Board of Appeal back-pedals on referral in view of "unequivocal" lack of legal basis for the description amendment requirement (T 56/21)
Attentive IPKat readers may have noticed that this Kat has been rather silent of late. Do not fear, PatKat is back! And what a better way to start off an autumnal season of IP news than with the patent blog crowd-pleaser, description amendments. Last year, the Board of Appeal in T 56/21 promised us all a referral to the Enlarged Board of Appeal (EBA) on whether the description must be adapted in line with the allowed claims (IPKat). Since then, the Board of Appeal seems to have been having its very own katnap. Now, nearly a year later, the Board of Appeal has finally issued its decision. However, in a disappointing anti-climax, the promised referral has failed to materialise. In its decision, the Board of Appeal concluded that a referral was not needed and instead found that there is unequivocally a lack of legal basis for the description amendment requirement.
Adaptation of the description: What is it all about?
The description amendment saga began with the introduction of substantially stricter guidance in the 2021 EPO Guidelines for Examination on how much the description should be adapted in line with the allowed claims. The Guidelines currently require that, when adapting the description, 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).
The issue of description amendments causes controversy because of the risks of pre-grant description amendments for the validity and successful enforcement of a granted patent. Amendments made to the description of the patent application may influence interpretation of the claims under the doctrine of equivalents in national court proceedings. The claims may also be interpreted at opposition in view of the description of the patent as granted and not the description of the application as filed (see T 471/20). Amendments to the description therefore may be considered to irretrievably add matter. These risks, and the less than clear legal basis for the requirement, has lead to considerable dissatisfaction with the EPO's bullish approach to description amendments as represented by the Guidelines.
T 56/21 case catch-up: Roche takes a stand
The case at issue in T 56/21 related to Roche's application for a modified antibody constant region (Fc) (EP 15700545.5). The Examining Division (ED) issued a notice of allowance for the application in which the Examiner had proactively amended the description in line with the allowed claims. Following the Guidelines, the Examiner had deleted a number of pages describing mutations that were considered outside the scope of the allowed claim. The Examiner had also deleted the "claim-like clauses" provided at the end of the description. Claim-like clauses are often introduced into the description of divisionals to provide explicit basis for later claim amendments. The Examiner indicated that retaining the deleted passages could lead to unclarity as to the actual scope of protection of the claims. Roche rejected the Examiner's description amendments.
Despite the controversy, a referral on description amendments has never been certain. The down-stream consequences of description amendments on claim interpretation may only become clear years after grant and, in the short term, the risks of amending the description before grant can be mitigated by filing a divisional application. However, in this case, Roche continued to refuse to amend the description and appealed the ED decision. Roche also submitted arguments supporting the Board of Appeal's stated intention to refer the issue of description amendments to the EBA (IPKat).
Board of Appeal finds no legal basis for adaptation of the description (again)
In its long-anticipated decision, the Board of Appeal considered whether the requirement for applicants to amend the description in line with the claims has legal basis in the EPC. The Board of Appeal dismissed the Guidelines themselves (the only explicit basis for the requirement) as irrelevant, given that "Article 23(3) EPC requires the members of the Boards of Appeal to comply only with the provisions of the European Patent Convention" (r. 5). Then, following the template of its previous decision in T 1989/18 (IPKat), the Board of Appeal considered and dismissed each of the provisions cited as the legal basis for the description amendment requirement.
The main body of the decision sets out the Board of Appeal's reasoning for rejecting the argument that Article 69 EPC and Article 84 EPC are linked so as to justify the use of the description to interpret the claims during examination, as opposed to post-grant. For the Board of Appeal, Article 69 EPC relates to using the description to determine the scope of protection of the granted patent, and does not therefore justify the use of the description for the purpose of claim construction or resolving ambiguities in claim during examination (r. 52). In particular, for the Board of Appeal, Article 69 EPC (and its associated Protocol) is not concerned with the assessment of patentability in examination before the EPO. Article 69 EPC is instead concerned with the extent of protection in the context of national proceedings of a European patent following such examination. Therefore, Article 69 EPC is not applicable pre-grant.
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| Adaptation of the description: A black and white issue? |
Similarly, the Board of Appeal also found that neither Rule 43 EPC or Rule 48 EPC provided the necessary legal basis for the description amendment requirement. Specifically, Article 84 EPC and Rule 43 EPC merely set forth the requirements for the claims. Furthermore, for the Board of Appeal, "Rule 48 EPC is concerned with the publication of an application and the avoidance of expressions which are contrary to public morality or public order, or certain disparaging or irrelevant statements. Rule 48 EPC thus does not provide for a ground for refusal based on the inclusion of merely 'irrelevant or unnecessary' matter in the description intended for grant and even less for 'discrepancies' between the subject-matter claimed and that disclosed in the description".
The Board of Appeal concluded that none of the legal basis proposed by other Boards of Appeal justify refusing an application based on a description that has not been adapted to the claims. In the case in question the Board of Appeal remitted the case to the ED with the order to grant the patent.
Why no referral?
The Board of Appeal also addressed directly the question of a referral on the issue to the EBA. It stated that it had decided not to proceed with the referral, as the law was "unequivocal". Specifically, "the wording of Article 84 EPC as well as its context leave no room for requiring, in examination, that the description be adapted to allowable claims to match their subject-matter". The Board was also not "persuaded by the reasons for the practice requiring the description to be adapted to allowable claims. A more uniform determination and better predictability of the extent of protection of a granted European patent in infringement proceedings can only be achieved if granted claims are clear in themselves" and found that "[i]f the legislator considers it justified to require that the description be aligned with the subject-matter of claims held allowable, the legislator should provide for the respective legal basis by way of amendment of the EPC."
Final thoughts
Undoubtedly, the initial excitement over the promised imminent description amendment referral had already dissipated somewhat in the intervening months. The case had already been overshadowed by the recent referral on the related (and more impactful issue) of whether and how much the description should be taken into account for claim interpretation (IPKat). Early speculation that the EPO may choose to combine the two issues into one referral for consideration by EBA has proved unfounded.
Aside from the absent referral, the decision of the Board of Appeal in this case is not surprising. The same Board of Appeal had already made its view clear on this issue in T 1989/18 i.e. the 2022 decision that kick-started the whole debate (IPKat). The lack of a referral means that the decision in T 56/21 will now join the mounting pile of contradictory Board of Appeal decisions on the same issue. T 56/21 will be grist to the mill for those strongly against the description amendment requirement, ensuring that this issue will continue to trouble the EPO for the foreseeable future.
Further reading
Claim interpretation
- Boeing's comma drama: Commas and taking the description into account when construing a claim (T 1127/16) (April 2021)
- Another case of catastrophic comma loss (T 1473/19): Interpreting the claims in view of the description (Jan 2023)
- EPO tries to have its cake and eat it on claim interpretation (T 0169/20) (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) (July 2023)
- Benefits and pitfalls of functional patent claims (and why the UK is out of step with the EPO on claim construction): Astellas v Teva [2023] EWHC 2571 (Pat) (Nov 2023)
- Will we have a referral on using the description for claim interpretation or is the Board of Appeal jumping the gun? (T 439/22) (Jan 2024)
- Imminent EBA referral confirmed on the question of using the description to interpret the claims (T 0439/22) (April 2024)
- BREAKING: Referral to the Enlarged Board of Appeal on claim interpretation confirmed (G1/24) (July 2024)
Description amendments
- Board of Appeal finds no legal basis for the requirement to amend the description in line with the claims (T1989/18) (Dec 2021)
- Can amending the description to summarize the prior art add matter to the patent application as filed? (T 0471/20) (Jan 2022)
- EPO Board of Appeal toes the party-line on description amendments (T 1024/18) (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) (Nov 2022)
- When is it necessary to amend the description of a patent post-grant (T2391/18) (Jun 2023)
- Board of Appeal poised on the brink of a referral on description amendments (T 56/21) (July 2023)
- Adding matter by amending the description to exclude embodiments (Ensygnia v Shell [2023] EWHC 1495 (Pat) (Aug 2023)
- Deletion of claim-like clauses: Board of Appeal finds legal basis for adaptation of the description from "the EPC as a whole" (T 0438/22) (Jan 2024)
- Discrepancies in the description should be amended in line with the claims, but do not affect interpretation of the claims (T 0447/22) (March 2024)
Reviewed by Rose Hughes
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Friday, October 18, 2024
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In para 102 of its Decision, the Board writes " Adapting the content of the description to match the subject-matter of allowable claims reduces the reservoir of technical information that could be used in national courts in the Contracting States to determine the protection conferred by the granted patent". I agree. Perhaps other jurisdictions sdee it the same way too.
ReplyDeleteHas this argument ever been put forward before, in a TBA Decision? Will it carry any weight with the members of the EBA, when they come to debate the point? Who knows?
The same argument can be used against claim amendments. Should the EPO just examine whether there is something inventive in the application and then grant a patent on the application as filed?
DeleteAs to the adaptation of the description, very recent developments are to be signaled.
ReplyDeleteThe 2024 version of GL F-IV 4.13 has been amended. It now states that the description must be adapted to the claims when inconsistencies cast (present tense) doubt about the meaning of the claims, instead of « could cast doubt » in the previous version. This aligns the condition with PCT Rule 5.29. This amendment is significant and quite positive for practitioners and examiners as well. It is of note though that the list of amendments of the 2024 GL published by the EPO depicts it as « minor » and does not detail its content.
Some colleagues have been quite pleased to find a radical change since April or May 2024 in the practice of examining divisions as to amendments entered at the Rule 71(3) stage. There are no longer substantial and numerous amendments. It is to be confirmed that this true in all technical fields and for all examining divisions.
The SQAP 2023 report published by the EPO in June as an annex to the quality report highlights the critical comments of practitioners as to the requirement to adapt the description.
This report provides valuable insights as to the quality issues and very interesting read for practitioners.
The decision of the Central division – Munich of the UPC Nanostring vs Harvard College, published last week (17 October), dealing with a request for revocation, includes a very significant statement in point 8.6. It holds that the relevant date for claim interpretation in the validity assessment is the filing or priority date of the application. This statement removes the ambiguity of Art 69 as to the meaning of the term « description » (description of the application, or of the patent as granted ?) : the description to be used for claim interpretaton is that of the application. This makes worthless post-filing amendments of the description for claim interpretation and makes irrelevant the major argument raised by the EPO to justify its previous policy.
In the case of infringement proceedings including a counter-action for revocation of the patent in suit, the principe already established by the UPC case is that the interpretation of claims must be the same for infringement and validity assessment, to avoid the « angora cat paradox » as famously called by Lord Justice Jacob. It may thus be assumed, subject to confirmation by the UPC court of appeal, that the same rule will apply to infringement proceedings.
As to the application of Art 69 to examination proceedings, decision T 5/21 will obviously raise many comments. Just one remark : I find it curious that it does not mention the principle that during examination, claims must be given their broadest technically sensible interpretation, while it is presented as « well settled » in the case law of the BOAs (I.C.4.1). In addition, it is considered applicable at the stage of search (GLB-III 3.2.5). This same remark can be voiced about the referring decision T 439/22 for EBA case G 1/24.
Mr Hagel, thanks for drawing my attention to that aspect of the UPC's decision in Nanostring vs Harvard College. It is nice to see that the Munich Central Division of the UPC has picked up on a suggestion that I made in August 2023, namely to always interpret the claims by reference to the description of the application as originally filed (https://ipkitten.blogspot.com/2023/08/adding-matter-by-amending-description.html).
DeleteRegarding the (broadest) technically sensible interpretation approach to claim interpretation, I do not believe that this represents an approach that is fundamentally distinct from the other alternatives discussed in T56/21. This is because such an approach can either be used in conjunction with a contextual approach to claim interpretation (as in T190/99) or it can be used in conjunction with the EPO's more typical acontextual approach to claim interpretation. It therefore does not represent a category of its own.
@Proof of the pudding
DeleteIt is nice that we came independently to the same conclusion as to which description is referred to in Art 69. I had pointed out in an article published in epi information 2023-1 (« About topical Art 84 issues ») the inconsistency between applying the description of the patent as granted for Art 69 purposes and assessing validity at a date which is the filing (or priority) date. The CGK of the skilled person looking at the description is defined at the filing or priority date, not at the date of grant.
It is very positive in T 56/21 that the Board considers that it is none of the EPO’s business to set guardrails restricting the interpretation of the EPC by the UPC and national courts, and that it squarely rejects as ill-based the assertion of an « overarching objective » by the BOA of T 3097/19.
To be sure, some BOA members are concerned by the emerging primacy of the UPC in the European patent arena. But the attempt to interfere with the decisions of the UPC is unwelcome in addition to be ill-based. After all, the EPO will reap huge benefits from the UP system and from the new missions it is entrusted (administration, register, handling of limitation requests).
There may be a sentiment at the EPO that they are « the best « and they « know better ». But UPC judges are very experienced in patent matters and have a broader angle than BOA members, in addition they benefit from the support of technically qualified judges. The diversity of legal cultures is also a plus.
On the other hand, I think UPC judges are wrong when they require that the EPO align with UPC case law. There must be mutual respect.
Well, I must admit that the chances of members of the UPC's judiciary reading your epi article are much higher than the chances of them spotting my comment on this forum. As relying upon the description of the application as filed resolves the inconsistency that your article points out, then it seems that the patent profession owes you a debt of gratitude for drawing attention to this problem.
DeleteSadly, it seems that not even pointing to the obvious implications of such glaring inconsistencies is likely to persuade certain EPO Boards of Appeal that their rather strained (and often circular) interpretations of Article 84 EPC do not correspond with the true object and purpose of that provision. This seems to be because certain individuals cling to such (incorrect) interpretations almost as if they represent an article of faith ... with the consequence that no amount of reasoning or evidence to the contrary will sway them from their beliefs. So long as those individuals retain their current views (and levels of influence within the EPO), there is therefore no chance of a positive resolution to this issue.
Mr Hagel, your "mutual respect" point caught my eye. Over my 50 years of patent practice I have observed the emergence and refinement of a body of law on matters of patent validity which is easily the most coherent, the best in all the world. It's the EPO's, of course. If that doesn't deserve great respect, I don't know what does.
DeleteConversely, what experience does the EPO have, of patent infringement proceedings? Not a lot, to put it mildly.
The issue with conforming the description is an ever more awkward one for the EPO. When is the validity of a patent prejudiced by less than perfect conformity? Is a well-meaning EPO, intoxicated by its success in the adjudication of issues of validity, straying into areas reserved for the courts? There is a very old saying: Let the cobbler stick to his last. Despite its age, and despite the fact that cobblers are an endangered species, it still has relevance today.
@Francis Hagel:
DeleteI believe you are misreading the UPC decision in NanoString v. Harvard.
Indeed the relevant point in time for interpreting the claims and the description "for the assessment of validity" is the (effective) filing date, i.e. we have to read the claims and the description through the eyes of the skilled person at that date. However, the text that is being interpreted is that of the claims and the description as granted. In the same decision, the UPC indeed consistently refers to paragraphs of the description of the patent.
And nothing else would make sense. A patent is a legal instrument that grants a time-limited monopoly. The scope of this monopoly has to be laid down in this legal instrument, not in some other set of documents.
I have commented the decision in my blog and found a number of problems with it:
ReplyDelete- Guidelines and boards of appeal, cf. Art 20(2) RPBA
- Interference with referral G1/24
- Adaptation of description limited to examination
- No referral to EBA
In short, the decision does not convince, or will only convince those who do not need it.
It is highly doubtful that the majority of the boards will follow this decision, given the mass of decisions which consider that the description must be adapted, whether in examination or in opposition.
All in all, there are scarcely more than a few rulings that the description need not be adapted: the present one, T 1989/18 and T 1444/20, all three from the pen of the same legal member, T 2194/19, which is equally unconvincing, and T 438/22, which considers that claim-like clauses need not be deleted.
In another blog, a claim was compared to a building and its foundations.
Foundations are there to receive the load-bearing elements of a building, such as claims based on the description of a patent application.
If an evolution is made to the project after the foundations have been created, all the load-bearing elements of the evolution must stay, in order to be supported by the existing foundations.
Claims cannot be compared to a building, but to a given perimeter.
At the time of filing, the perimeter is usually very large. The purpose of the examination is to limit the perimeter. At the time of grant, or maintenance in amended form, the description must be brought into line with the restricted perimeter. This is what Art. 84 requires when it refers to the support of claims.
If, for the sake of argument, a claim is compared to a house and its foundations, the original house is very large. After examination, the house is reduced, not by removing a floor, but by removing an entire section of the house. If the foundations are not restored, and support the rest of the house, it will collapse. Hence the need to re-establish the support.
There are two situations in which the description ought to be amended in order to restore support:
1) When an independent claim is limited by features described as optional in the description and/or present in dependent claims, the optional designation of these features must be removed from the description. Leaving the optional character of the feature is not correct, as this feature, when added to an independent claim, is no longer optional or, in other words, supported by the amended claims.
2) The same applies when certain originally disclosed embodiments are no longer covered by an amended independent claim. I'm not saying that these unpatentable embodiments must necessarily be deleted, but that they must be declared as no longer covered by the amended claims.
As long as Article 84 remains unchanged and the claim support condition is not deleted, the description will have to be brought into line with the limited claims.
Where is the legal basis? It's great to read that you disagree with the decision, but your main counter-argument seems to be that it was done similarly in the past, and therefore, it should be legal. No legal basis was provided except for an extension of what Article 84 could potentially be used for.
DeleteThis requirement to amend the specification has only recently started to be applied more rigorously by the EPO (5 years). Most representatives did not complain because they did not see the need to risk delaying the grant of their clients' patents. In contrast, Roche has decided to object to this trend and has successfully pushed back on it more than once.
The question that remains for me, and that you have not addressed, is why the EPO would want to be involved in a step where there is no clear basis for it. The EPO is responsible for the examination part of the patent, and with the exception of opposition, everything else post-grant will be dealt with by national courts or the UPC. So, why should the EPO engage in this discussion when the claims are clear in themselves?
If the requirement to amend the specification to reflect the allowable claims should allegedly be based on Article 84, why is it not an opposition ground? In the travaux préparatoires, the only reason Article 84 was advocated to be added to the grounds of opposition was to avoid overly broad claims that were not supported by the specification.
If this does not clearly show why Article 84 was never intended to be used in the way you suggest, then it is true that nothing said by any board will convince you that this practice by the EPO is going beyond what they need to do.
@ Anonymous of Monday 21 October 2024 at 15:21:00 GMT+
DeleteIf you have read my comment carefully you will undoubtedly see that I have given a legal basis for the adaptation of the description: Art 84, support of the claims. If you had not realised, Art 84 has two prongs: clarity in the ordinary sense and support of the claims by the description. In view of this legal requirement, the EPO has to “engage in this discussion [even] when the claims are clear in themselves”.
On top of this, I have given two examples in which the description ought to be adapted. I fail to see any counterargument in your comment.
That EDs have become more rigorous with the adaptation of the description is the result of a survey that at grant, in a significant number of cases, the description was not adapted to the amended claims. Like often at the EPO, the pendulum has swung happily in the other direction and it is manifest that some of the amendments carried out in the communication under R 71(3) were unreasonable, if not pedantic. This is certainly not acceptable, but it does not free the EPO and the applicants to abide by the EPC as it stands.
I agree that “The EPO is responsible for the examination part of the patent, and with the exception of opposition, everything else post-grant will be dealt with by national courts or the UPC”. With the EPC as it stands, the bare minimum for the EPO is to deliver or maintain patents in accordance with the EPC.
An broad claim need not be unclear. That Art 84 has not been considered as a ground of opposition was due to the fact that some twisted minds could always find claims unclear. The UK delegation at EPC 2000 has attempted again to introduce Art 84 as a ground of opposition. This was not followed by the other contracting states for the same reason.
In T 447/22, commented in my blog, the board held that in view of G 3/14, there were limits of the adaptation of the description after amendment in opposition. A pre-existing inconsistency cannot be removed in opposition. The adaptation of the description has to be limited to the amendments of the claims allowing maintenance.
“Roche has decided to object to this trend and has successfully pushed back on it more than once” This is correct, Roche has found an open ear with one specific legal member. Beside the decision of this legal member, I have found little more decisions besides the present one, i.e. T 1989/18 and T 1444/20, all three drafted by the same legal member, T 2194/19, which is also unconvincing, and T 438/22, which considers that claim-like clauses do not have to be deleted. Those few decisions weight little compared to the bulk of decisions requiring the adaptation of the description.
The "bulk of decisions" argument is utterly ludicrous. The oldest decision that purports to provide legal basis for adapting the description merely made a conclusory statement that this is what is required by "support". The rest of the boards followed suit without applying any critical thinking. The level of reasoning in T 56/21 goes *far* beyond the reasoning provided by any other board in the history of the EPC.
DeleteDaniel, I am sure that you are right, that other Boards will decline to follow this reasoning, this decision, at least for the time being. The more interesting issue is what guidance to the Technical Boards the EBA will hand down, in the fullness of time. My impression is that the arguments that the ED's are correct to insist on prosecution amendments to achieve strict conformity are looking increasingly wobbly. The recent decision from the Munich court looks to me like an indication of the way the wind is blowing.
DeleteWhat if I myself were a UPC judge, called upon to adjudicate both infringement and validity. I would begin at the beginning, and read the WO (or EP-A) publication, to find out what the Applicant was declaring as their invention on the date of the claim in suit. What seems to be the problem addressed, the solution declared, and the degree of support of it in the description and drawings, what is the most favoured mode, what variations and modifications are seen as being within the inventive concept. As T56/21 declares, to pare down this revelation of what was the invention on the date of the claim is to deprive me of what I need to do justice. Obliging me to compare and contrast grotesque text differences between the A and the B publications, and address the inevitable myriad of Art 123(2) EPC attacks, is extra work I would prefer not to have to do.
I agree that lay readers are liable to be confused by an unconformed description in a B publication. But lay readers and those skilled in the art, those competing to deliver more and better contributions to the art, ought to read A publications too, shouldn't they? Why should they? Perhaps because the purpose of the patent system is efficiently to disseminate enabling disclosures, as early as possible, disclosures which reveal the full width and depth of the Applicant's petition to the Patent Office. The days are gone, when the grant document was the first chance for interested members of the public to discover the disclosure content of a patent application in a First to File patent law country. Are there still engineers and scientists to read the B publication instead of the A publication? are there any patent judges troubled by "disconformity" between the granted claims and the text of the A publication?
Dear Max Drei,
DeleteThanks for your comment.
As far as a decision of the CFI UPC, is concerned, and especially if it has been issued by the Munich LD, I consider the decision, in the absence of a confirmation by the CoA as merely indicative and by no means normative.
In the Hanshow case, the Munich LD interpreted the claim taking into account its history. The CoA UPC disagreed with this view, and considered that claims have to be interpreted according to Art 69(1) and Art 1 of the Protocol.
I expressed the view in different fora that for historical reasons the EPC introduced a dichotomy between grant of a patent and its interpretation in infringement. It would be ideal that in case of an EP, that validity and infringement were looked at it in the same way in pre-grant and in post-grant procedures, but history does not allow this way of looking at the claims.
Engineers and scientists do not have to read the B specification, as knowledge dissemination is achieved by the A publication. For competitors, the situation is different, it is the B publication which matters. This publication should be as precise as possible.
In Europe, and according to the PCT, the applications have been published within 18 months for a long time. It took the US a while to come to publishing applications before grant. Your corresponding argument is thus not valid.
What the UPC CoA actually want is to adopt the way of interpreting the claims as carried out in Germany. I am not sure that the EPO should follow this way. EPO case law has shown that it can be done differently.
By requiring claims to be supported by the description, Art 84 requires a one-to-one correspondence between the description and the claims. The description must not leave any doubt as to what is claimed, and any inconsistencies between the description and the granted claims must be removed at the time of grant or maintenance in amended form.
I would not be let by the impression that the arguments that the ED's are correct to insist on prosecution amendments to achieve strict conformity are looking increasingly wobbly. May be in your eyes, but not in those of the vast majority of the boards. When looking at the case law of the boards, the odds are clear.
It is only when the notion of support of the claims will be removed from Art 84 and a kind of US-style file-wrapper estoppel is introduced into European law, that there will be no need to adapt the description.
DXThomas, it would be interesting to get your view on some real world style scenarios.
DeleteFor example, you have claims that have been amended during prosecution to address Art 84 issues and the resulting claim set is one which, while looking very different to the claims as filed, are accepted by the examining division to meet the requirements of Art 123(2). The only way to make the description conform to the allowable claims is to largely rewrite the entire description because the language of the claims, whilst now clear, is not verbatim found in the description. This scenario is common for applications that originated in Japan, China, and so on. You would be a brave attorney indeed to do a full rewrite instead of pushing back against the requirement to conform the description.
Another example: your application is an n-th generational divisional. You have been farming this family for many years and have just about managed to convince the examining division that your current claim set, based on a throw-away remark at the end of the description as filed is a standalone invention vs the parent, grand-parent, great-grand-parent and so on. Your application has just been allowed but the invention is so specific in its scope that the overall structure and way the description was originally written means that most paragraphs probably include some things that are within the scope and some things that aren't. There is no way to disentangle these things without a full rewrite. This is a scenario that is common for families that applicants want to keep alive for as long as possible. Again, you would be a brave attorney if you are going to advise your clients to go for a rewrite rather than pushing back against conforming.
No doubt you can envisage plenty of other of these kinds of real world style examples. In fact there are probably many more of these kinds of examples than examples where conformance is an easy task.
What is your approach in these kinds of cases? Do you go for the full description rewrite or do you half-heartedly change a word or two in the summary and proudly declare that your description now conforms when it does not (on a strict interpretation of the T-decisions that support description amendments).
I suspect if the boards actually knew how many granted descriptions don't comply with conformance and how much extra work the examiners would have to take on to enforce compliance, they would quietly update the guidelines and find an interpretation of the EPC that would allow them to drop the description amendments requirement.
"Bulk of decisions" is a perfectly fine argument to support the conclusion that this is the interpretation of Art. 84 which has been adopted in several decades of EPO case law. I would not be surprised to find many decisions remitting with an order to grant a patent on the basis of request XYZ "and a description and drawings to be adapted thereto" taken by the same members that now argue that there is no basis for requiring the description to be adapted.
DeleteThe fact of the matter is that this is a perfectly good interpretation of Art. 84 even if there may be others. There is no "hidden truth" here that a 100-page decision might uncover for the first time in 40 years.
The real problem is/was that for whatever reason the EPO started to apply the adaptation requirement way too strictly. On this point I have nothing to add to what DXThomas already wrote.
Btw, the argument that the EPO does not do infringement is beside the point. The UPC and national courts do validity. It is inconceivable that the legislator would not have wished the EPO and national courts to use at least somewhat compatible modes of claim interpretation for assessing validity.
"By requiring claims to be supported by the description, Art 84 requires a one-to-one correspondence between the description and the claims."
DeleteThis is lunacy.
There are numerous ways to interpret the phrase, "supported by the description". You might require a high degree of support ("well-founded") or a low degree of support ("not obviously inconsistent"). You might put the focus on the substance ("proven by evidence") or be concerned by the linguistics ("mere literal support"). The legislator intentionally left this open to be decided by judicial interpretation, allowing for the necessary bodies to find a reasonable interpretation that is sufficiently flexible to be applicable to all cases at all times.
What the legislator certainly did not intend is that "supported by the description" means that "the description shall exactly disclose what is claimed and no more and no less". If that had have been the intent, it could, should and would have been written into Article 84 as enacted: for why leave it open to interpretation?
You have fallen back on the example of a building and its foundations, and you note that a buildings and it's foundations must be co-terminus. However, you have failed to appreciate that the requirement is actually that the foundations be 'at least co-terminus' with the building: a building may be supported by foundations that are wider and deeper than are strictly necessary.
Other modes of 'support' are possible. The desk at which I am sat has legs that are narrower than the table-top, as do most tables. Four narrow posts are able to support a surface that is far greater in extent than the area covered by the posts. Some tables are supported by a single central leg. Nobody would call the table-top 'unsupported'. The same goes for my cup, which is supported by a table that is far greater in surface area.
If a narrow object (a leg) is able to support a broader object (a table), why may a claim not be supported by a description that is narrower than it? If a broad object (a table) is able to support a narrower object (a cup), why may a claim not be supported by a description that is broader than it?
I may even stretch my metaphor and rest my cup on the edge of the table. The cup now overhangs the edge of the table and, despite there not being a one-to-one correspondence between my cup and the table-top, the cup has not fallen: it is supported. I would prefer to have my cup in the centre of the table where it is more stable and less prone to falling, but there are times when resting on the edge of the table is the best or only place for my cup. Likewise, from time-to-time I may have a need for my claim to only partly overlap with my description. I do not love it - it is certainly less supported than it might be - but it is not necessarily unsupported.
"At the time of grant, or maintenance in amended form, the description must be brought into line with the restricted perimeter. This is what Art. 84 requires when it refers to the support of claims." That is very much an assertion, and one with which many would disagree. Courts rarely need to go to the description to see what is in and what is out, since for many or even most decisive claim terms there is normally no helpfully "excluded" embodiment to assist them. The requirement to adapt the description either comes from a desire to constrain the arguments that a party can make post grant, not trusting a Court to make the right decision, or from a philosophical pursuit of neatness and order, which cannot justify the additional costs of Examiner time in examining and Applicant time in adapting each paragraph of a potentially (necessarily, these days) lengthy description. This Board has it right.
ReplyDeleteWhat strikes me in the various decisions supporting a requirement to adapt the description to the claims is that a variety of different justifications are cited. There's Art. 84 itself, there's Art. 69 and the Protocol, as well as Rule 43 and Rule 48. These decisions can't even agree on the legal basis in the EPC for adapting the description - because there is none. Instead, they're all just grabbing at straws, trying to find an excuse to continue a practice that the EPO, in contrast to every other patent office in the world, for some reason thinks is absolutely critical to legal certainty for third parties.
ReplyDelete@Proof of the pudding
ReplyDeleteThank you for your appreciation. I am skeptical though that my article may have influenced UPC judges. But it may have drawn the attention of the Board of T 56/21, since it was cited in third party observations submitted on 24 Nov 2023 by "Anonymous", much like amicus curiae briefs, alongside other articles published by colleagues in CIPA Journal or epi information.
Reproduced below is a thought experiment that I posted on a different forum. Answering the questions will require a certain amount of suspending disbelief, as the device according to certain interpretations might not correspond with anything that could or would be used in practice. Nevertheless, the point of the exercise is not to fret over the technical details, but instead to contemplate possible implications of how, in practice, claims are interpreted during proceedings before the EPO.
ReplyDeleteIn this thought exercise, the aim is to determine the meaning of the term “permanently attached”. The context in which this term should be interpreted is as follows.
The factual scenario for the illustration is identical to that in T450/20, EXCEPT that:
– the application as originally filed describes an apparatus for restoring blood flow in occluded blood vessels, said apparatus comprising an implant and a guide wire, wherein the guide wire is EITHER “permanently attached” to the implant OR is “releasable” from that implant; and
– the claims of the application are amended during prosecution to delete the “releasable” alternative, which is held to read on to the prior art (D4).
The questions in this thought experiment are then as follows.
1) How is “permanently attached” interpreted in claims of the application as originally filed? That is, if the claims encompass two alternative embodiments, should those claims be interpreted such that “permanently attached” conveys a different (and non-overlapping) meaning to “releasable”?
2) Once the claims are amended during prosecution, should they be reinterpreted? That is, now that the claims no longer include the “releasable” alternative, should the term “permanently attached” be afforded a broader meaning that potentially encompasses embodiments in which the guide wire is “releasable”?
3) Assuming that the examiner believes that the apparatus with a “permanently attached” guide wire does not read on to the prior art, should the description be adapted to the allowable claims (by deleting all references to embodiments in which the guide wire is “releasable”)?
4) If the patent is granted (with an adapted description) and is then opposed, how should the OD and the Boards of Appeal interpret the claim as granted? That is, with the “releasable” alternative now completely scrubbed from the description and claims, should the term “permanently attached” be afforded the broader meaning mentioned at 2 above?
5) If the term “permanently attached” IS afforded such a broader meaning, does this mean that the patent is also invalid for added matter? In other words, is there a risk that the broad meaning now afforded to the term “permanently attached” does NOT derive CLEARLY and UNAMBIGUOUSLY from the disclosures of the patent application as originally filed?
I would be interested to learn what others on this forum make of these questions.
@ Anonymous of Wednesday 23 October 2024 at 16:57:00 GMT+1
ReplyDeleteRewriting the claim as you propose exposes you directly and unambiguously to an objection under Art 123(2). An ED accepting such a re-writing would not act according to the Guidelines and Art 123(2). Rewriting in such a case the description to bring it in accordance with the claim would indeed end up with a problem under Art 123(2) for the description. By the way, a purely formal support of the description by repeating the wording of a claim in the description does not meet the requirements of Art 84, support, cf. T 758/13.
If the claim is unclear in the opinion of the ED, I would as ED, refrain from suggesting an amendment to the claims in order to abide by the requirement of Art 84, clarity. This is the best recipe for disaster. With or without suggestion of an ED, the problem you are facing with a rewritten claim, is that you come more or less directly into a problem of added matter with the claim, and at this stage, the description is not the real problem. It can become a problem when rewritten as well.
I remember a case in which it was, in the eyes of the ED not clear where the pitch modifying device was situated. The examiner proposed to replace the wording used in the claim by “inner”, meaning near to the hub and not at the distal end of the blade, which is technically possible. The opponent rightly raised an objection raised under Art 123(2) as “inner” could also mean that the pitch modifying device could be inside the blade. This was not originally disclosed.
As far as the n-th generation of divisional is concerned, I would for a start never rewrite the description. In general, to avoid immediate problems with Art 76(1), the description remains the same for all divisional applications, only the claims are different.
If it the divisional relates to a throw-away remark at the end of the description as filed and becomes a standalone invention vs the parent, grand-parent, great-grand-parent and so on, then the likelihood to end up with a problem under Art 76(1) is great. You have then most probably taken the stand-alone item out of its context in the divisional. If it is a real stand alone item, not linked with the rest of the description, then there is no harm to identify the rest of the description as not being covered by the claims.
What is needed is a general rule on how to proceed in the two standard cases I have brought forward. That a general rule does not fit very specific situations is no harm, as any rule may suffer exceptions. What you try to do is to find special cases, in which the rule might not be generally applicable, but those cases will remain special and do not allow a generalisation.
@ Anonymous of Wednesday 23 October 2024 at 16:57:00 GMT+1
ReplyDeleteRewriting the claim as you propose exposes you directly and unambiguously to an objection under Art 123(2). An ED accepting such a re-writing would not act according to the Guidelines and Art 123(2). Rewriting in such a case the description to bring it in accordance with the claim would indeed end up with a problem under Art 123(2) for the description. By the way, a purely formal support of the description by repeating the wording of a claim in the description does not meet the requirements of Art 84, support, cf. T 758/13.
If the claim is unclear in the opinion of the ED, I would as ED, refrain from suggesting an amendment to the claims in order to abide by the requirement of Art 84, clarity. This is the best recipe for disaster. The problem you are facing with a rewritten claim, is that you come more or less directly into a problem of added matter with the claim, and at this stage, the description is not the real problem. It can become a problem when rewritten as well.
I remember a case in which it was, in the eyes of the ED not clear where the pitch modifying device was situated. The examiner proposed to replace the wording used in the claim by “inner”, meaning near to the hub and not at the distal end of the blade, which is technically possible. The opponent rightly raised an objection raised under Art 123(2) as “inner” could also mean that the pitch modifying device could be inside the blade. This was not originally disclosed.
As far as the n-th generation of divisional is concerned, I would for a start never rewrite the description. In general, to avoid immediate problems with Art 76(1), the description remains the same for all divisional applications, only the claims are different.
If it the divisional relates to a throw-away remark at the end of the description as filed and becomes a standalone invention vs the parent, grand-parent, great-grand-parent and so on, then the likelihood to end up with a problem under Art 76(1) is great. You have then most probably taken the stand-alone item out of its context in the divisional. If it is a real stand alone, not linked with the rest of the description, then there is no harm to identify the rest of the description as not being covered by the claims.
What is needed is a general rule on how to proceed in the two standard cases I have brought forward. That a general rule does not fit very specific situations is no harm, as any rule may suffer exceptions. What you try to do is to find special cases, in which the rule might not be generally applicable, but those cases will remain special and do not allow a generalisation.