If you want to start an argument amongst European patent attorneys, just mention description amendments. As the comments on this and other blogs attest, adaptation of the description is a highly divisive issue and the debate can get decidedly heated (with our US colleagues looking on with bemusement). On one side of the debate are those who believe that aligning the description with the claims is crucial for legal certainty. On the other side, are those with the view that mandatory description amendments are unnecessary, costly, and risky for patentees. The issue is now to be considered by the Enlarged Board of Appeal in G1/25 (IPKat). With the deadline approaching for submitting observations to the referral, it is worth taking a look at the submissions so far.
Description amendments: Background
The requirement for the description to be amended in line with the claims is provided in the EPO Guidelines for Examination, and is followed by examiners and Boards of Appeal with varying degrees of strictness. However, a line of case law has emerged from certain Boards of Appeal, according to which there is no legal basis in the EPC for mandatory adaptation of the description (T 1989/18, IPKat). Indeed, one Board of Appeal found the lack of legal basis for the adaptation of the description so unequivocal as to render a referral to the EBA on the issue unnecessary (T 56/21, IPKat). The divergence between the Boards of Appeal on the issue finally led to a referral last year (G1/25, IPKat).
G1/25: Case background
The referral in G1/25 is derived from T 0697/22, involving a patent owned by Knauf Insulation relating to a hydroponics growing medium. The Board of Appeal referred three questions to the EBA asking for clarification on the necessity (or otherwise) of description adaptation in both opposition and examination proceedings:
"Question 1: If the claims of a European patent are amended during opposition proceedings or opposition-appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description of the patent, is it necessary, to comply with the requirements of the EPC, to adapt the description to the amended claims so as to remove the inconsistency?
Question 2: If the first question is answered in the affirmative, which requirement(s) of the EPC necessitate(s) such an adaptation?
Question 3: Would the answer to questions 1 and 2 be different if the claims of a European patent application are amended during examination proceedings or examination-appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description of the patent application?" (emphasis added)
So far, there have been 4 amicus curiae briefs submitted;
- Michael Schmid, Richardt Patentanwälte (6 October 2025)
- Marcel Kortekaas, EP&C Patent Attorneys (9 October 2025)
- International federation of intellectual property attorneys (FICPI) (6 November 2025)
- Olaf S. Roelands, Patentwerk B.V. (13 November 2025)
Analysis of the amicus curiae
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| Description amendments |
Article 84 EPC: One direction?
A theme in the arguments against mandatory adaptation (notably by FICPI and Schmid) is the directionality of Article 84 EPC. FICPI argues that Article 84 EPC requires claims to be supported by the description, but there is no reciprocal requirement for the description to be supported or constrained by the claims. FICPI thus argues that as long as the claimed subject matter is present in the description, the presence of additional, unclaimed features (e.g., "A comprising B or C" when only B is claimed) does not logically negate that support.
Schmid's submissions align with this view, arguing that "Article 84 EPC operates in one direction only—from the claims toward the specification. It cannot be applied in reverse to exclude unclaimed subject matter from the description. Consequently, the claims take precedence in determining the extent of protection".
Article 69 EPC as legal basis for description adaptation
The debate over Article 69 EPC in the amicus curiae submissions centres on whether the description's role as an interpretive tool necessitates amendment or its preservation. Schmid argues "description adaptation has limited relevance in national infringement proceedings governed by Article 69 EPC and its Protocol. For example, the doctrine of equivalence, as applied in many EPC member states, considers whether elements not explicitly claimed may nonetheless fall within the scope of protection".
By contrast, Kortekaas views Article 69 EPC as a mandate for consistency between the claims and description, arguing that leaving inconsistencies in the text creates legal uncertainty, risks divergent judicial interpretations across different jurisdictions and would "jeopardize the philosophy of harmonization." Meanwhile, Roelands maintains that Article 69 EPC is primarily a guide for infringement courts and does not provide an explicit legal basis for the EPO to require description amendments during the grant or opposition process.
The relationship between G1/24 and G1/25
The recent G 1/24 decision is used by both sides of the argument. In G 1/24, the EBA ordered that the description should always be consulted for claim interpretation. However, the consequences of this for claim interpretation are not as clear-cut as they might have first appeared. The Boards of Appeal have so far interpreted G1/24 as not permitting patentees to use narrowing information in the description to restrict the meaning of otherwise clear claim language (IPKat). On the other hand, one Board of Appeal found that a broad definition in the description could be used to broaden otherwise clear claim language (IPKat). The approach the UPC will take remains unclear, other than that they agree with the EPO that the description should be "consulted" to interpret the claims (IPKat).
Kortekaas uses G 1/24 as a primary reason for supporting the legal basis for mandatory adaptation of the description. According to Kortekaas, "G 1/24 is a new standard which aims to harmonize the proceedings before the EPO with that of the national courts and UPC. Since the description must be consulted to interpret the claims, it is essential that the description has been subjected to a high quality examination. G 1/25 should not undermine the new standard of G 1/24".
Conversely, Schmid argues that G 1/24 proves adaptation is unnecessary. For Schmid, given that courts are now required to use the description for context, they are perfectly capable of seeing that a narrowed claim excludes broader embodiments mentioned in the text, just as they handle prosecution history estoppel.
Interaction with the UPC
A key question following G1/24 is whether the UPC and EPO are aligned on claim interpretation. The impact of G1/25 on the UPC will depend on where the UPC case law settles on this issue. Kortekaas argues that the EPO must mandate description adaptation to ensure legal certainty and avoid divergent interpretations of the claim in the courts. Kortekaas specifically points to the UPC Court of Appeal decision in NanoString v. 10x Genomics (UPC_CoA_335/2023, IPKat), noting its requirement that the description "must always be used" for claim interpretation as a primary reason for the EPO to ensure internal consistency between the claims and description.
However, Kortekaas also notes in a footnote that '[t]he expressions “are always referred to” in Reason 19 and “shall always be consulted” in the Order of G 1/24 are different from the expression “must always be used” that has been used in Headnote 2 of the order of the UPC Court of Appeal of 26 February 2024 in NanoString v. 10x Genomics (as rectified by the order of 11 March 2024). This difference in wording has led some to question the intended meaning of these expressions. It would help if the EBA reflects on this.' (Emphasis added. On past evidence of the EBA's willingness to provide clarity, PatKat won't be holding her breath).
Conversely, Schmid cites the Hamburg Local Division decision in Agfa v Gucci (UPC_CFI_278/2023) as evidence that mandatory adaptation is unnecessary. Schmid argues that Agfa v Gucci established a clear mechanism for handling discrepancies between the description and claims, whereby specifications in the description that are inconsistent with granted claims cannot be used to broaden the scope of protection (IPKat). Schmid quotes Headnote 3 of Agfa v Gucci, according to which: “specifications in the description that are not consistent with the granted claims cannot serve as a basis for a broad interpretation of a claim”.
Risks of adding matter
FICPI argues that forced adaptation can fundamentally alter the legal and technical interpretation of the patent, potentially leading to Article 123 EPC added matter issues. FICPI argues that if the presence of unclaimed subject matter affects claim interpretation, deleting it would change that interpretation, potentially invalidating the patent under Art. 123(2) or (3) EPC in view of Article 69 EPC and G 1/24. (IPKat).
Sufficiency of Disclosure (Article 83 EPC): The risk of under-enablement
FICPI and Roelands also express significant concerns that deleting "non-relevant" embodiments can leave the remaining claimed invention technically hollow, failing the requirement for a sufficient disclosure under Article 83 EPC. FICPI points out that an unclaimed embodiment often contains specific technical details or examples that provide the necessary support for a feature that remains claimed elsewhere. If these details are excised because they are no longer literally encompassed by narrowed claims, FICPI warns that the remaining description might no longer provide enough information for a person skilled in the art to carry out the invention. FICPI concludes that identifying and removing every passage that could never contribute to the interpretation of an amended claim is not only an undue burden but is practically impossible, but doing so risks creating a disclosure issue that could inadvertently invalidate an otherwise valid patent.
The relevance of "claim-like clauses"
The FICPI submission strongly contests the mandatory removal of these clauses, arguing that such a requirement is technically and legally unjustified (IPKat). According to FICPI, features or embodiments presented in the description cannot be confused with the actual claims provided there is no explicit reference to them as "claims". They warn that forced deletion can be detrimental, as these clauses often serve as a vital source of support for Article 123(2) EPC compliance, particularly in divisional applications where the initial set of claims is often appended to the description for precisely this purpose. FICPI submits that this "cleansing" process may unnecessarily harm applicants by removing the very basis they need for future amendments.
Roelands presents a more nuanced middle-ground on claim-like clauses. Roelands argues that regardless of the presence of clauses or not, the description must contain a verbatim definition of the invention or a reference to the claims to satisfy Article 84 EPC. As such, for Roelands, the adaptation of clauses should only be necessary if they render the verbal support of the amended claims ambiguous, such as when a clause presents a full alternative definition of the invention that contradicts the new claims. Otherwise, Roelands argues that if the clauses do not create such ambiguity, no additional adaptation or removal should be required.
Application-as-filed or granted?
In a recent thought-provoking addition to the debate, a recent article by KatFriend Greg Corcoran highlighted an interesting point of claim interpretation in two recent UPC Court of Appeal decisions. Greg points out that in Meril v Edwards and Amgen v Sanofi the UPC appeared to favour the application as filed over the granted specification as the basis for claim interpretation. Greg notes the UPC guidance in Nanostring to construe the claims and identify the "objective problem" in the application as filed. Greg argues that the UPC thus effectively bypasses description amendments made during grant. By contrast, according to case law of the EPO Boards of Appeal, the description of the patent application is irrelevant for claim interpretation and the claims should be interpreted in view of the granted patent (T 450/20, r. 2.16, IPKat). Since G1/24 found it "a most unattractive proposition that the EPO deliberately adopt a contrary practice to that of the tribunals that are downstream of its patents" (r.16), Greg asks if the Boards of Appeal will recognise and account for the UPC position.
Final thoughts
From this Kat's point of view, mandatory adaptation of the description seems entirely unnecessary. As FICPI points out, no other major patent office requires it. Why then has the EPO chosen to dig its heels in on the issue? The official line appears to be that description adaptation is part of the EPO's "focus on quality". However, quite apart from the legal risks pointed out in the submissions, adaptation of the description also unnecessarily increases the costs for the applicant. Indeed, this Kat heard directly from a partner at a top-tier firm (which shall remain nameless) that the billable hours were one reason he remained in favour of the requirement. Although this Kat feels that AI may very quickly remove this perverse incentive, if it has not already done so.
Regardless of where you stand on the issue, G1/25 will be closely watched.
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One thing I hope the EBA addresses is inconsistencies between examiners in the type of amendments required to "bring the description in line with the claims". My experience is that some examiners are happy with simply editing the summary to correspond to the claims intended for grant (or replacing it with a note that the invention is set out by the claims) and don't require me to touch the detailed description. Other examiners insist on extensive amendments disclaiming or deleting large parts of the detailed description. If the EBA decide to uphold the amendment requirement, I hope they at least settle on a legal basis and some general guidelines for what exactly is an inconsistency requiring an amendment and what is required to align the description with the claims.
ReplyDeleteI can see from a very strict legal perspective how they could find Q3 inadmissible, but from a practical perspective it would simply be a delay for practitioners and users of the patent system for a few years until the next referral happens in the hope of clarifying what they mean.
It will not come as a surprise that I am of the opinion, that an adaptation of the description to the claims, before grant and before maintenance in amended form, is a necessity. I see three reasons for this.
ReplyDeleteSuch an adaptation is necessary, firstly for the safety of third parties. Any doubt about the scope of protection, by leaving an inconsistency between claims and description has to be removed.
Secondly, such an adaptation is necessary, as it guarantees that the interpretation of claims is the same in procedures before the EPO and before national jurisdictions or the UPC, once the EPO has lost any competence to decide on the fate of a patent.
This does not withhold any post-grant acting judicial body to extend the protection conferred by the claims to equivalents, cf. Art 2 on the Protocol on Interpretation of Art 69 EPC.
Thirdly, such an adaption is the direct result of G 1/24, as interpreted by the boards of appeal in decisions following the issuance of the latter. Any inconsistency between claims and description should be removed by way of amendment in order to avoid the necessity of interpretative somersaults, cf. T 2027/23. G 1/24 can be held to have paved the way for G 1/25.
Any feature mentioned in an independent claim cannot be held purely optional in the description. Any originally disclosed embodiment not falling under the independent claim, does not need to be deleted, but acknowledged as not corresponding to the claimed invention. Those types of inconsistencies have, without any doubt, to be removed.
It is not because post-grant jurisdictions are able to interpret an independent claim and exclude embodiments not covered by it, that it dispenses the EPO not to ensure alignment between the claims and the description.
In the famous Agfa-Gucci case before the CFI LD Hamburg, UPC_CFI_278/2023, the mention of “chromatic” in the description should have been deleted before grant, as the claim was limited to “achromatic”. As the description was not adapted, Agfa was prompt in devising an Angora cat including “chromatic” in its claim for infringement.
A few observations.
ReplyDeleteTo my knowledge, the only provision of the EPC which concerns "doubt about the scope of protection" is the clarity provision of Article 84 EPC. That is a provision which concerns the claims, and not the description.
I am also blissfully unaware of any provision of the EPC, or indeed any hint of such a provision in the TP to that Convention, which affords the EPO both the role and the responsibility for guaranteeing that "the interpretation of claims is the same in procedures before the EPO and before national jurisdictions or the UPC". That sounds a lot like judicial imperialism, and makes no sense if - as is certain to be the case - the EPO cannot be relied upon to get claim interpretation 100% correct in 100% of cases.
Finally, any interpretation of the claims should follow the principles of Article 69 EPC. Adaptation of the description is simply not relevant to interpretation of the claims. If, due to disclosures of the description, the subject matter of the claims is unclear, then this points to a lack of clarity of the claims ... for which the remedy is amendment of the claims. On the other hand, if the subject matter of the claims is clear, then there is no doubt as to the subject matter for which protection is sought, and hence no need to amend either the description or the claims.
@ Proof of the pudding,
DeleteArticle 84 EPC reads:
The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description.
There is thus a direct link between the claims and the description.
In T 2766/17, Catchword, it was held that the description cannot contain statements contradicting the plain claim wording as it may cast doubts as to the intended meaning of this wording.
In T 758/13, Reasons 2.1, it was held that purely formal support by the description through repetition of the mention of a claimed feature does not meet the requirements of Art 84 EPC.
Even if you appear to be “blissfully unaware of any provision of the EPC, or indeed any hint of such a provision in the TP to that Convention, which affords the EPO both the role and the responsibility for guaranteeing that "the interpretation of claims is the same in procedures before the EPO and before national jurisdictions or the UPC"”, this is an aim which is pursued by the boards of appeal.
See for instance. T 2027/23, Reasons 3.5.4 (c), which states that “the second takeaway from decision G 1/24, namely a harmonised claim interpretation between national courts or the UPC and the Boards of Appeal”.
Indeed, in G 1/24, Reasons 16, one reads: “the Enlarged Board agrees with the harmonisation philosophy behind the EPC (see G 5/83, Reasons 6, and G 3/08, Reasons 7.2.2)”
There is thus nothing like judicial imperialism at stake, and if the EPO might not be 100% right on the interpretation of the claim, the same can be said of any court deciding in post-grant procedures.
What is to be avoided, cf. T 2027/23, op cit, is that “patentees could get away with different claim interpretations for validity, on the one hand, and for infringement on the other”, cf. the famous Angora cat. This is what Agfa tried to do.
In G 1/24, Reasons 7, the EBA held that “Article 69 EPC and the Protocol are arguably only concerned with infringement actions before national courts and the UPC”. As far as the EPO is concerned, it is thus incorrect to claim that “any interpretation of the claims should follow the principles of Article 69 EPC”.
However, Art 69 EPC and its Protocol of interpretation, do not hinder a national court or the UPC to consider other forms of infringement, e.g. by equivalents.
The subject matter of the claims might be clear as such, but there can be doubts as to the subject matter for which protection is sought, when the description contains statements allowing either a limited or a broadened interpretation of the claimed features. This is what the boards applying G 1/24 consider a discrepancy or inconsistency between claims and description.
In all decisions of the boards, following G 1/24, it has been made clear that if the applicant/proprietor wants to see the interpretation of claim found in the description to be taken into account, the claim has to be amended.
When the claim has been limited, any statement allowing a broader interpretation of a claim has to be removed from the description. The description has to be amended in order to remove the discrepancy/inconsistency between the original description and the claims.
It is thus an absolute necessity to amend either the description or the claims.
G 1/24 has not brought for lots applicants/proprietors what they had hoped, i.e. that the interpretation found in the description of claimed features has to take precedence over the interpretation the skilled person gains from the plain wording of the claim.
If G 1/24 is correctly applied, the times when the patent was its own dictionary have gone. It is to be hoped that G 1/25 will simply continue and complete the move started with G 1/24.
Article 84 EPC does indeed specify that "The claims ... shall ... be supported by the description". But what on earth is the connection between that requirement and "doubt about the scope of protection"?
DeleteAre you saying that doubts over claim scope arise every time that the subject matter defined by a claim is unsupported in some way? Even if the claims meet the clarity requirement of Article 84 EPC??
I fully acknowledge that you, and many of your ex-colleagues at the EPO have concerns about patent descriptions which contain unclaimed subject matter. But just having a "bad feeling" about that does not equate to grounds for invalidity under the EPC.
Determining whether there is a ground of invalidity is a step-wise process that involves interpreting the wording of a provision of the EPC and (only) then determining whether that interpretation gives rise to an objection when considering the facts of a specific case.
One simply does not work backwards by assuming that certain facts give rise to an objection and then, with that assumption in mind, working out which interpretation of a provision of the EPC might justify such an objection. However, it is plain as a pikestaff that this is precisely the kind of “cart-before-horse” approach that Boards of Appeal have adopted when it comes to objections to “unadapted” descriptions. This point is particularly evident from the Smorgasbord of different legal provisions that the Boards have attempted to use to justify addressing various “inconsistencies”. If the legal basis for adapting the description were so clear-cut, then there simply would not be such a divergence of opinion on precisely where that legal basis can be found.
At the end of the day, if the claims of a patent are clear, how can there be any "doubt about the scope of protection"?
If there is such doubt, why does it only raise a support objection under Article 84 EPC, as opposed to a clarity objection?
If the EPO can work out which disclosures support the claims and which do not, why would they worry about the national courts (or the UPC) not being able to do the same?
And should the EPO be in the business of determining what does and does not fall within "the scope of protection"? Does that not raise issues concerning Article 69 EPC and its Protocol that the EPO simply should not be getting involved with?
@ Proof of pudding,
DeleteIf you had read carefully what I said, you would have realised that a claim can be clear as such, but statements in the description can cast doubts about the exact scope of protection. I maintain that such a claim is not supported by the description.
For example, if the claim is, due to prior art, limited to an “achromatic” base colour, but the description still includes a “chromatic” base colour, then the claim is not supported by the description, as the description allows a broader scope of protection than that which can be derived directly and unambiguously from the claim wording.
This is exactly what all decisions following G 1/24 have explained. If an applicant/proprietor wants the scope of protection to be that derivable from the description, then the claim has to be amended accordingly.
I have never said, or never heard any of my colleagues saying that they have a "bad feeling" about leaving statements in the description which are not in line with what is actually claimed. It is by no means a matter of feeling, it is a matter of fact: the claims are not supported by the description and that’s it.
You seem to carefully ignore the fact that Art 84, clarity and support, is not a ground for invalidity. It is thus the duty of the EPO to grant or maintain patents which do not allow the proprietor to change its interpretation of the claimed subject matter as he thinks fit.
It might have been better if the boards had been more precise, but a general reference on Art 84 should be sufficient to people with a mind willing to understand.
National courts (or the UPC) are certainly able to work out which disclosures support the claims or not, but this does not dispense the EPO to abide by Art 84 with its two prongs, clarity as such and support.
The EPO should certainly not get involved with Art 69 and the Protocol, but it has to insure that the proprietor cannot change its interpretation as it suits him: narrow when it comes to validity but broad when it comes to infringement.
When in the past, granted European patents were only dealt with by national courts, the problem was not so manifest, and each court could decide on the interpretation it wanted.
With the upcoming of the UPC and its wider geographic range, it is necessary to put a hold to this way of behaving by proprietors and request alignment between the claims and the description, i.e. to apply Art 84 in full.
It cannot be given an absolute guarantee that a national court or the UPC cannot end up with a different interpretation of claimed subject matter than that of the EPO, but by aligning claims and description, the likelihood of such a discrepancy in interpretation is minimised.
The duty of the EPO is not to please applicants/proprietors, but to grant or maintain patents which are not open to multiple possible interpretations.
You have stated that “If an applicant/proprietor wants the scope of protection to be that derivable from the description, then the claim has to be amended accordingly”.
DeleteI could perhaps agree with that statement. The problem that I have is that your other comments seem to assume that a claim can meet the clarity requirements of Article 84 EPC even where “the description allows a broader scope of protection than that which can be derived directly and unambiguously from the claim wording”. I simply do not see how that could possibly be the case.
This all seems to link back to issues of claim interpretation, namely “EPO-style” primacy of the claims vs. interpretation in accordance with Article 69 EPC and Articles 1 and 2 of the Protocol. Indeed, your comments highlight the fundamental disconnect between the EPO’s claim interpretation and description adaptation practices, where:
(a) when interpreting the claims, and by applying “EPO-style” primacy of the claims (or, as you like to say, rejecting the concept of a patent being its own dictionary), the EPO studiously ignores potentially contradictory disclosures of the description; but
(b) when raising objections to the description, the EPO suddenly starts worrying about what might happen if, when interpreting the claims, a national court does not apply “EPO-style” primacy of the claims (and therefore accepts the concept of a patent being its own dictionary).
This is a problem that is entirely of the EPO’s own making. It is also a problem to which there is an obvious solution: the EPO should interpret claims in a manner that is compatible with (or at least not so clearly incompatible with) claim interpretations as conducted by national courts and the UPC.
As to the "bad feeling" that I mentioned, please interpret that as referring to your view (and the view of certain of your ex-colleagues) that the EPC does not “allow the proprietor to change its interpretation of the claimed subject matter as he thinks fit”. The fundamental question here is: where does it say that in the EPC?
The proprietor does not get to change the interpretation of the claims. That is fixed by the wording of the claims in combination with information / evidence which aids its interpretation, whether that be intrinsic evidence (ie disclosures of the patent application as originally filed) or extrinsic evidence (such as common general knowledge or a declaration of a person of ordinary skill in the art). Thus, the only avenues open to the proprietor are the provision of additional (extrinsic) evidence and/or arguments relating to how the evidence should be used / understood.
In an ideal world, a patent proprietor’s pre- and post-grant arguments would be entirely consistent with one another. However, we do not live in an ideal world, and nothing (not even “strict” adaptations of the description) can prevent different arguments being used at different times. There can even be situations where such differences are entirely justified, eg due to the emergence of new evidence, or a new understanding of the original evidence.
Let us be honest, what the EPO’s description adaptation practice really seeks to achieve is a poor man’s file wrapper estoppel. Whist establishing some form of file wrapper estoppel might be an interesting objective, it certainly has no basis in the EPC. And, in any event, “strict” adaptations of the description are an exceptionally bad (and likely ineffective) way to set out achieving that objective.
@ Proof of the pudding,
DeleteThe sentence “If an applicant/proprietor wants the scope of protection to be that derivable from the description, then the claim has to be amended accordingly” is not my creation. It is the conclusion one has necessarily to draw from the decisions following G 1/24, e.g. T 2027/23.
I would allow myself to add that you manifestly disagree with the conclusions drawn by the boards after G 1/24. It however happens that the last say, when it comes to validity in opposition, is with the boards and not with the applicants/proprietors and their representatives.
You do apparently not see how it could possibly be the case that “the description allows a broader scope of protection than that which can be derived directly and unambiguously from the claim wording”. I will therefore repeat an old example of mine: if the claim is about a spade, and the description explains that under a spade one can understand any kind of garden implement, it is manifest that on the one hand, the claim is limited to a spade, but with the description the applicant/proprietor wants also to seek protection for any kind of garden implement. One statement is not compatible with the other one.
When it comes to validity, the applicant/proprietor will insist that its claim is limited to a spade, but when it comes to infringement, the applicant/proprietor will insist that the scope of protection also encompasses any kind of garden implement. This is not what a patent is for.
This behaviour is exactly what Agfa did when it attacked Gucci before the CFI-LD Hamburg. As the description contained a statement covering “chromatic”, Agfa ignored the limiting wording of the claim to “achromatic” and sued for infringement on the basis of the description mentioning “chromatic”. If this does not boil down to changing the interpretation, then I wonder what can be understood under changing the interpretation. This is exactly what the board queried in T 2027/23, referring to the well known Angora cat.
The EPO’s description adaptation practice really does not seek to achieve a poor man’s file wrapper estoppel. There is no file wrapper estoppel in the European patent system. The European patent system simply wants to avoid inconsistencies between claims and description.
By the way, the CFI-LD Hamburg noted that there were several passages mentioning “chromatic” in the specification of the patent which “should have been deleted”. This is exactly the purpose of G 1/25. Following the clarification by G 1/24, the work has to be finished with G 1/25.
Doing what is suggested by the UPC-CFI LD Hamburg cannot be seen as requiring a “strict” adaptation[s] of the description which would likely be ineffective. On the contrary, it is highly effective against applicants/proprietors trying to foster Angora cats.
If during prosecution a claim is limited, any statement in the description contrary to what the skilled person would derive directly and unambiguously from the claim wording should be either deleted or marked as such.
It is not just in an ideal world, that a patent proprietor’s pre- and post-grant arguments should be entirely consistent with one another. In the not-ideal world we live in, the EPO is there to prevent different interpretations of one and the same claim being used at different times. This is an important aim which deserve support, irrespective of whether national courts and the UPC can draw their own conclusion from an ill adapted description.
With reference to your example, you have somehow overlooked the obvious (alternative) solution: the claim should be interpreted by reference to the description ... meaning that "spade" is afforded the definition provided in the description.
DeleteIs that not how the national courts and the UPC would interpret the claim? So why would the EPO deliberately adopt a divergent (and completely incompatible) approach to claim interpretation? Does that divergence of approach not generate Angora cats? And, if so, why on earth would the EPO deliberately decide to do that?
@ Proof of the pudding,
DeleteYou seem to have overlooked, willingly or not, how the boards are applying G 1/24. From all decisions following G 1/24 a clear line of case law has emerged: if the applicant/proprietor wants the interpretation given in the description to be taken into account, be it a broadening or a limiting one, the claim has to be amended accordingly.
In other words, there is no alternative solution whatsoever, although this is what you manifestly would like to be taken into account. Forget what is in the claim, but look at the description. At this rate, claims are superfluous.
If the description allows a broadened interpretation, the prior art against the claim will be broader than that warranted by the mere, limiting, claim wording, and will be commensurate with the broad interpretation allowed by the description.
If the description allows a more limiting interpretation, the prior art against the claim will be commensurate with the broad wording of the claim.
In presence of an inconsistency between claims and description, created by the different possible interpretations, national courts have no choice but to look at the description to determine the actual scope of protection.
The EPO does by no means deliberately adopt a divergent and completely incompatible approach to claim interpretation.
With G 1/24 primacy of the claim has been re-established, and it is good so. I am at a loss to see how that divergence of approach can at all generate Angora cats. If the broad or limited interpretation in the description has to be taken into account into account it has to be brought into the claim.
This will avoid the proprietor to allege that with a limited claim, it can escape broad prior art, but when it comes to infringement, in view of the broadening in the description, he can sue for infringement. We have here a first form of Angora cat.
This is exactly what Agfa did in the famous Agfa-Gucci case before the CFI-LD Hamburg. Agfa sued for infringement on the basis of “chromatic” and “achromatic”, although the claim was clearly limited to “achromatic”. In its decision, the CFI LD Hamburg, UPC_CFI_278/2023, noted that the mention of “chromatic” in the description should have been deleted before grant, as the claim was limited to “achromatic”. This exactly what has to be done in matters of adaptation of the description: delete any inconsistency between claim and description, allowing different interpretations.
Conversely, this will avoid a proprietor to claim infringement on the broad wording of the claim, but at the same time fence off prior art in view of the limited interpretation in the description. We have here a second form of Angora cat. I allow myself to invite you to look a T 2027/23 which was abundantly clear on the topic.
Actually, with G 1/24 the EPO has deliberately decided to go back to basics. This approach ought to be completed with G 1/25. No hiding in the description statements which are at odds with the interpretation which derives directly and unambiguously from the plain wording of the claim.
I do not overlook the interpretation of G 1/24 by certain Boards of Appeal. I simply doubt whether "EPO-style" primacy of the claims is truly consistent with that decision. In essence, if that is true, then the word "consult" in the EBA's ruling has no substance or practical effect. That hardly seems plausible.
DeleteOn the other hand, and given your insistence that the EPO is absolutely correct to apply "EPO-style" primacy of the claims (ie essentially interpret the claims in isolation from the description), I find it difficult to find any basis in fact for your assertion that "The EPO does by no means deliberately adopt a divergent and completely incompatible approach to claim interpretation".
Let's be honest, the entire motivation for the EPO's description adaptation practice is the fact that, compared to the EPO, the national courts and the UPC adopt a different approach to claim interpretation. Reasons 19 of G 1/24 was quite clear in stating that this was undesirable. You will therefore forgive me for struggling to find any persuasive logic in a position that supports EPO practice which sustains this divergence of claim interpretation approaches, whilst simultaneously insisting that the EPO does not deliberately adopt such a divergent approach.
@ Proof of the pudding,
DeleteWhat you call the “EPO-style" primacy of the claims, is, contrary to what you think, truly consistent with G 1/24. The word "consult" in the EBA's ruling has a lot of substance and practical effect. How the bords apply G 1/24, is more than just plausible.
It also happens that you barely ever reply to practical examples submitted to you. You prefer to stay much more with general statements, as most probably you do not have a plausible answer.
I will try once more to explain the situation. From a clear claim the skilled person cand directly and unambiguously derive interpretation A. When consulting the description, a board finds either interpretation BA.
What all the boards, applying G 1/24, have decided, is that, when the applicant/proprietor wishes interpretation B or C to be taken into account, the claim has to be amended accordingly. Without “consulting” the description this conclusion could not be reached.
The applicant/proprietor cannot fence off broad prior art relevant to the true interpretation A of the claim by alleging, that interpretation BA.
Claim interpretation A is what is valid, and it cannot be replaced by interpretation B or C as the applicant/proprietor thinks fit. “Consulting” the description, does not mean that interpretation B or C has to prevail over interpretation A which derives directly and unambiguously from what the skilled person gets from the claim wording.
National courts and the UPC may adopt a different approach to claim interpretation according to your wishes, but the EPO is not bound by the rules of claim interpretation devised by another judicial instance.
If the description is adapted to the claim, i.e. when interpretation A in the claim is replaced by interpretation B or C, then there will be no doubt about what the claim actually protects as far as validity is concerned. It will the be B or C, but not A.
It is only because the EPO has tolerated for too long that the description was not adapted to the claims, that national courts and the UPC had to carry out interpretative summersaults in order to find out exactly what was covered by the claims.
I fully support Reasons 19 of G 1/24, but with G 1/24 and possibly G 1/25, those decisions will ensure full harmonisation of the interpretation as far as validity is concerned. This will not withhold or hinder national courts and the UPC to decide, on the basis of Art 69 and the Protocol, on direct/indirect infringement, or infringement by equivalents.
I allow myself here to refer to Reasons 7 of G 1/24: “Article 69 EPC and the Protocol are arguably only concerned with infringement actions before national courts and the UPC. Such a conclusion can be drawn from the wording of Article 69 EPC and the Protocol, the drafting history of these provisions, and from their position in the EPC”.
In Reasons 9 of G 1/24, the EBA went as far as to say: “Given the above, the strictly formal answer to Question 1 would be "No".” The “above” means that neither Art 69, Reasons 7, nor Art 84, Reasons 8, can be used as clear legal basis, in terms of an article of the EPC, for claim interpretation when assessing patentability.
If patentability is be assessed as suggested by the EBA and applied by the boards, there will not be different interpretations between the EPO and national courts or the UPC, as far as validity is concerned.
The example that you provide points to a lack of clarity of the claims. That should be dealt with by amendment of the claims.
DeleteYou must have missed the part of my previous comment where I made it clear that I was discussing the scenario where the claims have already been found to meet the requirements of Article 84 EPC. You also appear to believe that the national courts and the UPC should follow "EPO-style" primacy of the claims ... when it is abundantly clear that they do not, and where it is also clear that this very fact is the entire motivation for the EPO's description adaptation practice.
I refer you to Roche's excellent amicus brief, which addresses many of the points that you have raised.
@Mr Thomas -
DeleteYou refer to the Agfa/Gucci case as supporting your position. But you seem to have overlooked that -
- the court did not explain WHY the allegedly conflicting disclosures in the description "should have been deleted" with reference to any applicable law. It seems likely that the subtext here is simply that this is their understanding of current EPO practice - they were not being asked to rule on whether that practice is correct or not; and
- despite the presence of these conflicting disclosures, the court was able to come to a claim interpretation that got rid of the Angora cat anyway: see headnote 3 ("Specifications in the description that are not consistent with the granted claims cannot serve as a basis of a broad interpretation of a claim") and the paragraph spanning pages 23-24 of the decision (" Chromatic and achromatic colours are mutually exclusive, and a colour only similar to achromatic is not achromatic. However, regardless of para [0029] being outside the scope of the patent, even when considered otherwise para. [0029] could not (and does not) override the clear definition given in para. [0021] due to the
necessity of legal certainty")
Thus the court treated this analogously to a "disclosed but not claimed is disclaimed" scenario. An elegant way of putting Angora cats back in their box, don't you agree?
The practice which you advocate, requiring strict conformity of claims and description, seems to be a solution in search of a problem.
@ Proof of the pudding,
DeleteThe example I have provided does not point to a lack of clarity. Where would you see a lack of clarity? For the skilled person, the wording of the claim allows directly and unambiguously interpretation A. When the description allows interpretation B=less than A or C=more than A, then it follows that there is an inconsistency between claims and description, but not a lack of clarity.
Most of the decisions following and referring to G 1/24, do not mention Art 84, but Art 54 and 56, as it is primarily a question of patentability and which prior art is applicable. I refer here e.g. to T 2027/723, T 0356/23 (limited interpretation possible according to the description) and T 1849/23 (broader interpretation possible according to the description).
Some decisions following G 1/24 deal with clarity, e.g. T 0981/23, T 0389/24, or added matter, e.g. T 0873/23.
In T 1588/23, the board held that unclear features cannot be ignored under G 1/24.
In T 0405/24, the board noted that, even if the order of G 1/24 could indeed be extrapolated to the assessment of compliance with Art 123(2), there is no indication in G 1/24 that “consulting” or “referring to” the description and drawings could translate to adopting a claim interpretation which ensures that the disputed feature is originally disclosed and thus necessarily complies with Art 123(2).
Such an approach which inherently assumes that there may be only one “correct” interpretation of a claim feature, namely the one derivable from the original description as its intended meaning.
Furthermore, I never said that national courts and UPC should follow the "EPO-style" primacy of the claims. If you had read carefully what I have written, I merely mentioned that as far as validity is concerned, when claims and description are on a par, there is no risk of diverging interpretation between national courts and the UPC vs. the EPO.
This leaves national courts and the UPC to decide on direct/indirect infringement and on infringement by equivalents, once the claim is held valid. What is to be avoided, is that the proprietor comes up with a different interpretation when it comes to infringement and/or validity.
You referred to “Roche's excellent amicus brief”, but I fail to see any amicus curiae from Roche. I do however see here a manifest problem of clarity on your side.
I allow myself to refer you once more to the now famous Agfa vs. Gucci, case, cf. UPC_CFI_278/2023. In this decision, the CFI LD Hamburg, noted that the mention of “chromatic” in the description should have been deleted before grant, as the claim was limited to “achromatic”.
Contrary to what you and a lot of your colleagues are thinking, this UPC decision cannot be taken as evidence that mandatory adaptation is unnecessary. It is however true that the UPC was not fooled by maintaining “chromatic” in the description.
The CFI LD Hamburg correctly concluded that “specifications in the description that are not consistent with the granted claims cannot serve as a basis for a broad interpretation of a claim”, but in the same decision, it queried the lack of adaptation of the description with the claims as granted.
The Roche brief is on the Register at: https://register.epo.org/application?documentId=ML12AT8R10T2DWK&number=EP07704142&lng=en&npl=false
DeleteWith reference to Agfa, I refer you to my comment immediately above. Is there not an absolutely massive, glaring, obvious contradiction in your position that, on the one hand, the adaptation on the description to remove "chromatic" is absolutely necessary to avoid different interpretations for infringement and validity; and on the other hand, that the court "was not fooled by maintaining "chromatic" in the description"?
The referring board in T 697/22 noticed as much at point 16.8 of its reasons.
You argue that:
Delete"For the skilled person, the wording of the claim allows directly and unambiguously interpretation A. When the description allows interpretation B=less than A or C=more than A, then it follows that there is an inconsistency between claims and description, but not a lack of clarity".
In a nutshell, this highlights the differences between our claim interpretation philosophies. For me, "consulting" the description means taking into account clear, explicit definitions provided in the description - even if those definitions do not align with "standard" definitions. For you, such definitions are to be disregarded for interpreting claims that, on their own, impart a clear meaning to those skilled in the art.
In other words, you adopt what I call an "EPO-style" primacy of the claims approach. On the other hand, my philosophy is far more aligned with the approach of the national courts and the UPC, which is to interpret the claims in the light of the whole patent specification.
You will therefore understand why I conclude that the claims lack clarity in your hypothetical example. It is simply the result of adopting a more "court-like" approach to the interpretation of the claims. That is, if the definitions in the description are taken into account, the interpretation of the claims becomes unclear - with the result that amendment of the claims is necessary, eg by incorporation of the relevant definition(s) from the description.
Strictly speaking, there is a divergence of approach even when the description and claims are fully aligned. That is, the two different approaches are still as outlined above ... it is just that there may be circumstances under which those different approaches can arrive at the same conclusion.
If you cannot find Roche's amicus, you will need to look at the online register entry for EP2124521. It is amongst the briefs filed on 29 January.
You must not be very busy as you have time reply by return of post.
DeleteWhether willingly or not, you are mixing two issues: alignment of the independent claim and the description and the position of the CFI-UPC with respect to the Angora cat. Try to read again what I have said. It is glaring, but apparently not for you.
I repeat once more, what the EPO is doing, is to avoid proprietors to change their view as they think fit. Small interpretation when it comes to the claim and broad interpretation based on the description when it comes to infringement.
It is therefore irrelevant what a national court or the UPC does in order to squeeze out any Angora cat. If the description would have been aligned with the claim limited to “achromatic” base colour, Agfa would never have been tempted to claim infringement on the basis of a “chromatic” base colour.
I invite you to have a good look at T 2027/23. It speaks about Angora cats and confirms what I have been saying all along.
@ Anon Y. Mouse,
DeleteI maintain that the UPC-CFI LD Hamburg has queried the fact that the description had not been cleared of the word chromatic before grant. This is a matter of fact and claiming that the court did not explain why is playing with words. Nothing in a decision is innocent, and I look at this comment as a kind of obiter dictum.
I further maintain that the UPC-CFI LD Hamburg was not fooled by the fact that the description had not been adapted to the claims. The UPC-CFI LD Hamburg could have stayed with the statement that "Specifications in the description that are not consistent with the granted claims cannot serve as a basis of a broad interpretation of a claim", but it added the comment on the lack of adaptation of the description. This was not innocent.
In any case , this is not a reason good enough for not admitting that there was an inconsistency/discrepancy between the independent claim as granted and the description.
How to deal with such inconsistencies/discrepancies is exactly the question the referring board is asking the EBA for a solution.
It is not be cause a national court has found a way of putting Angora cats back in their box, that the EPO should continue to grant patents which allow nurturing Angora cats. Its duty is to provide patents which are not full of traps, i.e. in which the claims says A and the description says actually B less than A or C more than A, so that the proprietor can change interpretation as he thinks fit.
Requiring strict conformity of claims and description, is the solution of the problem of inconsistencies/discrepancies between independent claims and description. You manifestly do not want to see a problem where there is a huge one.
@ Proof of the pudding, 02.02.2026 at 16:46:00
DeleteYou still not seem to have understood the message the boards convey. For example, in T 2027/23, the claim is absolutely clear as such, but the board refused any interpretative summersault when comparing the independent claim with statements in the description.
Your way of "consulting" the description which means taking into account clear, explicit definitions provided in the description - even if those definitions do not align with "standard" definitions” found in the claims, is not the way the boards see it. At the end of the day, the boards are deciding when validity is at stake, and it is their good right to decide as they do.
If the applicant/proprietor wants the definition in the description to be taken into account, the claim has to be amended accordingly, i.e. by bringing in the claim B=less than A or C=more than A instead of merely A.
Even if for the sake of arguments, it could be held that the claim with A is unclear over the statements in the description, B=less than A or C=more than A, then this unclarity has to be resolved before grant, if the claim cannot be reduced to A in view of prior art against A or C=more than A.
Your philosophy might look far more aligned with the approach of the national courts and the UPC, which is to interpret the claims in the light of the whole patent specification, but at this rate, as I said it before, we can get read of claims.
Third parties should not have to delve deep in the description to have an idea what the actual scope of protection could well be. This does in no way hinder national courts or the UPC to decide on direct/indirect infringement or infringement by equivalents.
When a national court or the UPC has to delve in the description in order to determine the actual subject-matter of the claim or the actual scope of protection, it is because the granting authority did not do its job properly before grant.
I maintain that in case of an inconsistency/discrepancy between claims and description, the description has to be adapted to any independent claim.
To be clear, your whole comments as that of Anon. Y Mouse actually comfort my views.
You say it yourself: “if the definitions in the description are taken into account, the interpretation of the claims becomes unclear - with the result that amendment of the claims is necessary, e.g. by incorporation of the relevant definition(s) from the description”. This is the view adopted by the boards following G 1/24. And this job need to be finished with G 1/25.
I fail to see any circumstance under which the different approaches can arrive at the same conclusion. Could you please provide an example? I am for practical examples not theoretical views.
OK, now seems like an opportune moment to bring an end to the back-and-forth between us on this thread.
DeleteYou asked me to address a hypothetical scenario. I answered and explained the reasoning behind my answer. You disagree with my reasoning. Fair enough. I disagree with your reasoning, especially that which appears to presume a role for the EPO in policing the arguments that patentees might attempt to make before national courts or the UPC.
Perhaps reasonable minds can differ on this point. So let's just agree to differ, rather than generate another thread with the kind of "increasingly intemperate language" noted in the amicus filed under the pseudonym Jackson Lamb.
@ Proof of the pudding,
DeleteLet’s agree to stop the discussion. We will eventually see which opinion will prevail. As far as G 1/24 is concerned, I must come to the conclusion that it was certainly not yours.
Thanks for telling us that Jackson Lamb is a pseudo. Boards of appeal never consider anonymous third parties observations. May be the EBA should do the same as the boards, when it comes to amicus curiae filed under a pseudo, an other form of being anonymous.
I noted Jackson Lamb’s comment about the "increasingly intemperate language" and its reference to T 438/22 commented in my blog. I fail to see any “intemperate language” in the comments of this decision in my blog. The same applies to the comments in my blog of T 2027/23.
I invite you to read Points 2 and 3 of the catchword in T 438/22. Points 2 and 3 of the catchword are certainly not going in the direction you would like it to go. Adding that claim-like clauses should be deleted is a point view as valid as yours.
I repeat that for the sake of legal certainty, patents when granted or maintained should not allow the proprietor to change its point of view as he thinks fit, and it should not be necessary to delve deeply in the description to know what actually falls under the scope of protection of the claims.
As the EPO is not competent to decide infringement and validity (after the opposition period) it is important to amend the description “if the latter contains subject-matter which manifestly impedes a common understanding, it is legitimate to insist on its removal under Articles 84 and 94(3) EPC and Rules 42, 48 and 71(1) EPC”.
When a national court decides on validity, it has the power to iron out inconsistencies between claims and description left by the national granting authorities. In the EPC system, the BA do not have the possibility to iron out inconsistencies between claims and description left by first instance divisions of the EPO in the absence of an appeal.
Two anonymous amicus briefs were submitted in G 4/19 and acknowledged by the EBA (see point X of the summary of facts and submissions). A number of anonymous amici also submitted briefs in G 1/21. There is no indication that these were disregarded in either case, albeit that the EBA rarely comments explicitly on *any* amicus brief specifically in any event.
DeleteI think that your understanding of "let's agree to differ" must be different to mine! Anyway, thanks for pointing out further reasons why you believe that my opinion is incorrect (and why, in your opinion, Jackson Lamb's comment is either misplaced or directed at comments other than your own).
DeleteAs you have raised a further topic (G 1/24), I will permit myself one further observation. That is:
- your amicus for G 1/24 argued that the description and figures should not be generally consulted when interpreting the claims to assess patentability; but
- the EBA held that "The description and drawings shall always be consulted to interpret the claims when assessing the patentability of an invention".
I will concede that the EBA's ruling in G 1/24 did not precisely align with my views (that the claims should always be interpreted in context, including in the light of the description). But, bearing in mind the evidence of the written record, are you seriously trying to imply that your views in some way "prevailed" in the EBA's ruling?
@ Proof of the pudding,
DeleteI can admit without hesitation that I was as wrong as the president was in G 1/24, so there is no need to make a big deal of it. Why do you have to come with such a derogatory comment?
I never, whether seriously or not seriously, tried to imply that my views prevailed over those of the EBA. Have you used an AI having hallucinations to come up with this comment?
When lecturing, I always make clear that decisions of the EBA impose themselves, not only to all the parties, but also to first instance divisions and boards of appeal. Anything else would be a betrayal of the audience. So stop spreading nonsense about alleged statements of mine.
In view of the tone of the statements uttered by “Jackson Lamb”, I am getting an idea of who could hide beside this pseudo. The statements, and the tone in which they are uttered, are quite revealing.
The EBA's ruling in G 1/24 did not align with your views, precisely or not, as you did not simply want the description to be always taken into account, but you considered that interpretations in the description should supersede interpretations the skilled person can derive directly and unambiguously from the claim wording.
Furthermore, you still defend this point of view in spite of the very clear line of case law of the boards of appeal in the decisions following G 1/24.
By the way, I will make a summary of all the amicus curiae for G 1/25. Should you be displeased with my comment, and complain to the webmaster, you know what you can expect.
@ Anon Y. Mouse,
DeleteAs time changes constantly, the position of the EBA with respect to anonymous submissions might change as well, and become aligned to that of the boards.
What are you actually pursuing with your comment? Let the hamster wheel keep running? Unless you force me too, I will stop it.
As far as the Roche comment is concerned, it is by no way surprising as the company benefited from T 56/21 and the similar decisions.
I am not "pursuing" anything; merely pointing out that anonymous or pseudonymous submissions are not automatically to be disregarded just because of this, and that there is historical precedent for such submissions in proceedings before the EBA.
DeleteIncidentally, while the Technical Boards might generally disregard anonymous third party observations, this is not always the case. In T 56/21 the Boards invited the Appellant to comment on a set of anonymous third party observations. While this may be very unusual, perhaps even unique so far (though it is not possible to search the database exhaustively to confirm this), T 56/21 disproves that the Boards "never consider" such submissions.
I am happy to see that my amicus brief has been picked up even if it was a day late thanks to technical problems here at Slough House.
DeleteI am not sure what DXThomas means by "the tone of the statements uttered" if he is referring to the contents of my amicus brief. All I said was that discussions on this topic had previously been characterised by "increasingly intemperate language". This was a footnote to a wider point about the topic giving rise to acrimonious debates. I think this thread helps to illustrate my point.
I will not be commenting further.
PS. I am not Proof of the Pudding.
@ Anon Y. Mouse-04.02.2026 at 14:33:00 GMT
DeleteIt is due to T 56/21 and a handful of decisions alike that we have now G 1/25. On the other hand, it is good that the EBA has been invited to take a decision on the topic of adaptation of the description.
Yourself and Proof of the pudding are full of praise for T 56/21, and of Roche’s amicus curiae, but this decision is for me anything but a model of coherence. In view of the argumentation brought forward, the board in T 56/21 wanted absolutely to issue its decision before G 1/24, which was not very elegant. The board has also chickened out as it had announced that it would refer question to the EBA. Not a very exemplary attitude.
Every rule might suffer an exception, but I invite you to indicate to the audience in which other recent decision than T 56/21, a board has taken into account anonymous submissions. The board in T 56/21 wanted to get some more reasons for its views. I am inclined to think that yourself and the board in T 56/21 are/were really scraping the barrel to find arguments. .
@ Jackson Lamb,
DeleteYou know very well what I meant by "the tone of the statements uttered". I would allow myself to say that if you want to catch the attention of the EBA, you have to come with a proper legal argumentation, not merely provocative sentences and a collection of documents in favour of your opinion.
As you explain that you are “a European Patent Attorney in a large private practice firm with offices in several European countries”, you can a priori not be Proof of the Pudding. As you seek anonymity, nothing is however certain. I actually know who is hiding behind the pseudo Proof of the pudding, and he does not correspond to your alleged situation, even if in the past he was working for a firm of patent attorneys.
I allow myself to add that by wanting to hide deep in the description interpretations which are either more limited or broadened, applicants/proprietors are, in my opinion, defeating the whole patent system and the raison d’être of the claims.
It is good that G 1/24 has brought an end to this and that divisions of first instance will be forced to read the description before searching and before granting. What has been started under G 1/24 should be achieved with G 1/25.
I fully stand behind what I have said on IPKat in various threads, especially the following: “It should not be allowed to leave in the description statements which allow to raise doubts about the interpretation of the claims. This has nothing to do with patronising national courts or not leaving them without any possibility to interpret the claims.”
This is what I considered to be at the core of G 1/25, following G 1/24 The best example is what the CFI-LD Hamburg said: “chromatic” should have been deleted before grant. Was the CFI-LD Hamburg so wrong with this statement?
Having been in patents since the early 1970's, what I hope for here is for the EBA to put its finger on the judicial scales in a way that will start a trend towards greater legal certainty, in post-issue litigation over infringement and validity. I am one of those who hopes for the EPO to honour the provisions of Art 84 EPC to grant only claims that are clear, by decreeing that it is the originally filed description that must deliver "support" for those claims. Prosecution amendments to the claims are admissible if they clarify a claim that, as filed, was not clear enough as to the scope of protection sought. But forcing perfect consistency between the description and those clarified claims is, I say, a misconceived crusade for more legal certainty. Why, because in the real world, conforming the description doesn't enhance legal certainty. What it does instead is to open various mischievous, misconceived and even egregious validity attacks on the issued claims which otherwise would not be available.
ReplyDeleteDXT has suggested that the price (file wrapper estoppal) of leaving the description alone is too high, too burdensome for the tyro UPC judges. But litigants will pore over every detail of the prosecution history, regardless whether or not the description is conformed and judges will have to look intensively at the description originally filed, just as much in the case of a conformed description as in an unconformed description. I think therefore that the price DXT imagines is not as high as he supposes.
@ Anonymous,
DeleteIt happenes that have also been in the patent business since the early 70’s, and at the EPO since the day 1.
I can agree with you that Art 84 should be given more credit than has sometimes been the case at the EPO. As Art 84 is not a ground of opposition, many EDs allow themselves to cut this corner and not bother about clarity as such and support of the claim. This is time gained and leads to a higher production….
Faced with an unclear claim and a not adapted description can end in a very arduous opposition procedure. It is not different in post-grant procedures. G 1/24 is a good move in this direction as it should eventually bring all EDs to read the description before grant.
As a former search examiner, I have difficulties in understanding that a search can be carried out without reading the description beforehand. The same goes when examining.
Art 84, support, cannot be interpreted as meaning that the subject-matter of the claims is to be found somewhere in the description, i.e. that it goes only from the claims to the description. The reverse way is also to be looked at.
Claims and description form a whole in which one part cannot be played against the other be it during grant and during post-grant procedures. This is how I have been trained and later advised the examiners under my responsibility.
When an independent claim is limited by optional features present in the original description, but at the same time the description is not adapted, such a claim is, in my honest opinion, not supported by the description, as it allows later the proprietor to claim a different interpretation in infringement.
The day the notion of file wrapper estoppel will be introduced in the EPC, then I can agree that the description will not have to be adapted. This does however require a diplomatic conference. Doubts are permitted about the existence of the corresponding political will.
What the boards have done in applying G 1/24, is to bring, at the end of the day, applicants/proprietors to expurge from the description any discrepancy/inconsistency between claims and description.
In any case, when assessing added-matter or the same invention with respect to the priority one has to look at the file history, either in the application itself and/or in the priority document, when there have been amendments during examination.
Courts acting in post grant procedures are free to go through the file history, but this is a notion I have not seen used heavily in national proceedings, but in case of added matter, wher it is necessary
The CFI LD Munich has tried in the Hanshow case (UPC_CFI_292/2023) to use the file history for interpreting the claim. The UPC CoA (APL_8/2024-UPC_CoA_1/2024) has quickly put an end to it and made clear that claim interpretation has to be according its decision in the 10X and Harvard/Nanostring case (UPC_CoA_335/2023 App_576355/2023).
It is manifest that litigants will pore over every detail of the prosecution history, regardless whether or not the description is conformed and judges will have to look intensively at the description originally filed, just as much in the case of a conformed description as in an unconformed description.
However, this does not withhold the EPO to apply G 1/24 and Art 84, and thereby request applicants/proprietors to remove any inconsistency between claims and description. If this is not conforming claims and description, what else can it be? This is why I am also of the opinion that G 1/25 should be the continuation of G 1/24.
Daniel, sorry but I'm not convinced that the courts in Europe have easy work and the courts elsewhere in the world have hard work because the EPO insists on removal of all inconsistencies between description and claims. What is my explanation then, that alone of all the world's Patent Offices, the EPO requires such removal? I suggest to you that it is because the presence of inconsistencies offends the praiseworthy sense of "good order" that all EPO Examiners share, whether serving in an ED an OD or as member of a TBA. As you say, the description and the claims are different parts of a unitary document which should be read as a whole. Any internal inconsistency is therefore offensive.
ReplyDeleteTherefore, they think, to let through to grant any specification with any such inconsistency within it is to fall down on the job of examining every such application for perfect compliance with every provision of the EPC.
Do they think that? I suspect that they do and, until now, and uniquely in all the world, there has been no superior legal instance to set limits to their zeal to do what they see as a competent, correct and thorough job.
Dear Max Drei,
DeleteI read your comment with interest, but you will not be surprised when I tell you that you did not convince me.
To me, it is irrelevant whether the presence of inconsistencies “offends the praiseworthy sense of "good order" that all EPO Examiners share, whether serving in an ED an OD or as member of a TBA”. The EPO and the TBA are there to apply Art 84 and the decisions of the EBA, which includes G 1/24.
When you are of the opinion that inconsistencies between description and claims should be ignored by the EPO, you thus ignore the provisions of Art 84, and you consider that the EBA should not have issued G 1/24.
I would not say that any internal inconsistency is therefore offensive, it simply does not correspond to the requirements of Art 84 and what has been decided in G 1/24.
Whilst I can agree with you that claims and description ought to be considered as whole, I have hastened to specify that one part, the description or the claims, cannot be played against the other, the claims or the description, be it during grant and during post-grant procedures.
There has to be, as much as possible, a one-to-one relationship between claims and description. This hinders applicant/proprietors to change the interpretation as they see fit.
The way the boards apply G 1/24 is exactly to avoid inconsistencies between the two. I therefore repeat that G 1/25 should be the continuation of G 1/24, as both deal with inconsistencies.
Whether other countries, especially outside Europe, do not amend the description is actually irrelevant. The EPO and the TBA are here to apply the EPC as interpreted by the EBA.
When it comes to the interpretation of the EPC there is actually a superior instance, the EBA. Talking about “zeal” in relation to removing inconsistencies, is, to say the least, inappropriate and greatly surprises me coming from a practitioner whom I hold in high regard.
At grant, strict conformity with all requirements of the EPC will never be achieved. One example is that in opposition at the EPO or in national/regional procedures, a patent can be revoked for added matter.
You might also say here that the EPO and the TBA are very “zealous” in chasing added matter in a way which is not practiced elsewhere, but here again, the EPO and the TBAs are applying the decisions of the EBA.
That the way the EPO and TBAs deal with added matter, is not to the liking of lots of people, especially on the other side of the Atlantic, is again irrelevant. But at least all parties know where they stand. The same should be valid for inconsistencies between description and claims.
It is to be welcomed that the strict stance adopted by the EPO when it comes to added matter is to be extended to inconsistencies between claims and description
It needs more to be convinced that my position, and that expressed up to now by the EPO and the TBAs, under the guidance of the EBA, is flawed.
Thanks, Daniel. Of course it "needs more" to convince you to change your personal opinion. But here I am using the thread to try to reach a wider readership, and perhaps their opinions are less firmly held, and more open to persuasion, than is yours. In any event, then the EBA issues its opinion, it will make interesting reading, for both of us.
DeleteOne thing though: it came as a surprise to me that you find "zeal" to be a slur. I had thought it to be a compliment. Sorry for any unintended insult.
Dear Max Drei,
DeleteIt is clear that what you call the “wider readership”, are your colleagues. Their point of view is for most of them well known: no adaptation of the description.
In their vast majority, their position and yours can be summarised as follows: it is not mandatory to adapt the description to the claims to ensure legal certainty for third parties. While such adaptation may facilitate interpretation of the claims, it remains an excessive requirement not grounded in the provisions of the EPC.
My personal opinion is to the contrry, and is based on my experience as former member of the EPO and in the analysis of case law of the boards and of the EBA.
You will see my detailed point of view on G 1/25 in the Amicus Curiae I have send to the Registrar of the EBA and which should be published soon.
As far as the use of “zeal” is concerned, the difference in perception might lie in our different mother tongues. In the present context, using the term “zeal” had a clear negative connotation for a Frenchman, hence my comment. As far as I am concerned, the matter is settled.
Daniel I am very much looking forward to your Amicus Brief, as soon as it becomes available.
DeleteAs to "zeal" I asked MS Copilot whether it has, in French or German, any negative connotations. When I read the answer from the AI I realised at once why my use of that English word upset you. Perhaps we can add this unfortunate example to the list of "booby traps" when shifting from one EPO language to another. Rather like, "Die sensible Dame mit dem braven Hund".
As to readership, both yours and mine, actually my hope is that at least one member of the EBA follows the IPKat blog and will read this thread. As I see it, external members of the EBA have an important role, reporting to it from the courts called upon to enforce (or not) patents duly issued by the EPO and calling into question things that, within the EPO, are seen as set in stone.
Dear Max Drei,
DeleteAs far as readership of blogs is concerned, I am pretty sure that not only IPKat, but also other blogs are regularly read by members of the BA and hence of the EBA.
As far as non-EPO members of the EBA are concerned, I do not think that they have a determining influence in the decision making of the EBA. I have witnessed many OP before the EBA when discussing referrals. I remembered one occurrence in which the non-EPO member dared asking relevant questions. In general they are much more silent than vocal. I would therefore not expect too much from non-EPO members of the EBA, as on top of this they are in the minority.
In order to insure that really independent views are considered when it comes to referrals, the members of the EBA should not be members of the BA. This is a problem which has been built in the EPC, and which in the long run, appears problematic. The EPO had proposed in 2004/2005 a reform of the BA/EBA system aiming at true independence. Alas, after the Diplomatic Conference of 2000, the contracting states were not willing to embark on this topic. The reform of 2016, might have increased the perception of the independence of the boards, but not their true independence.
At the UPC the situation is different, but I am not sure it is better. According to RoP 234 UPC, a court of first instance can take a “Decision to refer” to the full Court of Appeal, when the case is of exceptional importance and, in particular, where the decision in the action may affect the consistency and unity of the case law of the Court.
This action is comparable to a referral under Art 112 EPC. At least at the UPC, the members deciding on the referral are not at the same time members of the Court of First Instance.
On the other hand, such an action is only provided for in the RoP and not in the UPCA itself. This means that this RoP can be amended, or even deleted, by the Administrative Committee of the UPCA under Art 41(2) UPCA. An action for rehearing, comparable to a petition for review under Art 112a EPC is enshrined in the UPCA itself, cf. Art 81 UPCA + RoP 245 UPC.
There is one common problem at the UPC and at the BA, a decision to refer is left to the discretion of a first instance panel. At the EPO, boards are very reluctant to refer questions to the EBA, even the corresponding request of parties appears justified. I guess that it will be the same at the UPC.
As far as “zeal” is concerned, I appreciate that you looked into it. I was not pleased when I read it and reacted. Quite normal, I think. For me its all OK, and it is an example of word to be used with care outside one’s mother tongue. Ende gut, Alles gut.
There are other words which can be called false friends (faux amis). One of them is “eventually”. In English it expresses a certainty, in French or German a possibility. It could not be more different!
Regarding “eventual”, this is one that I come across often and I am surprised that it is not better known to practitioners either side of the language divide as it can make a significant - even critical - distinction in understanding of patent language.
DeleteThe best illustration I am aware of so far, however, comes from football. To quote the Wikipedia article on “Dunglish”:
The word eventueel in Dutch means potentially and not eventually, which is uiteindelijk in Dutch. This mistake caused a row between the Scottish and Belgian football associations when the Belgian football association invited delegates from various associations over for the "eventual qualification of the Belgian national football team" before the play-offs against Scotland started. While the Scottish federation accused the Belgians of sheer arrogance, the Belgian association had actually meant to hold the event after a "possible" qualification.
Wasn't aware of the Dunglish page. Thanks for that. I was aware of "Globish" and will see now if there is a Wikipedia page for that.
Delete@MaxDrei & @DXThomas
ReplyDeleteI am pleased to follow up on MaxDrei’s outreach to the « wider readership ». If I am forgiven for a kind of inclusive neologism, I would dare to refer to a « writership », since all of us are fairly prolific commenters on IP blogs.
I am also pleased to note that the EPO appears to have put an end to the practice of substantial amendments entered by EDs at the Rule 71(3) stage without prior consultation with the applicant. The EPO has come to realise in the Spring of 2024 that this practice was a massive violation of Art 113(2) and a significant quality issue. Another significant development was the 2024 revision of the Guideline on clarity.
The feedback from SQAP panels each made up of 2 EPO experts and 2 patent attorneys to audit 6 files in respect of the grant procedure may have played a role in the EPO’s change of tack. I know from my participation in these panels that there was consensus of the panels for strongly suggesting to ban this practice. This was mentioned in the 2023 and 2024 SQAP reports attached to the EPO quality reports. This is why I disagree with Mr Thomas when he pits representatives against the EPO. The discussions within my SQAP panel have been extremely constructive and the energy of the directorate quality to promote the SQAP audits and provide ongoing support were much appreciated. The EPO deserves great credit for that. I am not aware of anything comparable in the other patent offices.
Mr Hagel,
DeleteAmendments to the description. and even sometimes to the claims, at the R 71(3) stage should, according to the valid instructions, always have been limited to minor corrections, mainly typos and the like.
During my active time, if the examiner in charge wanted to make amendments which had a direct influence on the scope of protection, he had to get at least approval by telephone from the applicant, and the approval had to be entered in Form 2035. This approval was not binding on the applicant, who could still disagree upon receipt of the communication under R 71(3).
It is the undue pressure for more productivity/production exerted by the upper management of the EPO which lead examiners to cut corners and to try to twist the applicant’s arm by proposing a grant, but at the same time making large amendments to the description and/or the claims. This move also saved a further communication, which count for nothing in the production appraisal system.
For the same token, it was a matter of fact that in some technical areas, the description was never read before the search or before grant. If this had been done the UPC CFI would not have had to complain that the description was not in conformity with the claims. It is to be hoped that G 1/24, and later G 1/25, will put an end to this practice.
It was thus high time that the EPO reacted and reintroduced a strict limitation of amendments at the R 71(3) stage, or at least requires a proper justification for a request for amendment. The EPO does not have to be praised for re-establishing a procedure which should always have been followed, and the deviation from it has only been tolerated as it increased production.
On this topic, and contrary to what you allege, I never pitted representatives against the EPO. That I have always been, on this topic, in full agreement with representatives and considered the attitude of some first instance divisions as not acceptable is, in my opinion normal. Requesting from first instance divisions to abide by the law, can in no way be considered an action against the EPO. Here you went way too far in accusing me of such an attitude.
Indeed, when lecturing on EPO procedures, and hearing the complaints, which often had nothing to do with the topic at stake, I have always advised the audience to resist such moves at the R 71(3) stage. I am also of the firm opinion that any amendment requested by the ED before grant has to be properly justified and not merely summarised, as I have seen, with a mere “cf. Art 84”.
This is why I am of the opinion that before grant, or before maintenance in amended form, the description has to be read and aligned with the claims. On this topic, I certainly have a different opinion than that of the vast majority of representatives, but this is my sincere belief.
Mr Thomas,
ReplyDeleteThank you for your answer. I am pleased that we agree to a large extent as to the 71(3) practice.
I also agree with you as to the need for examiners to read the description. And this should be done before the search, so that the scope of the search can take into account significant information such as the problem as exposed by the applicant, salient technical effects and possible fallback positions. In addition, when the description is "consulted" per G 1/24, this makes for more efficient examination. Logically, after G 1/24, the management can be expected to instruct and train examiners accordingly.
I
Mr Hagel,
DeleteIt is nice to hear from you that you were pleased that “we agree to a large extent as to the 71(3) practice”.
It remains that you alleged that I was, in this matter, pitting representatives against the EPO. I wish to retain that this allegation is totally incorrect, and that you have not withdrawn it as it should have been the case.
Your considerations relating to G 1/24 cannot compensate for this missing statement.
If a post considers that the colleagues of a patent practitioner are of the view that there should be no adaptation of the description, and the person writing that post has indicated that this is the current practice of the EPO, is this not pitting representatives against the EPO?
DeleteIs it? Perhaps "pitting" means one thing to a person whose first language is English and something different to a person whose first language is French. Or is it that context is everything and the meaning of pitting is dependent on context. Or both.
DeleteIn view of the last comments, I draw one conclusion: people no having as mother tongue, the language of the blog should avoid using terms which could lead to different interpretations or confusion.
DeleteIn Reasons 2, 1st §, of T 1756/23, the board noted that “the amendments underlying feature (g), which were apparently proposed by the examining division in its communication under Rule 71(3) EPC, introduce subject-matter which extends beyond the content of the application as filed Claim 1 AR3 infringed Art 123(2)”.
When looking at page 2 of Form 2025 one reads; “CLAIMS 1, 5: As agreed over the phone with the Applicant on 25-11-2020 (Guidelines C-VII, 2.6).
In this case the ED abided by the Guidelines, the then applicant tacitly agreed to the amendments by filing the translations and paying the granting fee, but the amendments introduced added-matter.
It till consider that reminding of the valid procedure, cannot be considered as taking position in favour of representatives and against the EPO.
Mr Thomas,
DeleteI was not correct when I wrote that you were pitting representatives against the EPO and I withdraw this comment. In your reply to MaxDrei of 17 January, you actually emphasised a division of opinion (I agree that « pitting » was overstated) between representatives (« your colleagues ») and yourself (not between representatives and the EPO.)
As far as I am concerned, the matter is settled and I acknowledge that you have withdrawn your comment.
DeleteI see that Daniel Thomas and Francis Hagel have now filed their respectiobservations in G1/25 on the EPO file. I offer the following comment here, to stir the pot a little more.
ReplyDeleteAlthough the EPO provides a service to inventors and applicants, its duty is to the public, society, the common good. The exclusive right given by the patents it grants are awesome in their power. It is reasonable then, that the EPO requires of applicants a set of documents to grant, which declare what the invention is, and then define in the claims the subject matter which the patent is to protect. That's not too much to ask, is it? Next point: just because the EPO is the only one of the world's large Patent Offices which requires the descrcription to be purged of inconsistencies does not mean that the EPO is wrong to insist on it. Increasingly, the world will come to look to multi-national Europe to set reasonable international standards for doing business. Finally, when patent dratters know that conformity is going to be required, they will have a stronger incentive to do a thorough patentability analysis of the prior art, before they start drafting. This will raise drafting standards, for the benefit of the public.
That said, it is the A (or WO) publication that is of interest to engineers and scientists. The B publication is not for them; rather it is for the lawyers, and they can understand a document that is a composite of the as-filed disclosure in support of the as-granted claims.
I await with great interest the reasoning in G1/25.
Dear Max Drei,
DeleteI read with great interest the following comment of yours: “just because the EPO is the only one of the world's large Patent Offices which requires the description to be purged of inconsistencies does not mean that the EPO is wrong to insist on it”. This is the first time I read something like this from you.
I do agree with you that often the silent player in the game is forgotten: the public at large, or in other words, the society. I do also agree with you that the “exclusive right given by the patents it grants are awesome in their power”. It is certainly reasonable “that the EPO requires of applicants a set of documents to grant, which declare what the invention is, and then define in the claims the subject matter which the patent is to protect” It is certainly not too much to ask.
I am also awaiting with great interest the reasoning in G1/25.
Me again, Daniel. I am glad we agree on many things. But I have to say that I also agree with much of what Pudding has written in this thread today.
DeleteI think that a B publication can declare what the invention is, and define what the scope of protection is, even when the EPO refrains from enforcing strict conformity between the description and the claims after their amendment during prosecution.
Applicants have to police their own amendments very carefully, lest their granted patent falls into the 123(2)/(3) fatal trap. I envisage similar self-policing in relation to Art 69 EPC. Courts are free to punish applicants who deliberately seed their descriptions with Angora cats. Courts are capable of construing claims on the basis of the originally filed description, taking it for what it is, a declaration of what applicant thought at the filing date was the invention.
You surmise that G1/24 sets up the EBA for a declaration in G1/25 that the description must be adapted. Conversely, I suspect that the UPC court of Appeal, in its new definition of the obviousness enquiry, has set the scene for a G1/25 declaration that the description does not need to be conformed. Hey Ho, isn't life interesting!
Dear Max Drei,
DeleteI am at a loss when on the one hand you agree with me, stating that “just because the EPO is the only one of the world's large Patent Offices which requires the description to be purged of inconsistencies does not mean that the EPO is wrong to insist on it”, but on the other hand you “agree with much of what Pudding has written in this thread today”. One or the other, but not both at once.
I can agree that a “B publication can declare what the invention is, and define what the scope of protection is”, but this is, in my opinion, only possible when the EPO enforces strict conformity between the description and the claims after their amendment during prosecution.
I can also agree that “courts are capable of construing claims on the basis of the originally filed description, taking it for what it is, a declaration of what applicant thought at the filing date was the invention”. The problem is that there is no file wrapper estoppel in the European patent system. Instead, Art 84 requires that claims are supported by the description, and Art 84 only applies before grant and before maintenance in amended form, even taking into account G 3/14.
I said it many times, it is not because national courts or the EPC are able to make head or tail of an ill adapted description, that the EPO has to ignore Art 84 to please applicants/proprietors.
Art 84 is not to be used when it comes to post-grant or post-opposition procedures, so that your conclusion that the “UPC court of Appeal, in its new definition of the obviousness enquiry, has set the scene for a G1/25 declaration that the description does not need to be conformed”, does not seem correct.
Courts are certainly “free to punish applicants who deliberately seed their descriptions with Angora cats”, but this is, as stated in T 2027/23, exactly what the EPO is there to avoid.
I regularly hear about fears of falling in the Art 123(2)/(3) fatal trap. I am still waiting to see one example that this has happened. It is clear that any amendment is potentially opening the Art 123(2)/(3) fatal trap, but avoiding Angora cats has nothing to do with this fear. I only know of one case in which this happened, it was in the UK, but there it was the applicant/proprietor who fell in the trap he created himself.
I agree with you with the need for a search and analysis of the prior art for efficiently drafting an application. This is the applicant’s homework. This is also valuable for a FTO analysis of the invention.
ReplyDeleteOn the EPO side, it has always seemed necessary for examiners to thoroughly read the description before they start the search and the assessment. But in too many cases, the review of the description was cursory. This should improve after G 1/24.
Today on the EPO Register there appears an Amicus Curiae brief from the UK Bioindustry Association. Does anybody agree with me that it includes a flaw in its reasoning, as follows.
ReplyDeleteThe BIA argues that, following G1/24, the way to address the B publication is to see the description as a record of what applicant saw as the invention, as sought to be protected at the filing date. But then the BIA goes on to argue in favour of voluntary amendment, to rid the description of inconsistencies which the applicant sees as problematic to claim interpretation.
The EPO is guardian of the public interest. If applicant shall have the right to polish the description during prosecution at the EPO, to purge it of all text that might cut against the patent owner in infringement litigation, should not the EPO, in pursuance of its duty to the public, have a right to impose on applicant amendments calculated to remove unfair benefits to a patent owner during enforcement of their patent rights?
In addition, the Amicus brief from the AIPLA (6500 patent practitioner members) observes that the description, if left alone, provides a common source of support for the the granted claims, the same all oder the world, which is good for legal certainty, all over the world. All fine and good, but hang on a minute. Does that not imply the imposition of a ban on amendment of the description during pre-grant prosecution at the EPO?
DeleteOr shall the applicant be allowed to fine tune and tweak the description during prosecution but not the EPO in pursuance of the public interest? Whatever happened to "equality of arms"?
Dear Max Drei,
DeleteI read with great interest the Amicus Curiae brief from the UK Bioindustry Association.
Whilst as a matter of principle, the UK Bioindustry Association does not want the description to be adapted, as for the association, the EPC does not require mandatory adaptation of the description to be consistent with amended claims, on the other hand the UK Bioindustry Association is in favour of voluntary description amendments, which “may be appropriate in specific cases”. Those cases are not even specified.
This position is quite odd as it leave the decision to amend to the applicant/proprietor. It is somehow surprising to see a group of applicants ignoring the EPC, especially Art 84, but are willing to adapt the description only when it suits its members.
To my knowledge, the EPC is valid for all domains of technique, and there are no specific legal rules in the EPC to take into account the specificity of biotech invention. I remembered that in the past, biotech candidates even requested a special biotech EQE. Needless to say that this wish stayed a wish.
It is not because “life sciences applications are drafted globally and at an early stage”, that they can be dispensed with later mandatory description amendments. There is nothing unfair for the EPO requiring such amendments. The burden is the same and nothing is unfair and disproportionate if the biotech sector is submitted to the same rules as any other technical area.
That the sector is such that applicants often maintain very large global portfolios and must navigate the many competing legal requirements imposed on it by different patent offices, does not imply a special treatment.
I see here between the lines the fear of the sector by acknowledging certain limitations of the scope that their patents could also be limited in the US. This is not an acceptable reason for requesting a derogatory treatment. The law is different on both sides of the Atlantic, but this should not come as a surprise.
Two points come to my mind, Daniel, when reading your comment of Thursday.
DeleteFirst point. Over in the USA, there is a thing called "patent profanity" which is concerned with the negative effects of court decisions on those who draft patent specifications. One example is the prohibition on ever including in the description the word "invention" in relation to the subject matter sought to be protected. Do we want that over here, for those engineers and scientists who read A publications for their technical content. But we are likely to get that here, if the EPO President has his way, with his Amicus brief in which he identifies the core G1/25 issue as a prosecution amendment which introduces "an inconsistency". One way to reduce the emergence of an "inconsistency" is to avoid saying at the outset what the invention is. Follow Robin Jacob's advice, EBA. Study what the Americans have done but then don't make the same mistake over here. I say again, also to the judges of the UPC, there is a difference between "the invention" as declared in the patent application and "the subject matter for which protection is sought" as defined in the claim.
Second point. Comparing the President's analysis with your "spade" hypothetical, if the A-publication defines a spade as an earth-moving tool, and the prosecution amendment in claim 1 is from "earth-moving tool" to "spade", well then that amendment has not introduced an inconsistency, has it? I am reminded of that old logic example "All dogs have a tail. This animal has a tail. Ergo, this animal is a dog". Just because the description states that a spade is an earth-moving tool does not mean that all earth-moving tools are spades. In the same way, narrowing the claim from earth-moving tool to spade does not necessarily introduce an inconsistency with a description that states that a spade is an earth-moving tool.
It is going to be quite a challenge, for the EBA to tell us what test to apply, to decide whether all inconsistencies, no matter how trivial, must be removed, or whether there are some that can remain on the basis that they are not going to be what crashes the process when the patent is litigated. De minimis non curat lex.
Another point for you, Daniel. In the UK, there is a thing called "Cake-ism", which means, having your cake and eating it too. Which means enjoying not only eating your cake but also "having" ie keeping it in the cupboard to eat at some future date. Impossible, but that doesn't stop them advocating it. The proponents of BREXIT, for example, were ridiculed as proponents of cake-ism.
DeleteMethinks all those Amici who want the right to amend their desciptions but at the same time want to forbid the EPO (acting in the public interest) from requiring the description to be conformed are just as much cake-ists as the BREXIT-ers.
As to the case in front of the EBA, I am thinking that "gathered" is a very suitable foundation for a debate about how much "conformity" is needed, in the public interest. I hope therefore that the EBA comes up with a line of reasoning that is good for the next 50 years and provides a roadmap for not only Europe but also the rest of the world.
It's not really "cake-ism" if you simply accept that there may be times when it is genuinely necessary to amend the description (for example, when there is an inconsistent or contradictory definition to a claim term, or simply an error in the description that should be corrected or removed), but that expected, procedural "inconsistencies" resulting from the very standard practice of inserting a formerly, i.e. at the filing date, "optional" feature into claim 1, should not meet such a requirement.
DeleteDear Max Drei,
DeleteFirst point, I am not concerned with what is happening in the USA under US law. You might speak about “the prohibition on ever including in the description the word "invention" in relation to the subject matter sought to be protected.” In this respect I would like to draw your attention to R 42 in which the word “invention” is mentioned not less than 8 times and to R 43 in which the word “invention” is mentioned not less than 7 times. Therefore, I cannot see a problem if an applicant/proprietor speaks about his “invention” in its original disclosure.
Whether the word “invention” is used in the original disclosure or not, I have difficulties to see how it could reduce the emergence of an "inconsistency". Not saying what the invention actually is may lead to problems of sufficiency, or if the latter is given, to problems of clarity and/or patentability.
If the A-publication defines a spade as an earth-moving tool, and the prosecution amendment in claim 1 is from "earth-moving tool" to "spade", such an amendment manifestly introduces an inconsistency. An earth-moving tool can be an excavator which is way different from a spade. There is no inconsistency only if the claim and the description mention either an "earth-moving tool" or a “spade” as both words define quite different items.
If the claim mentions a spade, but the description mentions an earth moving tool, prior art could be represented by a bulldozer, which is also an earth-moving tool as well as an excavator. If the claim mentions an “earth-moving tool” but the description mentions a spade, prior art can be represented by an excavator or a bulldozer. The difference in subject-matter claimed is by no way trivial, and hence your Latin citation appears not relevant.
To come back to the famous Agfa/Gucci case, it is by no way trivial if the description at grant mentions a “chromatic” base colour, but the claim has been limited to an “achromatic” base colour during prosecution.
The core G1/25 issue is indeed a prosecution amendment which introduces "an inconsistency". “Chromatic” and “achromatic” could not be more different. Why do you think that the UPC-CFI Hamburg complained that the word “chromatic” had not been deleted before grant? Certainly not to please the EPO’s president.
Any amendment to an independent claim has to find a corresponding amendment in the description. This is to insure that what is said in the description does not allow a different interpretation of what is actually claimed. See Agfa/Gucci.
Another old example of mine: if the independent claim is limited by the subject-matter of a dependent claim, then the description cannot state that the subject-matter of the dependent claim is still merely optional, as it is the case for every dependent claim.
Dear Max Drei,
DeleteFirst point, I am not concerned with what is happening in the USA under US law. You might speak about “the prohibition on ever including in the description the word "invention" in relation to the subject matter sought to be protected.” In this respect I would like to draw your attention to R 42 in which the word “invention” is mentioned not less than 8 times and to R 43 in which the word “invention” is mentioned not less than 7 times. Therefore, I cannot see a problem if an applicant/proprietor speaks about his “invention” in its original disclosure.
Whether the word “invention” is used in the original disclosure or not, I have difficulties to see how it could reduce the emergence of an "inconsistency". Not saying what the invention actually is may lead to problems of sufficiency, or if the latter is given, to problems of clarity and/or patentability.
If the A-publication defines a spade as an earth-moving tool, and the prosecution amendment in claim 1 is from "earth-moving tool" to "spade", such an amendment manifestly introduces an inconsistency. An earth-moving tool can be an excavator which is way different from a spade. There is no inconsistency only if the claim and the description mention either an "earth-moving tool" or a “spade” as both words define quite different items.
If the claim mentions a spade, but the description mentions an earth moving tool, prior art could be represented by a bulldozer, which is also an earth-moving tool as well as an excavator. If the claim mentions an “earth-moving tool” but the description mentions a spade, prior art can be represented by an excavator or a bulldozer. The difference in subject-matter claimed is by no way trivial, and hence your Latin citation appears not relevant.
To come back to the famous Agfa/Gucci case, it is by no way trivial if the description at grant mentions a “chromatic” base colour, but the claim has been limited to an “achromatic” base colour during prosecution.
The core G1/25 issue is indeed a prosecution amendment which introduces "an inconsistency". “Chromatic” and “achromatic” could not be more different. Why do you think that the UPC-CFI Hamburg complained that the word “chromatic” had not been deleted before grant? Certainly not to please the EPO’s president.
Two points, Daniel. First, the content of the description which "supports" the claims is disclosure. In keeping with that duty to disclose, US-style drafting uses the word "disclosure" instead of "invention". Readers of the A publication are interested in disclosure, less so in what the drafter of the description supposed to be the "invention" for which protection is being sought. Do they even bother to read the claims? I doubt it. So, I'm not sure how eschewing the term "invention" in the description can result in failure of the patent application under any of the Articles of the EPC.
DeleteSecond, on the question whether an inconsistency is or is not fatal, please see the reply I just typed to Pudding and Mouse. As to the Latin, whether any given inconsistency is no more than a trifle is the question I want the EBA to answer for me.
@ Max Drei-02.02.2026 at 20:42:00 GMT,
DeleteHow many times do I have to repeat that what matters here, is not what happens in the US and the way US applicants draft their specifications. What matters here is the EPC which is also valid for US applicants. In view of the way US applicants draft their specifications, it is no wonder that they come into problems when their applications end up at the EPO, just think of added matter. By the way, AIPLA want that the description remains unaltered, i.e. that the US system applies at the EPO.
You are as well mixing two issues. First, published patent applications are a source of technical information, cf. the theory of contract underlying the patent system. Second, the granted patent offers a temporary monopoly which, for the sake of the security of third parties has to be defined as clearly as possible, based on a description and claims as clear as possible and which cannot be based on varying interpretations of the proprietor, i.e. narrow when it comes to validity, but large when it comes to infringement.
Any inconsistency between independent claims and the description is by no means trivial. As just said above, it is by no means trivial when the proprietor can change its interpretation as he sees fit.
In answer, Daniel, I would say that eradicating all inconsistencies is not enough to prevent different parties from arguing for different interpretations of the claim. They are likely to be doing that anyway, with or without any inconsistencies.
DeleteBut with your final sentence, you offer a test of whether a seemingly harmless inconsistency is or is not objectionable: if it serves as a basis of support for a claim construction other than that given by the clear meaning of the words of the otherwise allowable claim, then perhaps it has to be purged because its presence has a knock-on effect of rendering the claim offensive under Art 84 EPC. Isn't this what CIPA argues in its Amicus brief?
The EPO Register is now full to bursting with Amicus briefs filed in the last two days.
ReplyDeleteNotably, Apple's lawyers plead for adaptation. I can well imagine that the combination of Apple + EPO President + considerations of the EPO's duty to the common good and the public interest will weigh heavier on the EBA than all the multitude of Amici who urge the EBA to come down on the side of not insisting on adaptation.
CIPA argues for adaptation on a case-by-case basis, with the party urging adaptation having (also in pre-grant proceedings) the burden of proving that the unadapted text would offend the provisions of the EPO. Thinking as a representative of an applicant, I'm not sure I want on me and my client the burden of proving to the ED that my requested adaptations of the text of the A publication are necessary, in order that the patent application shall meet all the provisions of the EPC. What do other readers think?
In the discussion about the requirement to adapt the description, the term « requirement » is misleading. Let’s assume an inconsistency between the amended claim and the description casts such doubt on the meaning of a term of the claim as to violate the clarity requirement of Art 84. An ED is not entitled to amend the description at the R 71(3) stage without the applicant’s agreement (Art 113(2)), as clarified in recent EPO documents. The ED may indeed issue a 94(3) communication objecting to a lack of clarity. But it is then for the applicant to decide on how to vercome the objection. The applicant may opt for amending the claim rather than the description.
DeleteNote that the applicant has to pay a price for its sole responsibility for the patent as granted. It implies that the EPO incurs no liability even if an amendment entered by the ED creates a new matter issue, as was the case (T 1473/19 ?) in which the removal of a comma in the claim resulted in the revocation of the patent by the Board.
I have looked at the post-G 1/24 proceeding of the « gathered sheet » patent. The patent proprietor submitted an auxiliary request to amend the description by deleting para [0035] which offers three definitions for the term « gathered sheet ». During oral proceedings in December, the Board took the position that this request is inadmissible for violation of Art 123(3). If this is confirmed, it will be interesting to look at the Board’s reasoning.
As to the submission of Apple's lawyers, I note that it is a creative use of an amicus curiae. This submission is actually used to provide arguments in a specific Apple case.
Max, would it be too much to hope that, when it comes to weighing the arguments in the various amici, the EBA would pay more attention to the substance of the arguments than they would to the identity of the author?
DeleteThe substance, Pudding? Even in the CIPA Amicus Brief, I couldn't find a test, how to determine whether any given "inconsistency" renders the claim unclear and thereby offends the provisions of Art 84, EPC.
DeleteI think CIPA, even in its role as a friend to the court, has dodged the question, the substance, the core issue. What say you?
@Max: but that's just the problem, isn't it? Several of the amici point out that "inconsistency" is ill-defined and (ironically) can mean different things to different people or deciding bodies due to its inherent subjectivity.
DeleteDoesn't that demonstrate neatly that the whole premise of requiring amendment of the description to remove any and all "inconsistencies" is ill-founded, as a case of the perfect being the enemy of the good? We all know that any claim, any description, is *always* going to be susceptible to multiple interpretations. That is the very nature of language.
Max, it might be more instructive to look at your question from a different perspective: is it even possible to formulate a definitive test for the presence of an "inconsistency"?
DeleteThere are numerous barriers to formulating such a test.
For example, what level of connection to the subject matter of the claims is required for a disclosure of the description to even be assessed for consistency? That is, can we discount disclosures that merely present background (or purely factual) information? And what about passages indicated as relating to a "disclosure", instead of "the invention" (or an embodiment or aspect thereof)?
Once we have overcome that hurdle, we then need to address the topics of how to determine the reference point (ie the precise subject matter with which the disclosures of the description should be consistent) and how to determine when a difference in subject matter rises to the level of an "inconsistency" that a provision of the EPC dictates must be addressed.
Given that neither the EPC not the travaux discuss the concept of (in)consistency between the description and the claims, I would say that there are no clear pointers to the correct tests for any of the above issues. This, in turn provides a clear pointer to the answer to Q1 (and to Q3) being "no".
The way I see it, Pudding and Mouse, the pursuit of meaning in the term "inconsistency" is not the key issue. What is key is the extent to which content in the description can render "unclear" a claim that is, otherwise, "clear". One is required to "consult" the description when construing a claim. Of course. Fair enough. Uncontroversial, I would think. But what if such consultation reveals an inconsistency? Is that enough to render an otherwise clear claim unclear? How shall I know, which inconsistencies render the otherwise claim unclear, and which leave the clarity of the claim untouched? Will the EBA tell us? I do hope so.
DeleteI doubt the Enlarged Board will give guidance as to the level of clarity required as this will be dependent on the facts of the individual case. My feeling is that the absolute requirement of Article 84 for the claims to be 'clear' will be interpreted by the EBoA such that if there is an inconsistency between the description and the claims with the result that the claims are not clear, then the description or the claims should be amended.
DeleteYes, Kant, but that is indeed the conundrum, isn't it, the issue that the CIPA Amicus brief zooms in on. What level of inconsistency does it take, to render a claim that is, in itself, clear enough to meet Art 84 EPC and turn it into a claim that offends Art 84 EPC.
DeleteWill any inconsistency do the trick, no matter how trivial, or are there some inconsistencies so unimportant that they fail to carry the claim over the border, from the patentable zone of compliance with Art 84 clarity standards into the kill zone of non-compliance with Art 84 EPC. When all one has is words, it is pretty much impossible to define with 100% clarity the subject matter for which protection is sought. Likewise, I suspect it is almost as hard to purge the description of all text that can be used in support of an argument that there is "an inconsistency" between words of the description and those of the claim. Where to draw the line? I don't know but CIPA is suggesting something.
One way to avoid inconsistencies arising, upon making a post-filing narrowing amendment of the claim, is to adopt US-style drafting and refrain from use in the description of the word "invention" instead using the word "disclosure". Do Europeans want US drafting standards over here? I suspect not.
I note that the last two amicus curiae submissions, dated 31January and 2 February, bring critical observations regarding the effect of removing inconsistencies by amending the description. The authors are Martin Wilming and a patent attorney writing under the pseudo « Jackson Lamb » (I guess this is ironical). Martin Wilming’s submission includes valuable insights on the meaning of « inconsistency ».
ReplyDeleteJackson Lamb’s submission is unusual in that it deplores that the topic tends to inspire « heated, even vitriolic debates », and has sometimes included « accusations that proprietors and their representatives may have improper motivations if they believe that there is no legal basis for requiring description amendments ». I personally think that debates even heated are welcome but it is beyond the pale if they are vitriolic and include such accusations.
As to UPC decisions, Agfa v Gucci has been given a lot of attention. But another decision, Paris LD 13 November 2024 HP v Lama, point 41, is quite interesting. In this case, the defendant argued that Figures 4-8 should not be taken into account in the interpretation of claim 1 because they were explicitly mentioned as « unclaimed examples ». The court dismissed this argument, stating that figures 4-8 are part of the description and may when appropriate be used to interpret claim 1. This highlights the explanatory value of the description.
Just because the period for filing Amicus briefs has closed does not mean that the flow of third party observations has stopped. See the one dated yesterday from Ilya Kazi, for example. He suggests that a not-invalid claim reciting "up" could nevertheless be invalid if i) down is not patentable and ii) the description defines "up" as "up or down". To me, that is an argument for requiring descriptions to be "conformed" every time i) the claim is narrowed such that the description of at least one illustrated embodiment of "the invention" fails to recite explicitly the prresence in that illustration of every single feature of the claim. other feature recited in the claim.
DeleteNow, in chemistry it is (I guess) relatively easy to decide whether any given embodiment exhibits the claimed feature combination. In mechanical engineering, however, it is not always easy. Take the feature "ratchet", for example, added during prosecution. Fig 1 shows a pawl engaging a toothed wheel, that is, a classic "ratchet". Fig 2 shows an arrangement of two tubes, telescoped, one inside the other, as in the devices useful as a curtain rod for a curtain spanning the open fourth wall of a shower cubicle. The skilled reader grasps that they can pull the two tubes to extend their combined length but not push them to make their combined length shorter. This is what I would call a ratcheting effect.
To satisfy the EPO must I cancel Fig 2 or declare it to be NOT the claimed invention, just because the description falls short of stating explicitly that the two tubes provide a "ratchet"? Like so many of the Amici, I think leaving Fig 2 unamended helps rather than hinders Art 69 EPC considerations of "infringement by equivalent" but I can imagine an EPO Examiner seeing the issue differently. I hope the EBA will help to reduce tensions between Applicants and Exam Divisions, over the question when I have to declare any given disclosure as inside or outside the scope of protection which the applicant is seeking. As Mr Kazi observes, it is not just the time it takes to "conform" the description to the satisfaction of the EPO. It is also the time it takes to argue what "conformity" means. With words it is never possible to achieve 100% clarity. A level of clarity that is "fit for purpose" should be enough. Likewise with "consistency".
Max, I don't see Ilya's argument as pointing to any need for a description to be "conformed". Quite the opposite.
DeleteTo illustrate my thinking, I would ask you to consider the following question: faced with the same description and claim set as described in Ilya's amicus, how would a national court (such as a court in the UK) interpret the claim?
Would the court not, in view of Article 69 EPC and its Protocol, interpret the term "up" according to the description definition? And, if they would, then why - in view of Reasons 19 of G 1/24 - would the EPO interpret the claim without reference to the description definition? Is that not the core of the problem that the EPO has created for itself?
Sorry about the lack of clarity in that last post. Some of my words disappeared and I didn't spot it before I hit the send button. Overnight, it occurs to me though that assessing what is an Art 69 EPC "equivalent" might be just as tricky in chemistry as it is in mech eng. Pemetrexed disodium, for example. Imposing on pre-grant patentability examination and claim clarification the full force of Art 69 EPC strikes me as disproportionate over-egging of the pudding being cooked within the walls of the EPO.
DeleteOK, Pudding, I dare say that I have mischaracterized Ilya Kazi's observations. Nevertheless, I am still not understanding what he is urging the EPO to do when his applicant, during prosecution, imports "up" into claim 1, leaves in the description the definition "up includes down" and contends that the application is good to grant because all EPC Articles are satisfied, patentability, clarity and support. If "up" is clear, supported and patentable, must the "up includes down" statement be excised, or can it be allowed to remain? Reasonable minds differ on this issue, right?
ReplyDeleteMax, it seems to me that Ilya's example assumes a post-grant scenario, as all of the remedies proposed flow from the (broad) interpretation of the claim. In a pre-grant scenario, my view is that the EPO would be justified in raising an objection under Art 84 EPC (whether a lack of clarity or a lack of essential features). That is, the applicant should clarify in the claim a definition of "up" that:
Delete- is clearly and unambiguously derivable from the disclosures of the application as filed; and
- provides, together with the other features of the claims, a (patentable) distinction over the disclosures of the prior art.
In Ilya's example, it is unclear whether it would be possible for the applicant to define "up" in a manner that satisfies both of these requirements. This is because the generic term ("up") is defined using precisely the same word ("up") as one of the specific alternatives falling under the genus. Really, a case of (hypothetically) very poor drafting. Nevertheless, I am sure that a solution can be found in most real-life cases.
Once a solution is found, then:
- the amended claim, as interpreted in the light of the description, will meet the requirements of Article 84 EPC; and
- allegedly "inconsistent" disclosures of the description will therefore have been determined to not give rise to a lack of clarity.
In other words, where a claim truly satisfies the requirements of Art 84 EPC, any deciding body should have no difficulty in identifying the description disclosures that are "inconsistent" with the claim (and that therefore fall outside of the scope of the claim).
Be that as it may, Pudding, I am still hoping for an answer to my hypo about the word "ratchet" in the claim. Fig 1 shows a toothed wheel and pawl and the written description identifies this as a ratchet. Fig 2 shows two tubes one sliding inside the other. You can extend the combined length but not shorten it, once extended. You know, the typical shower curtain rail. It delivers a ratcheting effect, but the decription of Fig 2 fails to include the word ratchet. The EPO demands excision of Fig 2, or else the insertion of wording that Fig 2 is NOT an embodiment of "the invention".
DeleteArt 69 EPC contemplates equivalents as falling within the scope of protection. Fig 2 meets the function-way- result test for equivalence. Therefore, I say, to require its excision, or labelling that it is NOT an embodiment of the subject matter for which protection is sought, is unjust, unfair to the inventor, and discouraging to those who would include in their patent applications a greater rather than lesser degree of disclosure.
Am I here being unfair to the EPO? How many ED's would allow me to go to grant with Fig 2 present and described as an embodiment of the invention, and how many would require its excision? Is it clear or does it need the EBA, in G1/25, to give the Examiners more guidance?
Max, it is a little disappointing to make a carefully reasoned point only to receive a “Be that as it may” response and an abrupt change of topic. It rather suggests that you cannot be bothered to think about it.
DeleteIn any event, you are not being unfair to the EPO in connection with your hypo. Instead, you have merely recognised an issue behind one of the points that I made in a response to you on 2 February, namely the challenge of determining the reference point, ie the precise subject matter with which the disclosures of the description should be consistent.
@MaxDrei and Proof of the Pudding
ReplyDeleteRegarding the “up” vs. “up or down” scenario mentioned by Ilya Kazi, I note a similarity with the post-G 1/24 proceedings before the Board of the referring decision T 439/220. The owner of the patent-in-suit EP3076804 filed in July 2025 an auxiliary request to delete from the description para [0035] which sets out three different meanings for the term “gathered sheet”.
The minutes of the oral proceedings held on 17 December mention that the Board is minded to hold the request inadmissible for violation of Art 123(3) but provide no reasoning to support this position. This suggests that the deletion of “down” in Ilya Kazi’s scenario might be held inadmissible as well.
Francis, the minutes refer to "Article 123(3) EPC (removal of a former restriction IMPLICITLY contained in the claim)". I think that this provides a pretty clear signal about how the Board applied the ruling in G 1/24 to the case at hand. Nevertheless, it will be interesting to see the Board's detailed reasoning on this point.
DeleteRe: the deletion of "down" in Ilya's hypothetical example, that would indeed appear to be problematic from an Art 123(2) EPC perspective. On the other hand, inserting "wherein up means down" would appear to be a potentially permissible amendment (ie deletion from a single list of alternatives) that arguably - even without amendment of the description - satisfies the Art 84 EPC clarity requirement.
@Proof of the pudding
DeleteYou are right, the minutes refer to the removal of a former restriction, but I do not find any restriction where the deletion rel
@Proof of the Pudding
DeleteYou are right that the minutes refer to the "removal of a former restriction implicitly contained in the claim" but para [0035] of EP3076804 sets out an expansion vs. the ordinary meaning of "gathered sheet", not a restriction.
As to a hypothetical "up means down", it sounds like typical Orwell's novspeak "war is peace" or "freedom is slavery"" and I feel it should be dismissed as self-contradictory, regardless of whether it may be arguably permissible.
Yes, I too noticed the expansion vs. restriction point. However, the Board's "restriction implicitly contained" comment would seem impossible to explain if the claims have not been interpreted in the light of the description (and, in particular, the definition whose deletion would allegedly cause an Art 123(3) EPC issue).
DeleteAs for "up means down", that is merely the consequence of the unfortunate language selected by the (hypothetical) patent applicant. Also, once you get over the echoes of Orwell, the meaning of the language is clear enough.
Patent applicants should be free to describe their inventions in the terms that they believe are the most appropriate. Also, "unusual" definitions used by real-life applicants are rarely (if ever) quite so self-contradictory at first blush. For these reasons, it is important to recognise when - despite the presence of an "unusual" definition - a claim is clear enough.
It is always fascinating to read these threads where DX Thomas spends so much time attempting to undermine well-founded and logical arguments.
ReplyDeleteRegarding the function of Art 84 EPC: The requirement for 'support' is there to ensure that the subject matter of the claim has a basis in the specification—essentially, to ensure that what is claimed is actually disclosed. The intent was never to turn the description into a mirror image of the claims by deleting everything that is no longer encompassed by the allowable claims.
If the Enlarged Board of Appeal eventually decides to justify why there is supposedly legal support to force these amendments, I sincerely hope they take the time to go argument-by-argument through why T 56/21 is wrong. The Board in T 56/21 took the time to consider the arguments raised and provided distinct legal reasoning for each one. Pushing that decision to the side as if it does not exist is not a strong argument.
We all know that 'democracy' is not what drives EBA decisions, but if we look at the numbers, the message from the end-users is clear: there is no support for this practice. Furthermore, it is clear that in other major jurisdictions, no such requirement exists.
As mentioned in multiple briefs and as is well known to everyone familiar with the Travaux Préparatoires, the only purpose of Art 84 at the time of drafting was to ensure that the claims are clear in themselves and that corresponding passages could be found in the text as filed. I personally struggle to understand how a simple English sentence has been twisted to mean something completely different than what was clearly intended.
I am hopeful that the EBoA will not be influenced by the EPO President’s position and that the historical basis for Art. 84 EPC will prevail. Once the decision is out and the initial discussions subside, things will likely get very quiet on the blogs... As controversy will be back to normal...
It is always fascinating to read these threads where DX Thomas spends so much time attempting to undermine well-founded and logical arguments.
ReplyDeleteRegarding the function of Art 84 EPC: The requirement for 'support' is there to ensure that the subject matter of the claim has a basis in the specification—essentially, to ensure that what is claimed is actually disclosed. The intent was never to turn the description into a mirror image of the claims by deleting everything that is no longer encompassed by the allowable claims.
If the Enlarged Board of Appeal eventually decides to justify why there is supposedly legal support to force these amendments, I sincerely hope they take the time to go argument-by-argument through why T 56/21 is wrong. The Board in T 56/21 took the time to consider the arguments raised and provided distinct legal reasoning for each one. Pushing that decision to the side as if it does not exist is not a strong argument.
We all know that 'democracy' is not what drives EBA decisions, but if we look at the numbers, the message from the end-users is clear: there is no support for this practice. Furthermore, it is clear that in other major jurisdictions, no such requirement exists.
As mentioned in multiple briefs and as is well known to everyone familiar with the Travaux Préparatoires, the only purpose of Art 84 at the time of drafting was to ensure that the claims are clear in themselves and that corresponding passages could be found in the text as filed. I personally struggle to understand how a simple English sentence has been twisted to mean something completely different than what was clearly intended.
I am hopeful that the EBoA will not be influenced by the EPO President’s position and that the historical basis for Art. 84 EPC will prevail. Once the decision is out and the initial discussions subside, things will likely get very quiet on the blogs... As controversy will be back to normal...
@ whoknows=Anonymous of 09.02.2026 at 18:10:00 GMT
DeleteIf I would have found the arguments well-founded and logical, I would not spend a single second contradicting them.
T 56/21 is one decision which has failed to convince me. As the decision is at odds to the views of the EPO and the boards in matter of adaptation of the description, the mere decency would have required from that board to address a referral to the EBA as it had announced previously. It rather chickened out and decided to ignore the importance of the question and placed the EBA before a fait accompli. It decided ex-cathedra, for whatever reason.
Where do you take that “The intent was never to turn the description into a mirror image of the claims by deleting everything that is no longer encompassed by the allowable claims”? Any source other than IA?
It is your interpretation, and that of your colleagues, to claim that Art 84 is unidirectional. To be clear, if the subject-matter of the claims could not be found in the description, it would be ridiculous. Seen in this way, Art 84 boils down to crash an open door. Support goes in both directions, whether you like it or not. It goes in both directions for the simple reason that it has also for effect that the description cannot contain statements at odds with the claims. on the other hand, if everything is to be found in the description, why bother with claims? Nothing has been twisted when it comes to Art 84. It is rather a unidirectional interpretation of Art 84 from yourself and your colleagues.
It should also not be forgotten that Art 84 stems from Art 6 PCT which goes further as it added that the claims should be “fully supported”. It is not a question of having drawings or not to be part of the description, but really to find an adequation between claims and description. This is the work already done in decisions following G 1/24. If you want a interpretation found in the description but different than that derivable by the skilled person from the claim wording, then bring it in the claims.
For the surplus, I refer to my comments to “The Irony” as far as the history of the EPC is concerned. In the same reply, I added that it is not the number of briefs against adaptation of the description which should prevail.
I hope that the EBA will not give a political reply to the questions referred as it was the case in G 1/21 and G 3/19. The EBA is perfectly in a position to look at the historical basis for Art 84. I further hope that the EBA will have recourse to the interpretation rules set out in the VCLT.
I fed the URL of this page into an AI (Claude) with the prompt:
ReplyDelete"Analyse this discussion and tell me what you infer about the relative strengths of arguments and about the personalities of the commenters."
This is what it came up with, with no further prompting from me. Part 1; other parts to follow.
This is a fascinating and quite heated debate about European patent law. Let me analyze the arguments and commenters' personalities:
Strength of Arguments
Arguments AGAINST mandatory description adaptation (FICPI, Schmid, Roelands, "Proof of the pudding", Max Drei, Anonymous):
Strongest points:
Legal basis: Article 84 EPC is unidirectional - claims must be supported by description, but there's no reciprocal requirement
Practical risks: Forced deletion of embodiments can create Article 83 (sufficiency) and Article 123(2) (added matter) violations
Unnecessary: Courts like Hamburg in Agfa v. Gucci can already handle inconsistencies without prior EPO intervention
International anomaly: No other major patent office requires this
Cost burden: Creates unnecessary billable hours for attorneys
Arguments FOR mandatory description adaptation (Kortekaas, DXThomas):
Strongest points:
Legal certainty: Prevents "Angora cats" where proprietors use narrow interpretation for validity but broad for infringement
G 1/24 alignment: The requirement to "consult" the description means inconsistencies must be removed
Article 84 support: Claims cannot be truly "supported" by a description containing contradictory information
Harmonization: Ensures EPO and national courts/UPC reach consistent interpretations
Argument Quality Assessment
The anti-adaptation camp has stronger legal textual arguments - they can point to the absence of explicit EPC provisions requiring adaptation. Their risk-based arguments (sufficiency, added matter) are particularly compelling.
The pro-adaptation camp relies more on teleological interpretation and policy goals (legal certainty, preventing gaming). Their arguments are philosophically coherent but struggle to identify clear EPC article support.
The referring Board's skepticism in T 697/22 (point 16.8, noting courts weren't "fooled" by unadapted descriptions) suggests even the EPO recognizes adaptation may be solving a non-problem.
@ Odo Ital-10.02.2026-00.13.00 GMT
DeleteI read with great interest the result of the question you put to an IA.
I do not know how your IA has been trained, so that for this reason alone, its reply is subject to caution. In particular, there are other Amicus briefs which are in favour of adaptation of the description than that of Mr. Kortekaas and myself which have apparently have been ignored by the IA.
Look at the analysis in my blog and you will find a few other: Mr. P. de Lange, Mr A. Cossu and the German Chamber of Patent Representatives. Those do not appear to have been taken into account in the reply of your AI. Their argumentation is, at least for me, much more convincing than that of the anti-adaptation group.
The same goes for the anti-adaptation group, which is much larger as your IA appears to know. Not that their argumentation is different, it is a mere repetition. A patent does not become novel if the proprietor repeats that it is novel like a Tibetan prayer mill. The argumentation is as unconvincing as that your IA has selected.
I do not agree that the anti-adaptation camp has stronger legal textual arguments. The EPC has to be read and interpretated according to the interpretation rules set out in the Vienna Convention on the Law of Treaties. Your IA seems to ignore the VCLT.
When interpreting the EPC in the light of the VCLT and of the Travaux préparatoires, other conclusions are possible, not to say more convincing.
When you mention Reasons 16.8 of T 697/22, you or your IA should have mentioned Reasons 16.6: “The local division further held that the deletion of the feature "chromatic colour" in claim 1 during examination proceedings while the description remained the same had created an inconsistency between the granted claims and the description. The passages in the description mentioning "chromatic" should therefore have been deleted”. This is a direct plea for the adaptation of the description. Your IA seems to suffer from some inconsistencies.
Mr Thomas: You appear to have missed that the commenter above says that they gave the AI a link to "this page" and asked it to analyse "this discussion". Any absences in references to amicus briefs or to aspects of the T 697/22 would therefore be reflections of what is on this page itself.
DeletePerhaps someone can do an experiment by pointing an AI to the EPO's page containing all the amicus briefs, and asking the AI to analyse that instead?
Part 2:
ReplyDeleteAccording to my AI - again, I emphasise, with absolutely no guidance, this is what it came up with after being prompted by this very webpage:
Commenter Personalities
DXThomas (former EPO examiner):
Personality: Dogmatic, combative, defensive of EPO institutional authority
Style: Lengthy, repetitive, somewhat condescending ("you seem to carefully ignore")
Tells: Frequently invokes his EPO credentials; takes disagreement personally; misreads opponents (thought "Proof" was advocating description supremacy when they clearly weren't)
Weakness: Circular reasoning - often asserts EPO practice proves EPO practice is correct
Proof of the pudding:
Personality: Methodical, patient (initially), increasingly exasperated
Style: Socratic questioning, exposes logical contradictions
Strength: Identifies the core paradox - if EPO interprets claims in isolation (primacy), why does description content matter? If description matters, why not interpret claims accordingly?
Tells: Eventually taps out when DXThomas keeps repeating the same points
Max Drei:
Personality: Diplomatic elder statesman, somewhat ironic
Style: Concise, philosophical, focused on systemic issues
Insight: Suggests EPO's motivation is aesthetic ("good order") rather than legal necessity
Cultural intelligence: Graciously accepts DXThomas's explanation of "zeal" misunderstanding
Anonymous (since 1970s):
Personality: Pragmatic, experience-based
Style: Brief, cuts to practical consequences
Focus: Legal certainty in litigation, not theoretical purity
Anon Y. Mouse & spinning and purring:
Personality: Procedurally knowledgeable, detail-oriented
Contribution: Factual corrections, precedent citations
Jackson Lamb:
Personality: Sardonic, self-aware about using pseudonym
Style: Meta-commentary on the debate's temperature
The Irony
The debate itself proves the anti-adaptation camp's point: if experienced patent professionals can't agree on whether there's a legal basis for adaptation, how does forced adaptation enhance "legal certainty"? The Agfa v. Gucci case shows courts can navigate inconsistencies. Meanwhile, DXThomas's repeated invocation of that same case (claiming it supports his view because the court said "chromatic" should have been deleted) illustrates confirmation bias - he ignores that the court reached the correct result anyway.
The telling moment is DXThomas admitting "this Kat heard directly from a partner at a top-tier firm (which shall remain nameless) that the billable hours were one reason he remained in favour of the requirement." blogspot This suggests economic incentives may be driving policy more than legal necessity.
Could the glorious anonymous, The Irony, give the source of what he alleges with respect to billable hours. Do you really have to scrape the bottom of the barrel for lack of well-argued reasons?
DeleteComing now to something more serious, if you read carefully my analysis of the Amicus Curiae, you will see that some national courts, and even the UPC, are not so well able to navigate with inconsistencies. They can be used against a potential infringer, although I do not find this correct.
In all correctness and fairness, when you said that in the Agfa/Gucci case the court did not fall for the inconsistency with “chromatic”, you should have been compelled to add that the same court insisted on the fact that “chromatic” should have been deleted before grant. Half truth are always better for those who are afraid of the whole truth.
If experienced patent professionals can't agree on whether there's a legal basis for adaptation, this is not a reason to simply conclude that there I no need to adapt the description. Experienced patent professionals are not there to say what the law is. This is the role of the BA and of the EBA.
It is noticeable that the German Chamber of Patent Attorneys has come up with a well-reasoned statement in favour of the adaptation of the description, contrary to all other associations of representatives claiming that there is no basis in the EPC requiring the adaptation of the description. Even the GRUR Standing Committee on Patent Law, did not take position on Q1 in view of the varied position of its members, but made useful suggestions as how to handle the problem.
I doubt that the EBA will be impressed by the fact that the vast majority of the Amicus Curiae are in favour of not adapting the description. What is at stake is the law and the rule of law, not the opinion of representatives. I trust the EBA to say whether there is a basis or not in the EPC.
The Amicus Curiae in favour of the adaptation of the description have given good arguments, even going back to the Travaux Préparatoires to argue this necessity.
What is forgotten in all the Amicus Curiae refusing adaptation of the description, is the history of the EPC. Contrary to all national systems, in which national courts can iron out inconsistencies having slipped through the granting procedure, the EPO has to deliver a patent which should not allow the proprietor to interpret its patent as he thinks fit in post-grant procedures.
It should also not be forgotten, that there were no less than four drafts of a European patent in the framework of the the "Common Market", now the EU. Those drafts had foreseen an integrated system like the present national systems. They never materialised in view of the obstacles put in the way by a certain country. It is only the pressure of the PCT which forced the Europeans to come to an agreement, and this agreement was then opened to non-EU member states. In this respect the EPO cannot be compared to a national patent offices.
I never got a sensible reply on this point.
Daniel, you're shouting at an AI. As the author pointed out above, the posts from "Odo Ital" are an AI-generated summary of this blogpost and its comment thread.
DeleteIt looks like the section headed "The Irony" is the AI's summing-up. In that context it seems to have hallucinated that you made a comment about billable hours. Using CTRL+F I was able to locate those comments as being in the main post itself.
@ Odo Ital-10.02.2026-00.14.00 GMT
DeleteTo be honest I could not give a damn of what an unknown IA says about myself. Moreover, not knowing how this IA has been trained, its output is anyway subject to caution, even if it would say nice things about myself.
When I had enough, I make it clear, and this has nothing to do with being condescending. It is just an outlet of my exasperation.
My credentials go far beyond what I have done at the EPO. I was not only examiner, I was also in charge of various groups of examiners. What has been a great satisfaction of mine, is to see plenty of examiners I had in charge to be appointed as directors or as members of the boards. You can draw certain conclusions, but they cannot be negative as your IA claims.
For over 40 years, I have been training candidates to the EQE. If I would have been as bad as your IA makes out, I would not have survived as long as I did in this field.
I am also regularly consulted by industrial companies and firms of patent attorneys.
As former staff member of the EPO, my loyalty goes manifestly to the EPO, but this does not mean that I approve everything coming from it. I also criticise the EPO when I find that critic is due, be it about the work of first instance divisions, or about the way boards act when it comes to procedural aspects. Just have a look at my blog.
My conclusion is that your IA is rather ignorant. What comes out of it is nearer a bin than a pedestal.
Again, you are shouting at an AI.
DeleteIf (as the poster says) the AI was asked to analyse this IPKat page and its comments, then any conclusions the AI has drawn about any individual are probably based on what is on this page, no more and no less.
I am rather amused about all the examples flying around.
ReplyDeleteIf the claim is limited to “up”, but the description states “up and down”, what hinders the applicant/proprietor to write in his claim “up and down”, provided the same function is achieved with “up and down”. If the same function is not achieved with “down”, then “down” has to be deleted, as it introduces doubts about the scope of protection. I would even say that Art 83 is not fulfilled, when the function “down” is not disclosed and is not apparent from common general knowledge. When the disclosure explains that the same function is achieved "up" and "down", then limiting the claim to "up" makes no sense, other than trying to catch alleged infringers which use the "down" function and have only read the claim. G 1/24 will even bring good order in such a mess. This is also a form of adaptation of the description to the claims.
The same goes with the ratchet example. A pawl engaging a toothed wheel is a ratchet acting in rotation. Two tubes, telescoped, one inside the other, which can only be moved in one direction is a ratchet acting in translation. The problem is that in Max Drei’s example, a ratchet acting in rotation is compared with a ratchet acting in translation. The problem is that both are not compatible. If you bring both in the same disclosure and claims, you will earn an objection of lack of unity.
In one of the Amicus Curiae and in one contribution, the author explains that the claim is about a screw. claims a screw. The description mentions a rivet. According to the author, it would allow to cover equivalents and would also represent an infringement according to the German Federal Court. The problem is that a screw is a releasably means for fixing two pieces together, but a rivet is anything but a releasably means for fixing two pieces together. The rivet can only be removed by destroying it. We are thus far from equivalents…..
If you bring in examples, please insure some technical coherence.
By the way, I have published my own analysis of the Amicus Curiae. I did not use IA, as IA might give an answer, but one does not know on what data the answer is based and on what it has been trained.
Maybe, DXThomas, you need to update your blog to include Roche's contribution to the amicus brief. It may help with your stats.
DeletePeople arguing in G 1/25 that description amendments have “no legal basis” are technically right, but that point is not as strong as it sounds. A lot of central EPO practice does not come directly from the EPC text either. The problem–solution approach is often linked to Rule 42(1)(c) EPC because it mentions stating the technical problem and solution, but even then this link is a stretch. The gold‑standard “direct and unambiguous” test for added matter comes from the Enlarged Board, not the EPC wording. The strict sufficiency approach also comes from case law rather than from Article 83 itself. The same pattern can be seen with the recent priority entitlement issue, which needed the Enlarged Board in G 1/22 and G 2/22 to resolve a long‑standing strict practice that was never clearly based on the EPC text.
ReplyDeleteSome say that “users do not like description amendments”, but that view comes mostly from a small group of patent attorneys. Real users include many more people, such as examiners who need clarity, competitors trying to understand what a patent covers, courts that interpret the claims, and the wider public who rely on accurate disclosures. Their needs are broader than the preferences of attorneys.
I like description alignment as a public policy tool because it makes the patent clearer for everyone. I accept the legal basis is thin, but that is not the fatal hurdle people make it out to be. The EPC is broad in places and the Enlarged Board has always stepped in to fill gaps.
On the other hand, references to "public policy" (or apparent "teleological" interpretations, as referenced in the AI summary) have one fundamental weakness: a complete absence of any hint in the TP - or other contemporaneous documents - of any kind of reference to the alleged policy or purpose.
DeleteThe EPC may be broad in places but prior interpretations of the EPC have at least been based upon something tangible - and not just invented in retrospect to suit a perceived need / desire of the EPO.
Thanks to Diana Taverner for a contribution I can subscribe to every word of it.
DeleteAs a further example of what the EBA has achieved are Swiss-type claims.
Without Swiss-type claims, no protection for second and further medical indications.
They are now obsolete as the EPC has been amended in 2000, but it needed the EBA to find a solution.
Well, looking at the actual amicus curiae briefs, the No comes not from a small group of patent attorneys. They mostly come from the applicants, i.e. real users of the system. It is actually mostly patent attorneys and the office that push for a yes regarding adaptation of the description.
DeleteAnd no, it does not necessarily make the a patent clearer, because by focusing on these inconsistencies, examiners have no time to really go into checking clarity of claims in light of the description. You will never ever get a "clear" patent, because, in particular for phamra applications, reaching this levels of perfection would amount to spending more time on description amendment than on the claims. And this for a useless task, because such a level of perfection will never be reached. This, imho, is rather like the punishment of Sisyphos on patent examiners, which is unnecessary, because courts can deal with it and harmonization should be up to the courts (and the national judges actually speak to each other and read the decision of others).
Regarding gaps in the law: maybe read the Roche amicus curiae at page 4 regarding G2/02. The EPO goes beyond filing gaps. They did not provide a test like the problem-solution approach for deciding on what is inventive (which btw is not binding! just as an example T 465/92 so it is not like requiring amending the description) or any of the test for added matter (which are, again, non-binding!, see G2/10), but the EPO refuses patent applications for not following their made up law.
Thanks for your reply, Proof of the pudding. I may be missing something, as I haven’t checked the TP in detail. If there are passages showing where the added-matter doctrine or sufficiency standards were actually derived, I’d be grateful to see them and happy to concede that as a difference.
DeleteCOMVIK just occurred to me. The brief “as such” wording in Art. 52 led to a long and complex line of case law, requiring two Enlarged Board decisions before the current framework settled, which seems another example of judicial development rather than a clear TP basis. My aim isn’t to take sides but to keep the discussion even-handed.
Thanks for explaining your view BF. I take the point that applicants feature strongly in the amicus briefs, even if my own experience of the debate, including on LinkedIn, has been a bit different. Without wider data it’s hard to be certain either way.
DeleteOn the legal side, most EPC requirements can’t really be applied without tests developed through case law. If those tests were treated as truly non-binding, the EPO would struggle to refuse applications at all, which doesn’t reflect how the system has worked in practice.
That doesn’t mean the current approach to description alignment is perfect, but improving consistency between claims and description can still be seen as a legitimate goal to work towards, and clearer patents are generally a good thing.
Diana, added matter and sufficiency are clear and unambiguous requirements of the EPC. What you are describing with respect to (EBA) case law is therefore not the creation of a legal requirement but instead the development of a test that can be used to assess compliance with that unarguable requirement.
DeleteBy way of contrast, what is at stake in G 1/25 is whether there is even any description adaptation requirement in the EPC at all. Perhaps the closest that the EBA has come in recent years to settling a debate on whether the EPC includes a specific requirement was in G 4/19 ("Double patenting"). In that case, the EBA assessed sources relevant under the VCLT and concluded as follows:
"the competent legislator, here the Diplomatic Conference, established that the prohibition on double patenting was a generally recognised principle as a question of fact, and in addition made it clear that this was a principle falling under Article 125 EPC as a matter of interpretation of the law, the Office was thereby not only empowered to apply this principle but effectively also duty-bound to do so".
Analysis of the sources cited in the pro-amendment amicus briefs reveals a complete absence of any that are both (a) relevant under the VCLT and (b) point to a "generally recognised principle" which supports adaptation of the description.
In view of these conclusions (as well as the interpretations of EPC provisions in the anti-adaptation case law and amicus briefs), it is pretty difficult to see where a legal basis for a purported description adaptation requirement could possibly be found.
Of course, if you believe that I missed anything relevant, I would be happy to hear what that is.
Diana I welcome your efforts to keep the discussion "even-handed". Of course the EPO, in pursuance of its duty to the public interest, strives to eliminate all inconsistencies. Fair enough. However, I am one of those drafting and prosecuting attorneys that can immediately relate to the well-rehearsed, widely felt and vigorously pushed arguments against insistence upon strict "conformity". The Amicus brief from CIPA alludes to a middle way and my instinct tells me that such a path is the one to pursue. But I myself lack the insight to see how to formulate this middle way in words that express it clearly. Instead, I live in hope of a miracle from the EBA.
DeleteFor the EPO to blithely insist of Applicants that they conform a mechanical engineering case to a claim narrowed in prosecution by deleting embodiments or declaring them to be "not" the invention is what upsets me. Whether the EPO likes it or not, Europe has a Doctrine of Equivalents. Acts outside the literal wording of the claim routinely infringe. So courts have to decide routinely what is or is not an "equivalent". What if the problematic embodiment that has to be deleted or labelled as "not" the invention is, in fact, an equivalent that, if coming from a competitor, would be an infringement? Is it fair to the inventor for the EPO to refuse to grant until the Applicant labels it as "not" the invention? My feeling is that the issue what is equivalent can best be addressed after consideration of what the inventor declared to be thier invention in their patent application in their text as originally filed. What do you say?
Thanks, Proof of the pudding, for your excellent points. I agree that added matter and sufficiency are clearly grounded in the EPC, with case law providing tests to assess compliance. In practice, the line between developing a test and creating a new requirement can be subtle.
DeleteThe question is whether Article 84 can be used to shape the description. Applications are often drafted with inventive step in mind, so the description is pre‑adapted to show how the claimed solution addresses the technical problem. COMVIK-type inventions are adapted to avoid excluded subject matter, Article 83 ensures enough detail is included to support the claims, and post-SCOTOS practice provides another example of a major patent office subtly prompting description adjustments to head off objections under Article 101. Much of this adaptation happens automatically, so we barely notice it when drafting.
Even G 4/19 shows that what looks like a simple legal point can require careful reasoning and substantial work to reach a final outcome.
Small point Daniel, on my ratchet hypo. It comes from real life. A hand unit for a self expanding stent pulls proximally a tube surrounding the stent, relative to a tube that extends through the lumen of the stent. The invention was to include a ratchet in the hand unit, to prevent any residual distal movement of the outer. tube during release of the stent. So your distinction between rotation and translation for the movement of the ratchet components leaves me unpersuaded that the ratchet claim lacks unity.
ReplyDelete