement has not been used to require the amendments of the description.
ReplyDeleteT 3097/19 is thus against a "long lasting line of case law" for which the clarity requirement is not a legal basis for requiring the amendments.
What a mess...