Over the past couple of years, the EPO has gradually been tying itself in knots on the issues of claim interpretation and description amendment. Subject to the observations of the appellant, a Board of Appeal is now poised on the point of a referral to the Enlarged Board of Appeal (EBA) (EP 15700545.5). Thanks to Laurent Teyssèdre for first bringing this Kat's attention to the case on his blog. Both the Board of Appeal (3.3.04) and the appellant (Roche) in the case are the same as in T 1989/18, the first Board of Appeal decision to find a lack of legal basis for the description amendment requirement (IPKat).
The risks of amending the description
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| EPO ties itself in knots |
Legal basis for the description amendment requirement?
Article 84 EPC and Article 69 EPC have both been cited as legal basis for the description amendment requirement. 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 the proponents of description amendment that, given that the description shall be used to interpret the claims (Article 69 EPC), the claims can only clearly define the invention (Article 84 EPC) if they are not contradicted by the description. If there is a contradiction between the claims and the description, it is argued, a skilled person would be confused as to the scope of the claimed invention (see T 1024/18, IPKat).However, a number of Boards of Appeal have now found the description amendment requirement to lack legal basis (T 1989/18, IPKat). The Boards of Appeal in these decisions have all emphasised that it is the claims and not the description that define the scope protection.
Running parallel to the growing controversy on description amendments, is the Boards of Appeal case law confirming that, in most circumstances, the description should not be consulted for claim interpretation. According to established case law, if the claims are clear, any contradictory statements in the description can (and should) be ignored (IPKat). These decisions include the infamous "catastrophic comma loss" cases, in which the loss of a single comma from the claims put the claims out of step with the description and led the patentees into the added matter trap (T 1473/19, T 1127/16).
To this Kat, however, either the language in the description can influence how a skilled person would interpret the meaning of clear language in the claims or it can not (IPKat). At the moment the EPO is trying to have it both ways, with strict rulings against using the description to interpret the claims alongside over-the-top guidelines requiring strict adaptation of the description in line with the claim.
Roche takes a stand against description amendments
The case at issue in the most recent case related to Roche's application for a modified antibody constant region (Fc) (EP 15700545.5). The Examining Division (ED) issued a notice of allowance (71(3) communication) for the application. In the notice of allowance, the Examiner had taken it upon themselves to amend the description in line with the accepted claims. Particularly, in line with the Guidelines, the Examiner had deleted a number of pages describing mutations that were considered outside the scope of the allowed claim. The Examiner also deleted the "claim-like clauses" provided at the end of the description (claim-like clauses are often introduced into the description to provide explicit basis for later claim amendments).
According to the Examiner, it was necessary to delete the offending passages because, if retained, they could lead to unclarity as to the actual scope of protection of the claims. Roche did not accept the Examiner's description amendments, and appealed the subsequent decision of the ED to refuse the application on the basis that the unamended description led to a lack of clarity in the claims.
Referral to the EBA? It is not for the Office to harmonise the extent of protection conferred by European patents (and applications) by bringing the description in agreement with the amended claims
The Board of Appeal in the appeal case (T 0065/21, 3.3.04) recently issued a communication indicating that it is considering a referral to the EBA on the issues of description amendments and claim interpretation. The Board of Appeal identified divergent case law on the issue of whether Article 84 EPC and/or Article 69 EPC provide legal basis for the description amendment requirement.
The Board of Appeal in the case agreed that the current practice of the EPO based on the Guidelines "is difficult to reconcile with the case law on clarity requiring that the claims should be clear in themselves without having resort to the description for interpretation" (see IPKat: EPO tries to have its cake and eat it on claim interpretation (T 0169/20)). The Board of Appeal also had the following concern regarding the practise of using the description to interpret the claims:
"Systemically interpreting the claims for the purpose of assessing the requirement of patentability [...] considering the description runs the risk of reading additional limitations into the claims [...] Broad claims could thus be granted based on their narrow interpretation considering the description. This might lead to diverging decisions and jeopardize legal certainty. Article 84 EPC requires the definition of the subject-matter for which protection is sought, to be clear and concise. The focus of examination should therefore be on the clarity and conciseness of all independent and dependent claims submitted for grant. Indeed, claims have effect on any person of the public ("erga omnes") in that they define the subject-matter and thus the material boundaries of the exclusive rights [...]. Legal certainty thus requires that claims are understood without having to resort to the description." (para. 3.2.2)
The Board of Appeal continues:
"It is not for the Office to harmonise the extent of protection conferred by European patents (and applications) by bringing the description and/or the drawings of any application or patent in agreement with the amended claims held allowable." (para. 3.2.3)
The Board of Appeal concludes that, should the appellant see the need for a referral, they may consider the following question:
"Is there a lack of clarity of a claim or a lack of support of a claim by the description within the meaning of Article 84 EPC if a part of the disclosure of the invention in the description and/or drawings of the application (e.g. an embodiment of the invention, an example or claim-like clause") is not encompassed by the subject-matter for which protection is sought ("inconsistency in scope between the description and/or drawings and the claims") and can an application consequently be refused based on Article 84 EPC if the applicant does not remove the inconsistency in scope between the description and/or drawings and the claims by way of amendment of the description ("adaption of the description")?"
The Board of Appeal has now given the appellant, Roche, three months to file its own observations.
Final thoughts
It is unusual for patentees or applicants to take a stand against description amendments imposed by the EPO first instance departments. Arguing against description amendments takes time and expense that may not be justifiable once the claims have been deemed allowable. After all, a patent cannot be enforced until it is granted. During examination, the risks associated with description amendments may also be mitigated (albeit expensively) by filing a divisional application. At Opposition it is rare for a patent lacking value to the patentee to be opposed. If the claims survive opposition, the patentee is unlikely to have the appetite to continue the fight by taking a stand against description amendments.
Roche has clearly decided that this is a fight it wishes to have, at least so far. The ball is now in Roche's court and we await its response to the Board of Appeal.
Further reading
Claim interpretation
- Boeing's comma drama: Commas and taking the description into account when construing a claim (T 1127/16) (12 April 2021)
- Another case of catastrophic comma loss (T 1473/19): Interpreting the claims in view of the description (16 Jan 2023)
- EPO tries to have its cake and eat it on claim interpretation (T 0169/20) (16 March 2023)
- Construing the claims to include technical effects mentioned in the description (T 1924/20) (April 2023)
- The risk of pre-grant description amendments (T 450/20) (17 July 2023)
Description amendments
- 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)
- EPO Board of Appeal toes the party-line on description amendments (T 1024/18) (4 April 2022)
- Board of Appeal case law against the description amendment requirement starts to mount up (T 2194/19) (16 Nov 2022)
- Another Board of Appeal enters the fray on description amendments (T 3097/19) (27 Nov 2022)
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Posts
Part 1
ReplyDeleteIt is interesting to note that the communication of the board was drafted by the same legal member who had already worked on the famous T 1989/18 decision with the same applicant.
It was therefore possible to expect a repeat of what happened in T 1989/18. The only difference is that now the same legal member is suggesting a referral to the EBA. It is conceivable that the legal member would like a referral to the EBA, but does not dare to request it directly. If the applicant gives a positive answer to the question indirectly asked, the likelihood of a referral to the EBA will increase.
A referral to the EBA may not be the best solution. On the one hand, the EBA may, as it has often done, rewrite the questions or interpret them in such a way that a certain desired result is obtained. In recent years, the GCR has allowed itself to take decisions of a rather political nature, cf. G 2/19, G 3/19, G 1/21, or which serve little purpose given the abstruse nature of the answer. Cf. G 2/21.
I would therefore be wary of a referral to the GCR in its composition of recent years. Knowing what the top management of the EPO wants, cf. G 3/19 or G 1/21, and given the modification of directives F-IV, 4.3, the result is not really in doubt.
As far as the adaptation of the description is concerned, let’s stay sensible. .
If features are presented as optional in the set of claims as filed or in the description, and they end up in the independent claim, whether under examination or in opposition, it seems obvious to me that we cannot continue to claim in the description that these features are still optional.
If certain embodiments could have been representative of the invention as claimed at the time of filing, but are no longer so after examination, it seems obvious to me that I cannot continue to claim in the description that these embodiments are still representative of the invention.
Wanting to keep claim-like clauses in the description on the pretext that they may contain information that could be useful later during the life of the granted patent, shows one thing: the description has not been drafted correctly, because this information should be in the body of the description. It has never been forbidden to transfer information contained in the original claims but absent from the original description into the description.
I would be rather inclined to say that some applicants and representatives want to eat their cake and have it. Have limited claims, but to leave the description so that a broader interpretation of those claims is possible in case of litigation.
Deleting entire sections of the description can be tricky, and it is understandable that some representatives are reluctant to do so, but then it must be accepted that certain embodiments are declared not to be representative of the invention as claimed.
If the description is no longer to be amended, it should be made compulsory to consult the examination or opposition file in the event of litigation before a board of appeal of the EPO, a national or supranational court. Only then will it be possible to detect inconsistencies between the claims and the description which were willingly left in the description.
I agree with you on the need to amend the description in certain cases. This has always been a requirement in the EPO. The boards have ordered in thousands of cases that a patent be granted on a particular set of claims and "a description and drawings to be adapted thereto" or something to that effect. Board 3.3.04 still issues such decisions (e.g. T 784/19, same legal member). Are all these decisions wrong? No.
DeleteRegarding "it must be accepted that certain embodiments are declared not to be representative of the invention as claimed", in my view it should be enough to avoid suggesting that they do fall within the scope of the claims (perhaps we agree on this, too). I believe the Guidelines now require an explicit statement that certain subject-matter is outside the claims. This goes too far, and it could lead to A.123(2)/(3) trap situations.
I would add G 4/19 to the political (and legally unfounded) decisions of the EBoA.
DeleteAt any rate:
1. "If features are presented as optional in the set of claims as filed or in the description, and they end up in the independent claim" there is no need to adapt the description. Do you really think that one can argue in infringement proceedings that since a feature is mentioned as optional in the description, then this feature can be omitted from the independent claim ?
2. "If certain embodiments could have been representative of the invention as claimed at the time of filing, but are no longer so after examination, it seems obvious to me that I cannot continue to claim in the description that these embodiments are still representative of the invention". Ok but there is no need do delete these embodiments, since if they are not covered by the claims they are not representative of the (claimed) invention. An embodiment or example should be left unamended in the description unless it is explicitly stated that this embodiment or example is covered by the claims.
3. "Wanting to keep claim-like clauses in the description on the pretext that they may contain information that could be useful later during the life of the granted patent, shows one thing: the description has not been drafted correctly, because this information should be in the body of the description." Here I completely disagree, claim-like clauses are not claims but still part of the description, just written in a more structured manner than the rest. They can be useful in limitation proceedings at the EPO or in court, to easily limit a claim without objections of Art. 123(2). The EPC does not forbid at all to add at the end of the description these clauses: "The device of claim 1 including [A]. The device of claim 1 including [B]", and so on. It seems to me that the EPO does not like these clauses just because it cannot get some extra money in claims fees. However, in a democratic world, "everything which is not forbidden is allowed".
You have not replied in substance to my comment and it will thus not come as a surprise that your statements are not convincing.
DeleteWhat is of importance in an invention has to be expressed in the description in normal and plain language and not in form of cryptic indications in something one does not know what it actually represents. Either claims or description, but not claim-like clauses. This creation from over the side of the Atlantic has nothing to do in Europe.
I doubt that the EPO needs more money and that is the reason why it does not accept claim-like clauses. Stating that claim-like clauses are part of the description is a clear misuse of R 42.
Your argument is also very dangerous. Your statement boils down to say that what is not expressly forbidden by the EPC is authorised. The EPC does not forbid expressly to hold OP by ViCo, hence OP by ViCo, which have no legal basis in the EPC, are now the default form of OP in first instance. When a few years ago OP by ViCo were possible in examination, the applicant had to expressly give up his right of in-person ViCo. Where those lawyers at the EPO who introduced this necessity completely stupid?
The day what you will consider that was is is not forbidden is against your interests you will have a different opinion. This the worse argument I ever heard!
With a will to understand the EPC and not to misunderstand it, adaptation of the description to the claims is a requirement.
That it should not end up in stupid formalism goes without saying.
I am quite worried that you do not believe that "everything which is not forbidden is allowed".
DeleteI would like to believe that "everything which is not forbidden is allowed", but experience shows that reality is quite different!
DeletePart 2
ReplyDeleteOn the other hand, it should not come as surprise that Art 69 applies to the patent as granted and not to the application as filed. The examination procedure ends up with a fiction as its result is actually to establish the patent as it should have been originally filed.
There actually to lines of case law when it comes to the application of Art 69 and Art 1 of the protocol before the EPO.
Some boards want a systematic recourse to the description with the possibility to always interpret the claims, even when it comes to Art 123(2), e.g. T 1473/19, T 1167/13 or T 2773/18. All those decisions go back to T 16/87.
Other boards want to limit the recourse to the description to very specific situations, one of those being the application of Art 123(3). This line of case law is exemplified by T 169/20, T 821/20, T169/20, T 1127/16 or T 30/17. All those decisions all go back to T 1279/04.
With the reservation expressed above, a referral to the EBA on this point seems more important than on the adaptation of the description.
Having read the three comments thus far, the thought strikes me that, indeed, what we are crying out for is a declaration from the EBA as to how under the EPC one is to go about the exercise of construing claim 1 of the granted European patent and, in particular, how much use is to be made of the description when performing that exercise. Once that declaration is handed down , it will take much of the heat out of the present dabate on conforming the description.
ReplyDeleteOn the grapevine, one hears that the EPO obsession with conforming the description ever so strictly has its roots in the notorious pemetrexed case litigated all over Europe. After that, some people within the EPO thought that the national courts needed educating, how to construe a claim correctly, in the light of the description. OK then, EBA, do us all a favour. Man up, and tell us (and more importantly all the national courts that are apparently so badly in need of an education) how we should do the job. Much to be preferred to dodging the issue with protestations of "not my job, mate" and then, on the sly, ratcheting up ever higher the degree to which the description MUST be put into strict "conformity" before the EPO can even contemplate issuing a grant decision.
The patent statute in the USA also requires the claims to be construed in the light of the description, but they go about that exercise very differently. So what is the proper way under the EPC. I think it's time the EBA told us, don't you?
Dear Max Drei,
DeleteI am inclined to agree with you that the EBA should give an opinion.
I did however draw the attention that a referral to the EBA has to be well formulated.
With the propensity of the EBA to rewrite or interpret referred questions, the answer might not be what would be the most reasonable and helpful.
I am quite wary of “dynamic interpretations”.
In my humble opinion I think that there are more important topics to be dealt with by the EBA than the problem of the adaptation of the description. One of the priorities should be about the use of Art 69 during prosecution of the EPO outside the cases when it comes to Art 123(3).
"No other jurisdiction considers it necessary to force applicants to amend the description in line with the claims". Yes they do - the UK, for example. Discussed in section 18.59 of the MPP (in a different context, but the first reference I found on Google): Normally a proposal to amend the claims only (leaving consequential amendment of the description and drawings to be done when the claims are settled) would be regarded as such an attempt. A request to defer amendment of the description until the independent claims have been agreed upon should therefore be considered favourably.
ReplyDeleteInteresting is why other jurisdictions see no need for strict conforming of the description. Perhaps because the courts in those other jurisdictions find it helpful to have a pristine and 100% reliable statement of what the inventor/applicant disclosed to the Patent Office on the precise date of the claim in suit. Validity and priority contests are based on the date of the claim (which is not the date of allowance or date of grant). A description purportedly in "support" of that claim should have the same date as the claim, shouldn't it?
DeleteBut you've already got the application as filed for that.
DeleteTo my knowledge, in written procedure, a request to defer amendment of the description until the independent claims have been agreed upon has, as a rule always be considered favourably.
DeleteIt is important to provide an adapted description in case of OP and the applicant/opponent only files amended claims and does not turn up or fails to connect. For lack of a full set of documents, the application might be refused or the patent revoked.
Anonymous replies to my argument why the Office should stop meddling with the as-filed disclosure with the retort that the specification of the patent application as filed fulfils important functions when the granted patent is litigated. Indeed. I would even say that it is indispensible. In litigation, jurisdictions other than the EPO "keep it simple" by making that document not only necessary but sufficient. Only the EPO demands wholesale editing of that document thereby setting two versions of the disclosure in opposition to each other (heaven for those seeking to put validity in issue) , thereby rendering the litigation more complex and issue-rich, rather than keeping it as simple as it can be made to be.
DeleteAnd all this capriciously added complexity is for what? Perhaps those administrators at the top of the EPO Ivory Tower have, even since the debacle about the independence of the Boards of Appeal, reached a consensus that they, rather than the national courts, are the ones best equipped to handle patent litigation, infringement and validity, and to safeguard the interests of justice between the opposed parties, legal certainty and the public interest.
After all, let's face it, the EPO has become (but only in recent years) the only Patent Office that is not held in check by judgments imposed on it by an independent judicial instance, a supervisory supreme court.
Dear Max Drei,
DeleteYou have put the finger on the sore point. The boards of appeal are, in spite of the reform of 2016, and even less since this reform, not at all independent. Re-appointment is now subjected to an assessment of performance, but the criteria for re-appointment are not public.
As long as the budget of the boards will have to go through the president of the office before it is submitted to the AC, the boards will never be independent.
Decisions of the EBA have become rather political and "dynamic interpretations" of the questions referred to it, or of the EPC, allow to tailor decisions of the EBA to the desiderata of the upper management of the EPO.
I very much doubt that “those administrators at the top of the EPO Ivory Tower have, even since the debacle about the independence of the Boards of Appeal, reached a consensus that they, rather than the national courts, are the ones best equipped to handle patent litigation, infringement and validity”.
It is doing them too much honour to believe that they are capable of having such ideas. They are interested in the money they can earn, and by insisting upon an academic adaptation of the description, they can claim that they care for quality.
For a national case in which adaptation of the description played a significant role, see the decision of the English Patents Court in Ensygnia v Shell [2023] EWHC 1495 (Pat): https://www.bailii.org/ew/cases/EWHC/Patents/2023/1495.html
ReplyDeleteThere is an extensive discussion here with regard to the effects of marking certain embodiments as being “outside the scope of the claims”. One of those effects is a finding of added matter (see [167]-[188]); there is also a finding of extension of protection (analogous to Art 123(3) EPC) (see [189]-[201]). Note also that the general issue of claim construction in light of “disclaimed” subject-matter in the specification was discussed at [117]-[120].
Based on my reading, the issues there arose from post-grant amendments to the specification (the “C” specification, which was amended using the procedure under s.27 of the Patents Act 1977) rather than from amendments made prior to grant (the “B” specification as granted by the EPO), but there does not seem to be any reason why – as a general rule applicable in other cases too – the same principles would not also affect claim interpretation in light of the “B” vs. “A” specifications.
I would be interested to know if there are other cases, especially from other jurisdictions, where similar discussions have played a role.
There are commenters on this blog who often claim that adaptation of the description in no way ties the hands of the courts in determining the scope of the claim, be it for literal infringement or infringement by equivalents. This seems to me to be a "cake eating and cake having" position - how can it be that the claims are intolerably unclear unless the description is amended (necessarily implying that the description does influence the meaning of the claim), but somehow, at the same time, that amendment has no effect whatsoever on claim interpretation in post-grant proceedings?
In any event, we now have at least one case from a respected national court which suggests that adaptation of the description can indeed affect the interpretation of the claims, including but not limited to causing added matter issues which might not have arisen if the description had been left unmolested.
it reminds me of the situation of reference signs in the claims in the early days of the EPO.
DeleteA UK court had considered that reference signs would be limiting, and UK applicants, or at least a large one, systematically deleted reference signs at grant.
I doubt the EBA will be impressed by such a national decision.
I agree with you that amendments to the description are a serious matter and may well render a patent invalid via Art. 123(2)/(3) EPC. The EPO should not require applicants to add explicit statements that certain subject-matter in the description is outside the claims.
DeleteIn my view, what the EPO should require is that the description does not "claim" that something is within the scope of the invention when that contradicts the actual claims.
I do not think that anyone who argues that the description should at least in certain cases be amended is suggesting that such amendments would play no role in opposition or national proceedings. Of course such amendments will play a role! That is the whole point, both of amendments to the claims and of amendments to the description.
The whole point of the EPO examination process is to ensure that the granted patent gives the patentee the rights they are entitled to, and not more.
The EPO has no special right to require amendments to the description just as it has no special right to require amendments to the claims. The EPO does have the right (and duty) to say: in its current form the application does not meet the requirements of the EPC, so if you don't fix it we will refuse it. If an applicant does not want to fix a contradiction between claims and description by amending the description, they can try amending the claims.
In [2023] EWHC 1495 (Pat), Judge May says the case is about " European Patent (UK) EP 2 489 332 C2" filed on 25 November 2010 about " handling of encoded information" but EP2489332 was filed in 2012 and is about "Acetabular cup with rotatable bearing", i.e. a totally unrelated invention. On the other hand, national British patent GB2489332 was filed on 25 November 2010 and has matching title " Handling encoded information and identifying user" . The EPO has nothing to do with that UK patent. Incidentally, that also answers some questions on the assessment of novelty and inventive step and business methods.
DeleteOtherwise, yes, amendments of the description can violate Art.123(2).
@Harris
DeleteThe fact that as you mention the Ensygnia v. Shell EWHC decision deals with a UK national patent does not affect its relevance. The discussion of whether – and which - description amendments are inadmissible new matter would be the same for the UK part of a European patent. It is indeed very interesting that a national court provides such a detailed analysis. It is of note that the decision in s. 114 describes Art 69 EPC as an overarching principle of claim interpretation. In a not too distant future, it could be that the UPC has to delve into the subject.
Meantime, it remains to be seen how the referral suggestion of BOA 3.3.04 will fare. The EPO practice of description amendments has shown its systemic toxicity : Art 123(2) issues, BOA divides over the interpretation of Art 84, over the application of Art 69 to the examination of applications, uncertainty over the « description » referred to in Art 69. Judging the tree from the fruit, it is evident there is a serious problem and it must be cured.
A simple solution would be to draw inspiration from the PCT ISPE Guidelines Section 5.29, which requires adaptation of the description only when necessary i.e. if the terms of the claim are unclear, and states that there is no need to remove any inconsistency between the claims and the description.
The EPO's disparate approaches to claim interpretation and description amendments seems to me to point to key individuals at the EPO experiencing a form of cognitive dissonance.
ReplyDeleteOn the one hand, the EPO is of the view that a claim must be interpreted without recourse to the description when, on its own, the wording of that claim conveys a clear meaning. (Ideally, the EPO would not grant claims whose wording does not convey a clear meaning ... though that is a discussion for another day.).
On the other hand, even where, on its own, the wording of a claim conveys a clear meaning, the EPO is of the view that the description must be adapted in order to avoid any lack of clarity regarding interpretation of the claim language.
Either the language of a claim is clear or it is not. Either the content of the description affects the interpretation of that (clear) claim language or it does not. The EPO cannot have it both ways at the same time for the same claim language.
The EPO's remit does not extend to tying the hands of national courts on matters of claim interpretation. However, as illustrated by the Ensygnia case in the UK, amendments to the description (insertion of statements indicating which embodiments are not the invention) can have precisely that effect. This can also be the case for seemingly innocuous amendments, such as deletion of non-claimed embodiments - which can remove crucial context that might help to clarify the intended meaning of an unclear term.
To rub salt into the wounds inflicted by their description adaptation practice, the EPO does not even take the time to consider the matter that underpins that practice, namely interpretation of the claims (according to Article 69 EPC). Thus, EPO examiners may well end up insisting upon amendments to the description that could (impermissibly) alter the interpretation of the claims in ways that they have not considered.
It is about time that the EPO took a fresh look at this matter, and to approach it in a holistic manner that joins the dots between claim interpretation and description adaptation. Forgive me if I have my doubts about whether the EBA is the correct body to approach this task. As others have pointed out, recent history teaches us that the EBA is perfectly capable of finding ways - no matter how implausible - of upholding existing practice on issues where the EPO's management holds strong views.
The argument that the EPO may not "tie the hands of national courts" makes no sense.
DeleteThe whole purpose of the EPO's granting proceduire is to grant a patent on a text which complies with the requirements of the EPC. The EPO is obliged to insist on a text that meets the requirements, and obviously any amendments made to the text, whether to the description or the claims, will "tie the hands of the national courts". Or to put it differently: the text of the patent as granted determines the (national) legal rights conferred by the patent. It makes no sense to argue that the EPO has no business in shaping those rights. The EPO was created to do just that.
As to your other remarks, whether a "clear claim" precludes taking into account the description is an interesting question. One point of view is that the claim should always be interpreted in the light of the application/patent as a whole for novelty, inventive step, sufficiency. This does not contradict the Art. 84 requirement that the claim must be clear from its wording alone.
In the end, a claim will always have grey areas which in later opposition, validity or infringement proceedings may need to be elucidated. In that case it only makes sense to look into the description and drawings for help, even if the granted claim was "clear" within the meaning of Art. 84 (which is a question which anyway should no longer concern the opposition division or national court).
Few arguments make sense if they are misquoted. If you re-read my original comment, you will see that my argument was that the EPO's remit does not extend to tying the hands of national courts on matters of claim interpretation.
DeleteIs that an argument with which you can now agree? If not, why not?
Of course the EPO has a role in determining the wording of the claims of a patent. But that is a completely different matter to interpreting the wording of the patent claims.
The EPO's description adaptation practice can, and is indeed designed to, force (onto the national courts) a very specific interpretation of the wording of the claims as granted. That outcome is problematic enough on its own. However, it is made worse by the fact that the EPO:
(a) does not (routinely) apply the principles of Article 69(1) EPC when interpreting the language of the claims;
(b) rarely, if ever, seeks the opinion of experts upon the meaning of certain terms used in the claims;
(c) never considers Article 69(2) EPC when interpreting the language of the claims; and
(d) never considers whether amendments to the description might alter the interpretation of the language of the claims.
If left to their own devices, national courts would interpret the claims by considering not only Article 69(1) and (2) EPC but likely also expert evidence on the meaning of certain terms. So what purpose does it serve for the EPO to demand amendments to the description that can effectively shortcut the national court's deliberations, and force an interpretation of the claims that takes none of the above into account? At least in some cases, would this not render Article 69 EPC effectively otiose?
If the EPO can influence the national court's claim interpretation by requiring an amendment of the claims, then the EPO can influence the national court's claim interpretation by requiring an amendment of the description. There is simply no difference.
DeleteAgain, what the EPO does is examine whether the application (description, claims, drawings) complies with the EPC. If it does comply, then the EPO grants a patent. If it does not, then it is the applicant's responsibility to make appropriate amendments to the application (description, claims, drawings).
So the EPO does not examine only the claims. It examines the application (description, claims, drawings).
If you mean that the EPO cannot base the refusal of an application on national case law on claim interpretation, then sure. But show me one such refusal.
If the granted patent application is in such a good shape that no expert evidence is required to ascertain the meaning of the claims, then everybody wins. I am under no illusion that this can be achieved by adapting the description to the claims or vice versa, but removing conflicts is a start. Improved legal certainty is a good thing. This is why Art. 84 exists. The application of Art. 84 by the EPO in no way violates the independence of national courts.
The application of Art. 69(1) in EPO proceedings is not critical here (and Art. 69(2) definitely cannot be applied). The EPO has the general rule that any passage of a document should be interpreted in the light of the document as a whole. I do agree that it would be good if the EPO used one clearly pronounced standard of claim interpretation, and ideally the EPO and the national courts should use the same standard for validity, but this is a diferent topic.
Yes, there is a difference. The EPO may examine the claims in accordance with the EPC, but it certainly does not examine the interpretation of the claims according to the standard set by the EPC.
DeleteThere are consequences to the fact that the EPO does not conduct a proper assessment of the true meaning of the wording of the claims.
If the true meaning of the claims has not been determined, it becomes impossible for the EPO to accurately determine the disclosures of the description that "conflict" with the claims.
It also makes it perfectly possible for the EPO's interpretation of the claims to be "problematic", for example in the sense that it ascribes to the claims a meaning that is not clearly and unambiguously derivable from the disclosures of the application as filed, or that provides the patentee with an inadequate reward for their disclosure of the invention.
Further, adaptation of the description in accordance with a "problematic" interpretation of the claims can have a binding effect upon the national courts, for example where a disclosure is improperly labelled as "not the invention according to the claims".
The potentially binding effect upon national courts is perhaps the most worrying consequence. To illustrate, consider a claim that the EPO has determined to meet the requirements of the EPC and a description that has been adapted to the EPO's interpretation of the wording of those claims.
With regard to the claims, and despite the fact that the EPO will have examined them to check that they comply with the provisions of the EPC, a national court will remain free to disagree with the EPO's assessment on matters such as novelty, inventive step and sufficiency of disclosure.
With regard to the interpretation of the claims, however, it is possible that the national court may have no option but to accept the EPO's assessment, no matter how imperfect. For example, where a disclosure of the original description is labelled as "not the invention according to the claims", which national court will feel able to ignore that statement?
In such a scenario, the national court might effectively be forced to accept the EPO's interpretation of the claims, despite the fact that the EPO will not have arrived at that interpretation in accordance with the provisions of the EPC.
With regard to their practical effects upon the national courts, can you now see the distinction between pre-grant amendments to the claims and (certain) pre-grant amendments to the description?
DeleteDear Proof of the pudding,
As long as Art 84 is as it stands, pre-grant amendment to the claims and pre-grant amendments to the description will be necessary.
Art 84 has two prongs: clarity of the claims as such and support of the claims by the description.
it is difficult to follow that pre-grant amendments to the description will tie in any way the hands of a national or supra-national court. Yourself are using "may".
National courts have never been or felt bound by decisions of the BA or the EBA and vice-versa.
Just look how added-matter is considered differently between the BA/EBA and national courts.
Proof, I am afraid you have mostly lost me.
DeleteThis blogpost is about the EPO's practice to require that the description be adapted to the claims. The basis for this practice is Art. 84 EPC which requires the claims to define the invention and the description to describe the same invention. A conflict between the claims and the description violates Art. 84 (clarity and/or support, pick your favourite). To overcome such a conflict, the applicant can either amend the claims or the description, but because of how the examination procedure is conducted this will normally come down to amending the description.
Somehow you seem to be unhappy about this. But instead of arguing that the EPO does not understand Art. 84, you keep insisting that the EPO is trying to "tie the hands" of national courts (which presumably is a really bad thing).
Amendments made during EPO grant proceedings to bring the application (description, claims, drawings) into compliance with the EPC *obviously* and *necessarily* affect the rights conferred by the granted patent and thus also the determination of those rights by the national courts.
"For example, where a disclosure of the original description is labelled as "not the invention according to the claims", which national court will feel able to ignore that statement?"
For example, when a claim states "a mobile phone", which national court will feel able to ignore that statement?
The applicant is resposible for the text of the application (description, claims, drawings). If an applicant believes that the application complies with the EPC and that a proposed amendment is unnecessary and could negatively affect his rights, then he should probably not agree to it.
I agree with you that an example in the description that does not fall under the claims does not have to be labelled as "outside the claims", as long as the description does not state that it is inside the claims when it is not. But is this your only point? Weren't you arguing that the EPO may *never* require amendments to the description?
Anon,
DeleteAs they are straightforward and (I believe) quite logical, I would have thought that my arguments are not that hard to follow. They might be some that find those arguments hard to accept for one reason or another, such as preconceptions about the correctness of the EPO's description adaptation practice. However, not accepting an argument is very different to refuting it by use of (more) logical and robust counter-arguments.
You (and Hemingway) insist that, because it forms part of the EPC, the EPO must apply both prongs of Art 84, namely clarity and "support". That is a logically defensible position. What does not necessarily follow from that position, however, is the EPO's current, very strict description adaptation practice. That this is a debatable point is beyond doubt, as evidenced by the divergent lines of Board of Appeal case law.
But what applies to Art 84 surely also applies to Art 69. That is, Art 69 is a provision of the EPC that cannot be ignored and should not be effectively rendered otiose in practice. This is the context in which my arguments should be understood.
You argue that national courts are not bound by BA / EBA decisions. Whilst that is true, it is not relevant to the point that I was making. My point instead related to the practical effects of the EPO's strict description-adaptation practice, namely the practice that requires either deletion of certain embodiments or insertion of effective disclaimers (such as "not the invention according to the claims").
As a result of the EPO's practice, the national courts will, when applying Art 69 EPC, be looking at a patent description whose contents include pre-grant amendments that reflect the EPO's interpretation of the claims. As we have seen in the Ensygnia v. Shell EWHC decision, pre-grant amendments to the description can have a profound influence upon the interpretation of the claims.
You may think that this is all as it should be. That is, you may take the view that the description must be adapted to the claims and so it is inevitable that such adaptation will affect the post-grant interpretation of the claims. However, I would merely ask that you pause to consider the following.
If the EPO does not apply (all of) Art 69 EPC when interpreting the claims, how can it be certain that its interpretation of the claims is correct?
If the EPO's interpretation of the claims is not correct, could a strict adaptation of the description based upon that incorrect interpretation lead to problems post-grant?
For example, might a court have no option but to take account of (technically incorrect) pre-grant amendments that the proprietor was obliged to make in order to satisfy the EPO's interpretation of Art 84 EPC?
If so, does this mean that the EPO's practice effectively hard-bakes their (potentially incorrect) interpretation of the language of the claims into the description that the national court will look at when considering Art 69 EPC?
If so, is that an acceptable result, bearing in mind that the EPO's interpretation will not have been arrived at by rigorous application of the principles of Art 69 EPC?
Hemingway: as will be evident from the above, my main problem is with the EPO's strict description-adaptation practice. I am not aiming to tackle the question of whether there should be any requirement to adapt the description. That is a completely different matter. However, I will say that I am in favour interpreting Art 69 EPC such that it is always the description of the application as originally filed that is used to interpret the claims of a patent. I have explained my reasons for this on another post.
@proof of p: I believe the argument is stronger than you make out. The EPO interpret the claims according to the "strict, literal meaning of the wording used in the claims". Quite literally, to support their demands with menaces. "If you don't like it, APPEAL!!! More money in our coffers!"
DeleteThere is therefore no discussion to be had about the validity of their claim interpretation.
Thinking that Hemingway is busy posting in support of the EPO line on conforming the description, I blinked when I read the first sentence of the final paragraph of his Wednesday Aug 2 contribution. Here it is:
Delete"I agree with you that an example in the description that does not fall under the claims does not have to be labelled as "outside the claims", as long as the description does not state that it is inside the claims when it is not."
Why? Because for me that sentence flatly contradicts the Guidelines.
Is this then a first sign of some reflection, some reconsideration, some softening of the ultra-strict EPO line (that one must either excise from the descrn or state explicitly that the illustrated device is NOT an embodiment of "the invention")? What do you say, Hemingway?
Max Drei, I am not defending anyone's views but mine. I think my position has been entirely consistent. I am willing to be convinced by good arguments, and I am very much unwilling to let my views be decided by "the side" I might seem to be on.
DeleteThank you for that clarification, Hemingway. Appreciated.
DeleteHemingway, do you see any "good" arguments here?
DeleteAlternatively, do you believe that there is a "good" argument for the EPO's strict description adaptation practice?
As far as I can tell, the argument in favour of the EPO's current practice essentially boils down to an insistence that "support" in Art 84 EPC requires a 1:1 correspondence between the description and the claims. Whilst numerous Boards of Appeal have subscribed to that view, I would not classify that as a "good" reason ... at least not on its own. Indeed, I think that it is necessary to carefully interpret the meaning of Art 84 EPC in accordance with the methods permitted under the VCLT.
From what I have seen to date, every time that any Board of Appeal carefully (ie meticulously) interprets Art 84 EPC, they arrive at a conclusion that does not support the EPO's current practice.
The Guidelines applied at the time stated: "Finally claim-like clauses must also be deleted prior to grant, since they otherwise may lead to unclarity as to the actual scope of protection.".
ReplyDeleteThe current guidelines state: "Finally, claim-like clauses must also be deleted or amended to avoid claim-like language prior to grant since they otherwise may lead to unclarity on the subject-matter for which protection is sought."
What changed to make amendments allowable?
The explanation of the section has been amended in every version without links to case law. For a clear EPC-derived position, what is going on?
Looks like a retired EPO person has become a patent attorney, so now even patent attorneys agree with the need to waste time and money fiddling with the description! How amusing!
The number of people retired from the EPO becoming patent attorneys can most probably be counted on the fingers of one hand.
DeleteWhy go from one hamster wheel to the next?
The situation is different for people leaving the EPO before retirement. There are quite a lot of people doing so once they have passed the EQE.
Those would rather agree with the rest of the profession, rather than with the EPO.
As long as Art 84 is as it stands, adaptation of the description and deletion of claim-like clauses will be required. It might not be amusing, but it is part of life's rich tapestry.
Use the right bait and the prey can't resist a bite. Speaking as an EPO examiner, I have always believed attorneys are right about everything and we should scold ourselves for questioning them.
DeleteIt was said correctly "To my knowledge, in written procedure, a request to defer amendment of the description until the independent claims have been agreed upon has, as a rule always be considered favourably."
ReplyDeleteAnd that was the case, but it is changing/has changed. In my latest EPO-prepared IPRP, it was stated that upon regional phase entry the description should be amended and no request to defer should be made. Ridiculous.
Many EPO "requirements" were made as objections under the PCT. Ridiculous.
I have also begun to receive Article 94(3) communications from the EPO which contain remarks such as “please do not defer adaptation of the description as this only results in unnecessary delays to the grant procedure.”
DeleteHere, again, we see the pernicious influence of the EPO’s “production above all” target-driven culture.
It is absurd to include such remarks in a first communication, too. Unless the issues raised are simple and uncontroversial, it’s quite foreseeable that several rounds of examination will be needed to converge on an allowable claim set. Few applicants will want to spend time and money on making onerous description amendments only to have to re-do them or add to them each time they file a response. Better to do it all at once, if it must be done, than to do it piecemeal.
The EPO is still carrying out around 40% of the PCT work and will only issue an IPER if it has done the search.
DeleteIt is certainly not correct to bring in the PCT procedure requirements only valid in the European phase.
You should however not forget that the EPO wants to have the highest possible number of grants once a application enters the EPO. Speed being the main measure of quality, the comment in the PCT phase only reflects the thinking of the upper management of the EPO.
Do not blame the examiners. Not abiding by the instructions, is a source of trouble for them.
If examiners do not want to fired for incompetence, they have to produce as much as possible in the smallest available time.
As long as the AC will give up its control function, or in other words, as long as the tail will be wagging the dog, nothing will change.
As someone stated: if an applicant does not want to fix a contradiction between claims and description by amending the description…
ReplyDeleteIt is all about the (unclear description after the amendments) tweaking the meaning of the claims. Chemists among you will know, what is an alkyl, but what if the description defines an alkyl as a saturated, unsaturated or aromatic group optionally containing heteroatoms, what it the description in another passage defines an alkyl as CnH2n+1 group where n=1 to 10….
Amending the description during examination or post-grant to give "alkyl" its correct meaning could easily result in infringement of Art 123(2).
DeleteThe "alkyl" example is one reason why only chemists should be alloweds to draft chemistry patent applications, and anyone else doing so is negligent. Am I allowed to say that? It's a regulatory requirement for attorneys to only work in areas they are competent to practice, but that would cause all sorts of problems.
If the description defines alkyl in the nonsense way suggested, as is commonly done (!), the examiner should make a clarity objection. The skilled person would not read "alkyl" and understand it to include phenyl. However, picking all of these things up requires time, time EPO examiners are not being given (Chinese and other examiners pick this up). Once granted, of course, there is a clear problem if only the claim is read, but the description definition is relevant to interpreting the claim.
But such negligence is beneficial to the applicant, yes? They have obtained a broader scope of protection, possibly the result of the examiner failing to search the broader scope. Except, the wonderful broader claim may lack novelty or be obvious, and when the valuable patent is enforced, it may be revoked.
In this instance, the need for bringing the description into line with the claims is addressed by patentability requirements.
According to the press release of the EPO “EPO practice confirmed on adaptation of the description “ dated July 7, 2022, “the support requirement of Article 84 EPC also serves the aim of ensuring legal certainty for national post-grant proceedings.”
DeleteLet’s take the EPO at its word. To be sure, since the EPO is concerned about legal certainty for national post-grant proceedings, it can but be concerned about 123(2) issues arising from substantial description amendments before a national court or the UPC. After all, any substantial description amendment is a hazard for the validity of the granted patent because of its potential to raise a new matter issue.
Hence this suggestion for a line of argument if you wish to challenge a requirement from the ED to adapt the description to claim amendments, or 71(3) adaptation amendments entered by the ED : point out that the amendment potentially raises a new matter issue ; and place the burden of proof on the ED to demonstrate that the amendments pass Art 123(2) muster.
The recent EWHC decision Ensygnia vs Shell reported on this thread is very much a case in point to show that the new matter issues generated by typical amendments required by the EPO practice, such as the mention that an unclaimed embodiment is outside the scope of the claims.
This line of argument would be all the more justified as the EPO’s assessment can be extraordinarily stringent, as illustrated in decision T 1473/19 revoking a patent for a missing comma in a clause entered in claim 1 by the ED at the 71(3) stage.
This line of argument could be used not only to challenge description amendments but also claim amendments as in T 1473/19. A typical claim amendment raising a new matter issue is the deletion of the word “substantially” or “approximately” as instructed by GL F-IV 4.7 (e.g. delete “substantially” in “substantially vertical” when in fact the description does not disclose a strictly vertical geometry).
Mr Hagel, your comment reminds me of the notorious Bermuda Triangle found in prosecution before the EPO. The claim lacks novelty, and must be amended. But whatever amendment Applicant comes forward with is deemed to offend Art 84 or Art 123(2) EPC, or both. EPO shrugs its shoulders and declares that Applicant has only itself to blame, that Applicant finds itself in an inescapable trap (another of those!) purely because it declined to pay for competent drafting of the initial patent application as filed.
DeleteI thought that there would never be a more perfect real life example of CATCH 22 than the 123(2)/123(3) inescapable trap. But the 54/84/123(2) Bermuda Triangle in which patent applications disappear runs it close. Who would have thought that it could come to this, given the mission statement of the EPO under the EPC, to grant useful patents with a scope commensurate with the contribution to the art, and thereby promote the progress of the useful arts, to the benefit of all humanity.
What? If Art. 123(2) prevents an applicant from overcoming a lack of novelty because there is no basis in the application as filed for claiming something that is new, the EPO just shrugs its shoulders?
DeleteSorry, but what do you expect?
Dear MaxDrei,
DeleteEPO may be right that applicant has only itself to blame if the initial claim lacks novelty because it is very broad – typically purely functional definition or no field-of-use limitation - and if applicant has not provided in the original application suitable fallback positions including specific embodiments and/or field-of-use limitations and disclosed in the description relevant technical effects to support inventive step.
Applicants when drafting an application start from a blank page, they have to assess the risks of drafting strategies and cannot expect babysitting from the patent office.
The description adaptation requirement is different in that unlike a novelty objection, which is fact-based (the claim is anticipated by a piece of prior art), it is an EPO creature which relies on a hypothetical infringement assessment but entails a real risk of inadmissible new matter and revocation in opposition or court proceedings.
My suggestion would be to confront the EPO to the potential implications of their practice : it is only justified according to a hypothetical infringement scenario by a concern for legal certainty in court proceedings, but it does generate serious risks for the validity of the patent. In view of this risk, I think the request would be entirely legitimate. If the ED cannot demonstrate that the adaptation is risk-free, then it is illegitimate for the EPO to require it from applicant.
And if the ED turns down the request, applicant can claim that it violates their right to be heard and possibly submit a complaint.
What do I expect out of the EPO? Something other than a sadistic brutal squeeze between Art 123(2) and Art 84 which goes as follows:
DeleteArt 123(2) EPC: Gold Standard. Burden of proof of compliance lies with Applicant. Standard of proof to attain is "beyond any doubt".
Art 84 EPC: anything less than clarity, to a level of 100%, is a FAIL.
What I expect in pre-grant ex Parte proceedings is i) a recognition that, when all there is available for communication is words, then 100% clarity of communication is unattainable, and ii) some appreciation within the EPO that its job is (even in pre-grant examination) to strike a real life and pragmatic balance between fair protection for the inventor and reasonable legal certainty for the public.
Hemingway, I suspect you are commenting from inside the EPO. Know then that I am a huge fan of the EPO and its established case law. The EPO has done magnificently, in the past, to build up a well-deserved reputation for high quality work. But, out here in the real world, it is increasingly hard these days to be an advocate for the EPO's current ways of working. The complete distain EPO management has for all feedback from the interested circles is particularly disturbing.
Dear Max Drei,
DeleteA nice example of an inescapable trap between Art 123(2) and Art 84.
I would like to draw the attention to T 2195/18 published today. It is about turbine blades and the measurement of an angle “along or near the leading edge”.
https://new.epo.org/en/boards-of-appeal/decisions/t182195eu1.html
The patent had been maintained in amended form according to AR7 and both proprietor and opponent appealed.
The Board concluded that a blade angle measured “along and near' the leading edge” is the only direct and unambiguous disclosure in the application as filed. Consequently the omission of the wording 'and near' results in the subject-matter of claim 1 as granted extending beyond the content of the application as filed.
Claim 1 of AR 7has been amended to define the inducer having “positive local blade angles along and near the leading edge”.
The objection under Art 123(2) was thus overcome, but the amendment was considered lacking clarity. For the board, it remained ambiguous at what distance to the leading edge the blade angle is to be measured e.g. 0.5mm or perhaps 3mm or more? It was evident that, dependent upon how the expression 'near the leading edge' in claim 1 is interpreted, a turbine wheel may, or may not, fall under the scope of the claim.
The long and short is that the patent has been revoked.
I will not contribute to the discussion on the adaptation of the description as my position is well known.