The Board of Appeal in T 873/24 has decided to refer questions to the Enlarged Board of Appeal (EBA) on the application of G1/24 (claim interpretation) to the assessment of added matter.
According to the minutes of oral proceedings, the Board of Appeal concluded that the case hinged on whether the order from G1/24 that the description and drawings should always be consulted for claim interpretation applies to assessment of added matter (Article 100(c) EPC, Article 123(2) EPC), extension of matter in divisional applications (Article 76 EPC).
The Board of Appeal considered this seems to be a point of law of fundamental importance, and following endorsement from the opponent, the Board concluded that "The case will be referred to the Enlarged Board of Appeal with questions to be formulated in writing".
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| Weighing up the description |
Case details: Added matter and G1/24
The appeal in T 873/24 concerns EP3587104 B1 (Coated Steel Strips). The invention relates to an aluminium-coated steel strip comprising various metal components, of a particular length and width, and specified coating thickness. A core issue on appeal was whether the way in which the Titanium to Nitrogen ratio in the steel strip was specified in the claim added matter.
In its preliminary opinion (issued after G1/24) the Board of Appeal considered the Main Request to add matter because claim 1 lacked units for the specified Ti/N ratio. In the original application, the ratio was specified as weight. Particularly, whilst the parent and grandparent applications explicitly specified that the ratio of Titanium to Nitrogen must be expressed by weight, claim 1 of the Main Request merely stated that the ratio was "in excess of 3.42" without providing any units. The Board of Appeal was of the opinion that this omission would be an impermissible broadening that left the claim "open-ended, unlike the original application". The Board of Appeal's preliminary decision made no mention of G 1/24, sticking instead to the strict "gold standard" test of direct and unambiguous disclosure for added matter.
However, subsequent submissions from the Patentee argued that, according to decision G1/24, the description must always be consulted when interpreting the scope of the claims, and that if the skilled person consulted the description, they would be in absolutely no doubt that the content of any chemical element from the composition of the base steel was in weight percent.
In response the Opponent argued that G 1/24 cannot be used for the assessment of Art. 123(2), 76 EPС, citing T 0405/24, which found that:
"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 Article 123(2) EPC. 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 [...] would not lead to an objective assessment of compliance with Article 123(2) EPC and thus jeopardise legal certainty. It would be tantamount to interpreting a claim feature such that, in the end, virtually no violation of Article 123(2) EPC within the meaning of the well-established "gold standard" could arise." (r.1.2.3)
Final thoughts
It seems unlikely to this Kat that the EBA would adopt a position that G1/24 does away with the EPO's exceedingly strict approach to added matter. However, it is worth remembering that the referral in G1/24 cited disagreements in Board of Appeal case law precisely in cases that hinged on added matter. These cases included the catastrophic comma cases, in which the deletion of a single comma was found to add matter, despite this rendering the claims entirely out of step with the entirety of the description (T 1473/19 (IPKat) and T 1127/16 (IPKat)).
This referral is going to be an interesting one to watch. Stay tuned to IPKat for further updates!
Reviewed by Dr Rose Hughes
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Tuesday, March 03, 2026
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Pandora's box...
ReplyDeleteIt the proprietor is of the opinion that, “if the skilled person consulted the description, they would be in absolutely no doubt that the content of any chemical element from the composition of the base steel was in weight percent”, why did he not file a request for correction under R 139?
ReplyDeleteI agree that it seems unlikely that the EBA would adopt a position that G1/24 does away with the EPO's approach to added matter. G 2/10 is abundantly clear. G 1/24 encompasses added matter as it refers to Art 52-57 and therefore to Art 54.
“Directly and unambiguously derivable ….” corresponds to the novelty criteria applied at the EPO. Novelty and added matter are the two faces of the same coin, and what is lost on one side is gained on the other.
I would have a different reading of T 405/24. If based on the description, different claim interpretations are possible, as soon as one of those implies added matter, the corresponding objection has to be raised. The applicant/proprietor cannot chose the one which would make the objection of added matter moot or irrelevant.
Next to T 405/24, there exists a plurality of decisions applying G 1/24 to added matter: T 0981/23, T 0873/23 and T 1164/23. They are all coherent in their application of G 1/24.
Some reasonable doubts are thus also permitted about the admissibility of the referral.
Whilst the questions raised by the imminent referral may look tricky at first glance, they do not engage any substantially different issues to those raised in the referral leading to G 1/24.
ReplyDeleteIn essence, it could have been alleged that:
- because it did not include the "unusual" definition of "gathered sheet", the claim in T439/22 would, if it had been in a pending application, been objectionable under Art 84 EPC (either for a lack of clarity or omission of an essential technical feature); and
- because the claim in question was in a granted patent, the problems under Art 84 EPC had to be tolerated.
The issues in T 873/24 are similar in that:
- the granted claim would, if present in a pending application be objectionable under Art 84 EPC (either for a lack of clarity or omission of an essential technical feature); but
- because the claim is in a granted patent, the problems under Art 84 EPC must be tolerated.
The difference in T 873/24 is that the question being posed is essentially whether new matter is added by omission of an essential technical feature (or a feature required to clarify the claim). Whilst this question might not always have a straightforward answer, the path to the answer is very clear. That is, it is necessary to:
(a) interpret the claim, ie determine the subject matter to which the claim relates; and
(b) determine whether the subject matter of the claim is disclosed in the application as filed.
For me, following these steps for the claim in T 873/24 leads to the conclusion that there is no added matter. Whilst the granted claim would be much clearer if it specified that the ratio was a weight ratio, it would be absurd to suggest that those skilled in the art would (after consulting the description) interpret the claim as referring to any other type of ratio. Indeed, it is telling that the ED clearly did not spot the missing definition of the ratio prior to grant - which tends to indicate that those skilled in the art would read the claim as if it contained the missing definition.
As an aside, I must take issue with the reasoning of T 0405/24 which dismissed as incorrect "an approach which inherently assumes that there may be only one 'correct' interpretation of a claim feature". This is because, if one follows the reasoning in T 0405/24 to its logical conclusion, one arrives at a claim which is interpreted to have multiple (mutually exclusive) meanings. All very well if one is dealing with added matter: find one meaning which adds matter and the case is closed. But how does one assess novelty (or entitlement to priority) for a claim that has multiple meanings? To anticipate, must any one piece of prior art disclose the subject matter according to only one meaning, or instead to all possible meanings?
ReplyDeleteIt is, of course, only common sense that a technical term used in a claim should, when interpreted, be afforded only one meaning. That meaning might be broad, to encompass multiple possibilities. However, it should still be only one, single meaning. To suggest otherwise (as the Board in T 0405/24 has done) is clearly absurd.
The absurdity of interpreting (claim) wording to have multiple, mutually exclusive meanings is also illustrated by considering what this might mean for determining the disclosure of a patent application that forms part of the prior art. If, during examination of the application, claim wording is determined to have multiple meanings, this necessarily implies that none of those meanings is clearly and unambiguously disclosed. In this scenario, such claim wording having an insolubly ambiguous meaning would be incapable of anticipating any later claim which encompasses one or more (but not all) of the meanings. Bonkers!
@Proof:
DeleteYou are correct that what I like to describe as “Schrödinger’s claim interpretation” is “bonkers”. I would go further and describe it as bat-excrement-crazy when you pause and think about how your novelty analysis applies to added matter, which, as we are always reminded, are two sides of the same coin.
Take a patent application with claim 2 as originally filed, which is inherently unclear and could be interpreted in two ways: (i) and (ii). Only (i) is mentioned in the description, but the claim wording definitely permits interpretation (ii). During prosecution, claim 2 is added to claim 1 and the patent grants with this ambiguity. The logical conclusion of some of the EPO’s case law is that claim 1 is invalid for added matter because it has an interpretation that is not unambiguously derivable from the application as filed. This is nonsense, and everyone knows it, but the EPO insists on ridiculous rules of interpretation that lead to this absurd result.
The solution is so simple that it is depressing it needs to be spelled out. Interpret the document as a whole, decide exactly what it means, then judge the case.
The present case is not as simple as it might look to Proof of the pudding-05.03.2026 10.03.00 GMT and Anonymous-05.03.2026-11.31.00 GMT
ReplyDeleteThe OD decided that claim 1 as granted was not open to an objection under Art 100(c) as it is evident that nothing else can be meant by the claim as granted than that the ratio 3,42 refers to the preceding components listed in weight%. In the absence of an indication to the contrary, the skilled reader understands all aspects of the composition as relating to weight, as stated on the first lines of the claim.
The problem here is that claim 5 as originally filed as well as claim 11 of the grand- parent mentioned that “the ratio of titanium to nitrogen in the steel sheet in weight % is in excess of 3.42”.
If the applicant would have combined claims as filed it would have been clear that the ratio in excess of 3.42 related to weight %.
Lines 11-14 as originally filed state: “Even more preferably, in the composition by weight of the sheet, the weight ratio of titanium content with respect to the nitrogen content is excess of 3.42, believed to be a level at which the boron is no longer able combine with the nitrogen”.
Lines 11-14 as originally filed state: Titanium, the ratio of the content of which with respect to the nitrogen content should be in excess of 3.42, is introduced for example in order to prevent combining of the boron with the nitrogen, the nitrogen being combined with titanium”.
Those statements are found again in the patent:
In the patent, § [0058] says: In the composition by weight of the sheet, the weight ratio of titanium content with respect to the nitrogen content is in excess of 3.42, believed to be a level at which the boron is no longer able to combine with the nitrogen”
In the patent, § [0062] says: Titanium, the ratio of the content of which with respect to the nitrogen content is in excess of 3.42, is introduced in order to prevent combining of the boron with the nitrogen, the nitrogen being combined with titanium.
The description as originally filed is thus not clear as it allows two interpretations of the value 3,42, one as such and one relating to weight %.
In presence of two possible interpretations, if one is open to an objection under Art 100(c) why would the applicant proprietor be allowed to chose the one which does not bring added matter?
What has been said in T 0405/24 is thus far from being absurd. Coming back to G 2/10, “directly and unambiguously derivable” means that the original filing should not allow two different interpretations.
Why did the applicant/proprietor delete the weight % in claim 1 as granted? He must have had a good reason, if it is not apparent to third parties. The statements in the original descriptions being unclear, it might explain why the proprietor did not file a request for correction under R 139.
In T 1099/21 it was held that what prompted a patent proprietor to make a particular amendment to the claims cannot have any influence on the outcome of the assessment of the ground for opposition under Art 100(c).
It is thus very nice to come up with nice theories on how the claims should be interpreted, but if one looks at the details of the case, they do not really help. In view of the peculiarities of the case, the admissibility of the referral will have to be solidly argued.
Just a small point: does para [0062] of the application as filed not provide explicit basis for the ratio defined in the claims of the patent?
DeleteAnother point: para [0062], which does not define the ratio as by weight, comes after para [0058], which does define the ratio as by weight. Would the skilled person therefore not understand that the ratio in the later paragraph is the same as that mentioned in the earlier paragraph?
A final point: the problem with the claim, if any, would appear to be the absence of a unit of measurement to which the ratio mentioned in the claim applies. This will be immediately evident to those skilled in the art as giving rise to a lack of clarity. Is this not a situation under which, even for the most extreme line of pre-G1/24 case law, reference to the description would be permissible as a way of resolving the ambiguity?
With the best will in the world, it is impossible to see how a person skilled in the art would read the patent (or the application as filed) and gain the impression that the units for the ratio in the claim were anything other than weight. I therefore do not see how, in the light of the context provided by the description, there could possibly be another interpretation that the proprietor could "choose". Or am I missing something?
What happened to "mind willing to understand?" The number 3.42 is so specific and precise that if the description mentions the definition - by weight - in one place, that definition can perfectly be read into places where the definition is left out, advertently or deliberately. It would be different if the description would have mentioned by weight in one place and by volume in another place for the same number 3.42, but that is not the case. Of course the examiner should have objected under Art. 84, but now that he or she hasn't, we need to accept that the claim in itself is not very clear. However, the description shall be used to interpret the claims, and that solves the unclarity. What a waste of time.
ReplyDelete3.42 is the molar weight ratio of Ti (47.9) and N (14). 47.9/14 = 3.42. This is maybe why the proprietor deleted "by weight".
DeleteGood observation, but I don't see why you would actively delete "by weight" compared to claim 11 of the grand-parent. I mean, you prepare a div by taking the existing text (of the parent) and, this time, hitting the delete button.
DeleteDoes it make any difference? If the ratio is the number of Ti atoms to the number of N atoms in the steel is greater than 3.42, the weight % of Ti to that of N will be far higher than 3.42, so narrower protection for the proprietor. Anyway, as the 3.42 value has been inserted into feature a) of the claim, it is at least implicitly covered by the part of the clause reciting "based on total weight".
ReplyDeleteI guess the TBA will hold inadmissible the ARs that specify "by weight" and could easily resolve the issue?
ReplyDeleteThat would only be an option if the higher-ranking requests were held to add subject matter. The TBA has therefore declined to take the easy option of following "patent-killer" case law, as typified by T 0405/24, where formal issues are relied upon to bring cases to speedy resolutions.
DeleteFrom the above explanations it can be taken that 3,42 can have two interpretations 1) weight % ratio of Ti/N or 2) molar ratio Ti/N.
ReplyDeleteThe presentation of T 0405/04 by Proof of the pudding is not correct. In T 0405/24, commented in my blog, it cannot be said that the board has relied on formal issues to bring the case to a speedy resolution.
The contrary is true, as the board took great care to justify its decision by referring to numerous decisions of the boards.
The key argument was that in presence of two technically reasonable, but different interpretations, it cannot be left to the proprietor to decide which is the one which should be adopted. It is manifest that the interpretation which will be chosen by the proprietor is the one not infringing Art 123(2). As the board said rightly, adopting this position would not lead to an objective assessment of compliance with Art 123(2) and thus jeopardise legal certainty.
The board added that, “It would be tantamount to interpreting a claim feature such that, in the end, virtually no violation of Arte 123(2) within the meaning of the well-established "gold standard" could arise”.
In the present case, the ratio 3,42 has two technically reasonable interpretations. It is the proprietor himself which introduced the two in the description. In accordance with T 0405/24, it cannot be left to the proprietor to decide which of the two should be adopted. When he chose not to add weight % he must have had his reasons. Nobody forced him to do so.
The above considerations reinforce my assumption that the referral might not be deemed admissible, as there is existing case law to resolve the problem.
In case it was in any way unclear, my reference to "formal issues" was meant to encompass decisions relating solely to Art 123(2) EPC. As you will be well aware, killing patents (or claim requests) based upon Art 123(2) EPC enables speedy resolution of cases. This is because it means that the TBA need not take the time to consider all substantive patentability matters for the claim request(s) in question.
DeleteAt the end of the day, the divergence in the case law relates to the issue of how the claims are interpreted: whether according to a "holistic" approach or an "all technically reasonable interpretations" approach. This might just provide basis for admissibility of the referral.
As for the alleged existence of "two technically reasonable interpretations", that is very much under dispute. Reasons for this include the arguments in my 6 Mar 2026 response to your comment as well as my 5 Mar 2026 comments on the logical flaws in the reasoning underlying T 0405/24. You have not addressed those points. Instead, you have merely reiterated your views on how the law should be interpreted and applied. Whilst it is of course your prerogative to effectively ignore (or refuse to engage with) counter-arguments, it hardly seems like the most constructive approach to a debate about the relative merits of different interpretations of the law.
@ Proof of the pudding-10.03.2026-12.12.00 GMT
DeleteObjections under Art 123(2) are anything but formal objections used in order to speed up prosecution. The reason why a deciding body does not enter any substantive examination when faced with an infringement of Art 123(2) is simply due to the fact that such a claim does not have an effective date.
It cannot be the filing date, as the information infringing Art 123(2) was not contained in the originally final documents, nor the date at which it was introduced in the specification as this date is after the filing date.
It follows that a TBA cannot “take the time to consider all substantive patentability matters for the claim request(s) in question”. If a deciding body would do so, I am of the opinion that it would commit a procedural violation as deciding on something it is not entitled to decide. This might be the practice in a certain EPC member state, in which all possible objections have to be dealt with in first instance, but it is not that of the EPO.
When coming to the conclusion that there exist two possible interpretations of the features at stake, the deciding body has necessarily consulted the description and thus applied G 1/24.
When consulting the description, why should the skilled person therefore understand that the ratio in a subsequent paragraph is the same, i.e. weight %, as that mentioned in an earlier one when the two paragraphs correspond to two different technically reasonable interpretations.
Without the possibility of giving the ration 3,42 another technically reasonable interpretation, here molar ratio, I would consider that weight % should be read into the subsequent paragraph. The problem is that the ratio 3,42 can have a different meaning.
The presence of two possible interpretations is the result of the free will of the applicant/proprietor, cf. Art 113(2). If there are two versions, the applicant/proprietor might have had good reasons to do so.
It is not for a third party or a deciding body to guess what could have been those reasons. If one interpretation does not correspond to what is directly and unambiguously derivable from the original disclosure, i.e. weight %, and has a reasonable different technical meaning, the conclusion is that there is added matter. In the present case, the same numerical value has two distinct meanings. Why should one be preferred to the other, just because it suits the proprietor? I have to agree with T 0405/24, which does not contain any logical flaw.
In the present case, the paragraph without weight % could be deleted, and the claim amended by adding weight %, but then, we are in the same situation as in T 439/22 with the deletion of paragraph 35. The discrepancy between the two paragraphs is the fault neither of the opponent nor of the deciding body. It is the plain responsibility of the proprietor.
"When consulting the description, why should the skilled person therefore understand that the ratio in a subsequent paragraph is the same, i.e. weight %, as that mentioned in an earlier one when the two paragraphs correspond to two different technically reasonable interpretations".
DeleteEr, well there is always logic. And the traditional rules for document interpretation, including consideration of relevant context.
As to the other "technically reasonable" interpretation, you still have not explained:
1) why that interpretation would add subject matter (given that para [0062] of the application as filed provides explicit basis for the ratio defined in the claims); and
2) why the TBA would use a claim interpretation approach for added matter that is completely unworkable with respect to assessments of substantive matters such as novelty, inventive step, etc. (see the comments made by me and Anon on 5 March).
As for the discussion about "formal issues", let's let that one pass. You have obviously not quite grasped the point that I was trying to make, and I cannot be bothered to keep explaining myself.
@ Proof of the pudding-10.03.2026-16.51.00 GMT
DeleteTo use your own words: “I cannot be bothered to keep explaining myself”.
I gave precise reasons under which conditions it would not matter not to have “weight %” added in the claim. You did manifestly not see it.
I explained why in presence of an objection under Art 123(2), discussing novelty and inventive step is moot. Here again, you did manifestly not see it.
You might think whatever you want, but I had enough. You manifestly do not agree with the way some boards apply G 1/24, and it is your good right. I am of a different opinion, and this is might good right as well.
It is all about what a skilled person makes about a statement in the description, holistic approach or not. If the skilled person comes, within the framework of the description and with the will of understanding its technical content, to two different interpretations of a statement contained in it, why should one prevail over the other?
The topic is exhausted. I will now wait to see the questions referred. For the time being, any further discussion appears pointless.
@ Proof of the pudding-10.03.2026-16.51.00 GMT
DeleteTo use your own words: “I cannot be bothered to keep explaining myself”.
I gave precise reasons under which conditions it would not matter not to have “weight %” added in the claim. You did manifestly not see it.
I explained why in presence of an objection under Art 123(2), discussing novelty and inventive step is moot. Here again, you did manifestly not see it.
You might think whatever you want, but I had enough. You manifestly do not agree with the way some boards apply G 1/24, and it is your good right. I am of a different opinion, and this is might good right as well.
It is all about what a skilled person makes about a statement in the description, holistic approach or not. If the skilled person comes, within the framework of the description, to two different interpretations of a statement contained in it, why should one prevail over the other?
The topic is exhausted. I will now wait to see the questions referred. For the time being, any further discussion appears pointless.
You are presumably referring to your 6 March statement that "Coming back to G 2/10, “directly and unambiguously derivable” means that the original filing should not allow two different interpretations". The problem with attempting to rely upon that statement as an answer is that it completely fails to address the questions / observations about the "bonkers" approach to claim interpretation typified by T 0405/24.
DeleteIn essence, what it appears you are trying to argue is that:
(a) the ratio in the claim has two possible interpretations; and
(b) the skilled person would have no reason to prefer one interpretation over the other.
The problem with that argument, however, is that neither (a) nor (b) is true, or even remotely arguable.
Reasons why (a) and (b) are not true include those highlighted in my 6 March reply to your comment. Another reason is common sense: as the author of a statement must have had a particular meaning in mind, it follows that - except in extreme circumstances - that meaning must be discernible (using standard methods for document interpretation).
Secondly, if (a) is true, this means that not only the claim but the entire patent family is insolubly ambiguous with regard to the meaning of the ratio ... merely because of isolated references to the ratio that are arguably inconsistent with the clear definition provided in para [0058]. That consequence is completely bonkers, not least because it flies in the face of the "mind willing to understand" standard of claim interpretation (and has startling consequences re: the lack of any prior art effect for novelty).
Finally, because para [0062] provides clear and unambiguous basis for the wording of the claim, another consequence of (a) being true would be that the problem with the claim is not added matter, but instead a lack of clarity ... which would be a problematic (if not impossible) ground to pursue in the opposition.
Your attempt to declare the topic exhausted represents yet another illustration of what appears to me to be a tendency on your part to dodge difficult questions, avoid dealing with uncomfortable facts and/or follow a train of logic to its ultimate conclusion. It is of course your prerogative to adopt this style of "debating". However, it does make me wonder what you hope to gain from engaging in debates by essentially talking over (or completely ignoring) the reasoned, substantive points / questions which challenge your point of view.
DeleteWe can certainly agree to disagree. But if you are not going to bring anything new to the debate, why keep commenting?
The weight ratio and the molecular weight are the same ratio. The number 3.42 comes from the stoichiometric mass ratio needed for the reaction:
ReplyDelete𝑇𝑖 + 𝑁 → 𝑇𝑖𝑁
Atomic weights:
Ti ≈ 47.9
N ≈ 14.0
Ratio: 47.9 / 14.0 ≈ 3.42
So it means that there is enough titanium to bind all nitrogen.
The problem is not enunciating the "directly and unambiguously derivable" principle but in applying it to messy real-life matrices of fact. So here's a relatively simple matrix, built around the word "ratchet", the meaning of which might depend on whether one is an English, French or German speaker. But we all know what a ratchet is, right?
ReplyDeleteUndergoing opposition, I narrow claim 1 by inserting in it the word "ratchet" thereby overcoming all prior art and Art 83 attacks but at the price of new objections under Art 84 and 123(2).
My device, as in Fig 1, features a pawl and toothed wheel. Oponent's design-around has, instead of a toothed wheel, one with a smooth soft rubber tyre into which the pawl bites. Opponent argues that the claim amendment is inadmissible because either it offends Art 123(2) or Art 84, or both. Specifically, is "ratchet" wide enough to include their step-less design around, or does "ratchet" cover only devices that move in steps? You can find in dictionaries support for both meanings.
The piquancy lies in tuning "unambiguously" to do justice between the parties and to enhance the reputation of EPO jurisprudence. Shall the inventor lose their patent or shall it be allowed to continue into an infringement court?
Needless to say, if the description had shown in Fig 2 an embodiment with a smooth rubber wheel, thanks to G1/24, the design around and the opposition would never have occurred.
So the easy hand-waving answer to my hypothetical is that the applicant should have done a better job of drafting the application. Readers, under the current law governing at the EPO, is there a more satisfying answer to my hypothetical?
Max, I think that your hypothetical works better for considering the downstream effects of description amendments - eg where, prior to grant, the EPO demands deletion / labelling as "not the invention" of a (novel and inventive) step-less design disclosed as an embodiment in the description but interpreted by the EPO as falling outside of the (literal) scope of the "ratchet" claim.
DeleteWhen it comes to added matter, what you essentially appear to be asking is whether the mere existence of "competing" definitions of a term ("ratchet") can give rise to insoluble ambiguity. In response, I would suggest that Anon's comments from 5 March are pertinent:
"The solution is so simple that it is depressing it needs to be spelled out. Interpret the document as a whole, decide exactly what it means, then judge the case".
Yes, Pudding, I was indeed thinking of the effects, after grant, of the EPO's behaviour prior to grant. Whether "ratchet" includes stepless one-way clutches can only be answered after taking the context into account. If the only illustrated embodiment is a stepped device, how can Anon tell us that "ratchet" in the claim does or does not (exactly) include stepless devices (such as a pawl biting into a smooth soft rubber wheel) within its ambit? If Anon can't tell us "exactly" what ratchet means then neither can the ED. Does that mean that the patent application must be refused merely because "ratchet" has two meanings?
DeleteWhich would be a travesty because the claim is otherwise valid whichever of the two meanings you choose and the opponent's device infringes it, whichever of the two meanings of "ratchet" you choose. It is not the EPO's business to refuse applications for patent protection of inventive and useful contributions to the art, merely for the reason that a term in the claim is susceptible of more than one interpretation. I mean, what term isn't?
Max, the most depressing (and worrying) aspect of this is that, when faced with "competing" definitions of a term, some TBAs do not determine which is the correct interpretation but instead raise what amounts to nothing more than a purely hypothetical objection.
DeleteAs I have commented above, common sense (and customary rules for document interpretation) dictate that, unless it is insolubly ambiguous, a term must have a single meaning - even if that meaning is broad. That, hypothetically speaking, there may be alternative interpretations is therefore beside the point: there can only be one definitive interpretation, namely the one dictated by the relevant context. Arguing that matter is added by an interpretation that a term may have is therefore nothing more than an objection based upon pure speculation, and not facts and reasoning, as required under the EPC.
It still shocks and depresses me that it is necessary to spell this out (to the EPO).
In the meantime, the EBA in G1/25 has issued its initial assessment. But as we all know, the devil is in the detail. One fondly supposes that all the chatter in the BTL space will help to focus the orals at the beginning of May and lead in the end to an intellectually convincing Decision.
DeleteMeanwhile, it is of course true, that closing down a case on Art 84 or 123 can spare the Board exhausting work in the area of Art 54, 56 or 83. Added matter is (for me) not a "formal" objection but nevertheless a short cut to bring the proceedings to an end, thereby boosting the "efficiency" of the inter Partes proceedings, the stats, and getting closer to the maxim that quick justice is good justice.
A bit like in the USA, the short cut of shutting down a case on the issue of "eligibility" so as to avoid grotesque enquiries into the obviousness issue. One can understand why truibunals are tempted to do this, at least in cases where it is reasonably clear whether justice (or prejudice) dictates which side should win the case in the end.
Perhaps, at the EPO, in the absence of binding precedent, a case that the skilled person finds persuasive, together with competent advocacy, is all you need to prevail, even when the case law is solidly against you?
@ Max Drei-13.03.2026-20.39.00 GMT
DeleteWhen looking at the provisional position of the EBA in matters of G 1/25, it is clear which direction will most probably be taken. Adaptation of the description is required in presence of an inconsistency between claims and description, be it in examination or in opposition, appeal procedure included.
The legal basis for requiring adaptation of the description is clearly Art 84. We do not know yet which part of Art 84 is the exact basis, but after all it is irrelevant, whether it is support or clarity as such or clarity of the scope of protection.
I invite you to look at my analysis of the provisional opinion of the EBA on my blog.
As far as clarity is concerned, I would distinguish clarity as such from clarity of the scope of protection, as after all the claims (and NOT the description) shall define the matter for which protection is sought.
Let’s be logical, if a claim is lacking clarity in the ordinary meaning of the word, it is moot to decide whether or not something the skilled person cannot understand the meaning of, is novel and inventive, when on top the description does not allow to make head or tail of what is actually meant.
I do not have a figure, but the number of refusals under Art 84 and revocations after amendment under Art 84 is rather low. The cases as envisaged here, could also warrant an objection under Art 83.
When the description allows a broader or a more limited interpretation of the scope of protection, there is an inconsistency under Art 84 as far as the scope of protection is concerned, even if the subject-matter of the claim is, as such, crystal clear. Just think of achromatic in the claim and chromatic left in the description.
The same applies with Art 123(2). When the subject-matter of a claim is infringing Art 123(2), it does not have an effective date, and hence it cannot be compared with any prior art.
Closing down a case on Art 84 or 123(2) can indeed spare a board exhausting work in the area of Art 54, 56 or 83(?), but it is not out of laziness. As explained above a board has no choice when the unclarity of the claim cannot be resolved with the technical information contained in the description, or when the claim infringes Art 123(2). In such a situation, a deciding body of the EPO can simply not decide on novelty and inventive step.
I know that in UK courts, all aspects have to be discussed in the same decision, but this is not EPO’s practice.
@ Max Drei-13.03.2026-20.39.00 GMT
DeleteWhen looking at the provisional position of the EBA in matters of G 1/25, it is clear which direction will most probably be taken. Adaptation of the description is required in presence of an inconsistency between claims and description, be it in examination or in opposition, appeal procedure included.
The legal basis for requiring adaptation of the description is clearly Art 84. We do not know yet which part of Art 84 is the exact basis, but after all it is irrelevant, whether it is support or clarity as such or clarity of the scope of protection.
I invite you to look at my analysis of the provisional opinion of the EBA on my blog.
As far as clarity is concerned, I would distinguish clarity as such from clarity of the scope of protection, as after all the claims (and NOT the description) shall define the matter for which protection is sought.
Let’s be logical, if a claim is lacking clarity in the ordinary meaning of the word, it is moot to decide whether or not something the skilled person cannot understand the meaning of, is novel and inventive, when on top the description does not allow to make head or tail of what is actually meant.
I do not have a figure, but the number of refusals under Art 84 and revocations after amendment under Art 84 is rather low. The cases as envisaged here, could also warrant an objection under Art 83.
When the description allows a broader or a more limited interpretation of the scope of protection, there is an inconsistency under Art 84 as far as the scope of protection is concerned, even if the subject-matter of the claim is, as such, crystal clear. Just think of achromatic in the claim and chromatic left in the description.
The same applies with Art 123(2). When the subject-matter of a claim is infringing Art 123(2), it does not have an effective date, and hence it cannot be compared with any prior art.
Closing down a case on Art 84 or 123(2) can indeed spare a board exhausting work in the area of Art 54, 56 or 83(?), but it is not out of laziness. As explained above a board has no choice when the unclarity of the claim cannot be resolved with the technical information contained in the description, or when the claim infringes Art 123(2). In such a situation, a deciding body of the EPO can simply not decide on novelty and inventive step.
I know that in UK courts, all aspects have to be discussed in the same decision, but this is not EPO’s practice.
Max, the EBA's Preliminary Opinion not only lacks essential reasoning it is based upon a highly prejudicial (and logically unjustifiable) assumption regarding the existence of a category of inconsistencies which cause "a non-compliance with the EPC".
DeleteA charitable view might be that the EBA is leaving open the possibility that that category is an empty set, ie that, in reality, there are no "inconsistencies" which cause a non-compliance with the EPC. However, it is not possible to apply that charitable view to the EBA's proposed rephrasing of Q1. That rephrasing not only converts Q1 to a leading question (ie a question which invites only one answer) but does so by making zero sense when applied to the scenario in which there are no "inconsistencies" which cause a non-compliance with the EPC.
I would be happy to concede defeat if presented with a superior (or at least arguably convincing) line of logic and reasoning, starting from the EPC. But the Preliminary Opinion rather suggests that the EBA is not inclined to take the kind of thorough and meticulous approach that I (and other doubters) might find persuasive. Instead, it appears to use precisely the same kind of cart-before-horse approach applied by the pro-adaptation TBAs, which assume a desired result and then work backwards to a purported legal justification.
As for the argument that T 56/21 is "inconsistent" with G 1/24, this raises questions such as the following.
(1) Why is it inconsistent (ie in which respect)?
(2) Is that inconsistency relevant to the issue of description adaptation and, if so, why?
(3) Could the same allegations be made against the pro-adaptation line of case law (and, if so, why use those allegations as a basis for picking sides)?
Thanks for all that, DXT. I have seen your piece in your own blog but it didn't answer a question in my mind. Your answer today, above, might be the answer though.
DeleteThe Board sees two types of inconsistency, of which only the second type must be purged. What inconsistencies belong to the first type, and can be permitted to remain?
My suspicions are that 1) the Board invented the first type as a legal fiction to provide a logical basis for the remainder of its opinion, and 2) the EPO will never accept that any particular inconsistency is of the first type. I wonder: do you see it differently.
I apologise for the double comment, but the first attempt to post it was greeted by a message telling me that my message failed to be uploaded.
Delete@proof
DeleteYou wrote: 'the EBA's Preliminary Opinion not only lacks essential reasoning it is based upon a highly prejudicial (and logically unjustifiable) assumption regarding the existence of a category of inconsistencies which cause "a non-compliance with the EPC".'
Why is this logically unjustifiable?
What is rather logically unjustifiable to me is the opposite: a requirement to repeat the wording of the claims in the description. We all know that the claims define the scope of protection. So where's the problem then if the description is not 100% identical to the claims (and therefore there is an inconsistency)? Why should we have 2 consistent statements of what the invention is, once in the claims and once in the description? It simply does not make sense: one authoritative source (the claims) of what the scope of protection is, is much preferable to two sources (which may differ).
The claims 'win' anyway, so where's the problem if the description might allow an alternative formulation?
To me, inconsistencies that might allow a different interpretation of the invention but that do not plainly contradict the claims, do not cause a non-compliance with the EPC. The EPC is clear that the claims take precedence.
@Anon, re: your question, please see my response below to @DXThomas.
DeleteThe whole point of original Q1 was to establish whether any "inconsistencies" cause non-compliance with the EPC. The logical way to answer that question would be to interpret the EPC and work out whether any of its provisions require elimination of "inconsistencies" between the description and claims. It is therefore illogical to assume that the answer to that question is "yes" before one has even begun the process of interpreting the EPC.
As to your point about interpretation of the claims, that is well made. The EBA is clearly inclined to disagree ... for reasons that it has not yet divulged.
@ Proof of the pudding, 16.03.2026-11.07.00 GMT
ReplyDeleteYou might think that your opinion and that of other doubters is persuasive, but this is actually irrelevant. It is the EBA which will take the decision, and certainly not yourself and the doubters.
I look at the provisional opinion of the EBA like a document set up by legally qualified people.
The EBA defined firstly two types of inconsistencies and then secondly two types of case law when it comes to the interpretation of Art 84.
The presentation of those four possibilities is a standard way of drafting a legal analysis of a situation, when a plurality of possibilities can be distinguished.
It might look like stating the obvious, but the contrast between the two types inconsistencies eventually clarifies the situation. Only those which imply a non-conformity with the EPC are to be taken into account.
An example of inconsistency of the first type could be for instance, a misspelling of the same word in the claim and in the description. Such a misspelling does not affect the substance of the scope of protection or the clarity of the claim, and can therefore be considered as being irrelevant.
Such an inconsistency can be rectified as a typo under R 139 in procedures before the EPO and under R 140 once a decision is issued if there is a typo in the decision. There is thus no reason to be bothered by inconsistencies of the first type. They can be corrected at the request of the applicant/proprietor.
There are at least two reasons to consider T 56/21 as being "inconsistent" with G 1/24.
Firstly, in T 56/21 the board debated over the relevance of Art 69 in grant proceedings. In G 1/24, the EBA made clear that Art 69 does primarily apply when deciding upon infringement. Besides when it comes to Art 123(3), Art 69 could incidentally play a role, and is not the answer when it comes to assessing patentability under Art 52-57.
Secondly, in spite of quoting numerous decisions of the German Federal Court (BGH), in T 56/21, the board did not agree that the claims have to be systematically interpreted (Auslegung) before any decision on the validity of the claims and/or on infringement. In G 1/24, the EBA made clear that the description has always to be consulted.
I see a problem for yourself and the doubters: in that the EBA considers that T 56/21 to be inconsistent with G 1/24, one of the strongest arguments in all the amicus curiae in favour of not adapting the description has fallen into pieces.
Any inconsistency which gives rises to doubt about the scope of protection, is necessarily relevant to the issue of description adaptation.
It will, of course, be the EBA’s decision that is decisive. That does not mean that it is forbidden to question the “logic” and reasoning relied upon by the EBA to reach that decision. Indeed, if I understand correctly, you yourself have reservations about the EBA’s reasoning in connection with certain decisions, such as G 3/19.
DeleteMy point was not that I could never accept an EBA decision confirming the need for description adaptation. It was that, to come to terms with such a decision, I would need more than flawed reasoning based upon demonstrably false “logic”.
As originally formulated, Q1 essentially asked whether there were any "inconsistencies" which cause a non-compliance with the EPC. As rephrased, Q1 assumes that the answer to the original question is “yes”. That is not “logic”. It is an assumption, plain and simple.
There may be reasoning behind the EBA’s assumption. But for the EBA not to set out that reasoning before rephrasing Q1 is ... problematic. Both the patentee and the opponent have set out contrary arguments, and so will now need to work out why the EBA disagrees without having any indication of the reasoning behind the EBA’s view.
As you correctly point out, “inconsistencies” between the description and claims is a broad church that encompasses examples which differ very significantly in type / character. It may indeed be possible to identify a category of “inconsistency” that not even the EPO would classify as causing a non-compliance with the EPC. But all that means is that the dispute has not been settled for all other categories of “inconsistency”. That is the logical answer, not the EBA’s assumption that there is a category of “inconsistencies” which cause a non-compliance with the EPC.
Interpreting the law requires a deciding body to start from the law and work out its meaning from the wording of its provisions (and other permissible means of interpretation). In this instance, the EBA appears to be working backwards – from an assumed result to a legal justification for that result. That is an impermissible way of interpreting the law, for much the same reason as it is impermissible to rely upon hindsight when assessing inventive step: it sets up a subjective analysis which leads to connections and pointers being perceived, but where a more objective analysis demonstrates them to be absent.
As I understand it, the two reasons why you believe that T 56/21 is "inconsistent" with G 1/24 are:
Delete(a) contrary to the TBA’s conclusion in T 56/21, the EBA decided that Article 69 EPC does not provide a legal basis for interpretation of the claim in proceedings before the EPO; and
(b) the description has always to be consulted when interpreting the claims.
I agree. However, that only provides an answer to my first question. Answers to questions (2) and (3) are still required, as it is not immediately clear why points (a) and (b) above might have any relevance to the questions referred in G 1/25, and why they provide a basis for picking the “First Line of Case Law” over the “Second Line of Case Law”.
Fundamentally, G 1/24 concerned how the claims should be interpreted. It indicates how the description should be used in that process. It does not, however, indicate any requirement that the description should satisfy.
If disclosures of the description give rise to a lack of clarity of the claims, then the appropriate response (and the only one in accordance with the plain meaning of Article 84 EPC) is amendment of the claims.
If the claims lack support from the description, then again the appropriate response (and the only one in accordance with the plain meaning of Article 84 EPC) is amendment of the claims.
In either case, the fact that the description is used to interpret the claims does not make any difference to the plain meaning of Article 84 EPC.
Inconsistency with G 1/24 according to points (a) and (b) above is an accusation that could also be levelled at cases included in the EBA’s “First Line of Case Law”.
For example, Catchword 1 of T 0169/20 incorrectly concludes that “The provisions in Article 84 EPC and Rules 42 and 43 EPC provide an adequate legal basis for claim interpretation when assessing patentability”.
That seems to be a more significant “inconsistency” with G 1/24 than that at point (a) above – as at least Article 69 EPC is consistent with consulting the description to interpret the claims.
Also, contrary to the finding in G 1/24, the ruling in T 0447/22 was based upon the conclusions (in Reasons 13.1) that “it is important to differentiate between a claim consisting of terms with a clear technical meaning and an unclear claim wording” and “The description cannot be used to give a different meaning to a claim feature which in itself imparts a clear, credible technical teaching to the skilled reader”.
That seems to be very much the same kind of “inconsistency” with G 1/24 as set out at point (b) above.
Finally, the main argument in T 56/21 was the plain meaning of Article 84 EPC: the EBA’s criticisms of T 56/21 do not appear to impact upon that argument at all.
I should make it clear that I have not overlooked your statement that “Any inconsistency which gives rises to doubt about the scope of protection, is necessarily relevant to the issue of description adaptation”.
DeleteThe reason that my previous arguments did not specifically address that point is that:
- “the scope of protection” is not the subject of Article 84 EPC; and
- it is therefore not at all clear why alleged doubts regarding that scope should give rise to an objection under Article 84 EPC.
Based upon your previous comments, my understanding is that your response to this point would be to allege that the support requirement works both ways. But that interpretation runs contrary not only to the plain wording of Article 84 EPC but also the consensus viewpoint on the support requirement under the PCT – ie the understanding that the claims should not be broader than is justified by the description and drawings (note: this understanding means that it is perfectly acceptable for the claims to be narrower than is justified by the description and drawings).
In addition to the above, the TP for the EPC do not in any way point to a bidirectional support requirement. In this respect, the most relevant “support” that the EPO President could find was in paragraph 63 of his submission from 29 January 2026, which refers to a provision that was considered but then discarded by the drafters of the EPC (implementing provision No. 4 to Article 68 of the Convention, third paragraph, second sentence of the first draft of the Implementing Regulations to the Convention relating to a European Patent Law).
When interpreting laws, it is difficult (if not impossible) to infer anything useful from a draft provision that, even if arguably a relevant precursor, had completely different wording. Indeed, the Board in T 56/21 concluded that the draft provision in question "was intended to address the concern that the claims might include subject-matter which is not included in the description, and not the other way round".
Perhaps the EBA will find a different (and compelling) reason for concluding that Article 84 should be interpreted in the way that you assert. However, at present, it is not at all evident what that reason might be. Indeed, finding such a reason looks very challenging indeed.
@ Proof of the pudding-17.03.2026-10.53.00 GMT
DeleteYou seem manifestly to confuse a provisional opinion with a decision.
I would claim that a provisional opinion is there to give food for thoughts to the parties, cf. Art 13+14(2) RPEBA and orientate the debate. The provisional opinion is not binding as for the BAs. Although, the RPBEA are not as strict as the valid RPBA, the provisional opinion can most probably not be taken as an invitation to file further submissions, i.e. going further than what has been submitted by the parties and the president of the EPO.
We will have to wait the OP and even more the decision of the EBA. For the time being, any assumptions about the reasons for the EBA to reformulate Q1, decide that there are two types of inconsistencies and to explain or give reasons for it, is thus premature and misplaced.
I would be very careful in indicating to the EBA how it has to proceed when interpreting the law. If the law needs interpreting, at best Art 31-32 VCLT can be used to this effect. Telling the EBA that what it does is impermissible is in my opinion far fetched and bordering of contempt of the court.
I criticised G 3/19 as I criticised J 6/22. Any “dynamic” interpretation of a treaty and/or a rule of law is dangerous. It can correspond to a trend or mode, which can change with time.
G 3/19 was not even taken as a consequence of a decision of the ECJ, it was to please the EU Commission, and is therefore a political decision. As far as J 6/22 is concerned, the EBA has made clear in R 16/23 what it thought of the dynamic interpretation of Art 116 of the LBA and its chairman.
@ Proof of the pudding-17.03.2026-12.12.00 GMT
DeleteI can agree with you that G 1/24 is concerned how the claims should be interpreted. However, it does NOT indicate how the description should be used in that process. This is why it simply obliges the description to be consulted, nothing more. It did therefore NOT have to indicate any requirement that the description should satisfy.
Your position about Art 84 has been expressed many times and is abundantly clear. It works from the claims to the description, something in the claims has to be found in the description and then Art 84 is satisfied. In your opinion, it cannot work from the description to the claims. This is where we disagree.
In my opinion, claims and description are to be seen as a whole and the description cannot allow an interpretation different from that derivable by the skilled person from the plain claim wording. If this is the case, why bother with claims?
When giving its provisional reply to Question 1 the EBA specified that in the situation of an inconsistency it defines as being of the second type, ”the answer to Question 1 is that a further amendment of the description, and/or the claims is necessary in order to comply with the EPC”. This shows actually that, for the EBA Art 84 applies from the claims to the description but also from the claims to the description.
It certainly does not support your view that when interpreting a claim, broadening or limiting statements in the description relative to the interpretation derivable from the plain claim wording has to be taken into account. This is also the position of most of the boards having applied G 1/24.
I note that T 0169/20 has been issued on 23.03.2023, and T 0447/22 has been issued 05.03.2024. T 439/22, the referring decision was issued on 01.07.2024. On the other hand G 1/24 has been issued on 18.06.2025.
At the time they issued their decisions, neither board could know what would be the outcome of G 1/24, not even that there was a referral. It is thus easy to criticise T 0169/20 and T 0477/22. It is even bordering on bad faith to take a board responsible for a statement it made well before G 1/24 was issued. At this rate, we can find lots of decisions which do not tie up with G 1/24. Or should both boards have acquired a crystal ball?
After chickening out of a referral to the EBA on the adaptation of the description, T 56/21 was issued on 14.10.2024, being fully aware that a referral on the interpretation of claims was pending. In T 56/21, the board jumped at the gun and wanted to pre-empt G 1/24 comparing the relationship between Art 84 and Art 69.
@ Proof of the pudding-17.03.2026-14.57.00 GMT
DeleteIf I am not mistaken, I already quoted the plain wording of Art 84. It reads: “The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description”.
If the claims are meant to define the matter for which protection is thought, the matter for which protection is sought has to be defined clearly and unambiguously in the claims.
Leaving in the description statements to the effect that the matter for which protection is thought could be different, either broader or more limited, compared to the plain wording of the claims implies necessary some doubts about the matter for which protection is thought.
The necessity of a clear and unambiguous definition of the matter for which protection is thought has nothing to do with the actual scope of protection which can be defined in post grant infringement proceedings, for example with equivalents.
The TP on Art 84 are indeed of little help. The conclusion of the board in T 56/21 that the draft provision in question "was intended to address the concern that the claims might include subject-matter which is not included in the description, and not the other way round", is one way of looking at it. I explained above, why it is not the only one.
Whether the EBA will find a reason which can convince you that Art 84 applies in both directions, is actually irrelevant. As explained above the EBA has already suggested the amendment could be in the description and/or in the claims. You might considered it incorrect, but stating that Art 84 goes in both ways is what I learned during my initial training as substantive examiner and instructed the examiners I was in charge of to do.
Why do you think that boards, when remitting after appeal they do specify that “the description has to be adapted”.
As member/chair of numerous ODs, I have seen cases in which, after remittal, proprietor and opponent haggled for many hours about the adaptation of the description.
In lots of cases, the opponent wanted a certain adaptation of the description so that it could circumvent the patent in an easier way. It also happened that it was the proprietor wishing an adaptation of the description, which made it easier for him to catch a potential infringer. This shows that adaptation of the description is not a minor issue, otherwise no haggling would have been necessary.
Whilst you have provided a lengthy response to my comments, I note that there is one issue that you have not addressed at all: the fact that the EBA’s Provisional Opinion is based upon a demonstrably false assumption.
DeleteWhilst you are welcome to metaphorically clutch your pearls upon reading my criticism of the EBA, it is not controversial notion to criticise a court for basing their assessment of a case upon a fundamental misconception. It is also not controversial to comment upon how the EBA should interpret the EPC, especially if this merely reflects established case law (https://www.epo.org/en/legal/case-law/2025/clr_iii_h_2_1.html).
As for your statement that my view is “bordering of contempt of the court”, this puts me in mind of Inigo Montoya's famous line from the film The Princess Bride: "You keep using that word. I do not think it means what you think it means".
Finally, whilst you may perceive my views as being “far fetched”, this is only because you assume that no objectively justified fear of partiality could arise from views expressed in a Preliminary Opinion. In response, I would merely ask you to consider a hypothetical scenario in which you are on trial in the US and are present in court during the process of jury selection. In that scenario, would you ask your attorneys to object to a juror who, whilst swearing that they could remain impartial, nevertheless expressed that, based upon a demonstrably incorrect assumption, their preliminary opinion was that you were guilty and that they just needed to work out they reasons why you should be convicted.
Judges are supposed to not only remain impartial but to ensure that their utterances do not give rise to any objectively justified fear of partiality. Expressing opinions that are tainted by bias and/or subjectivity is therefore a no-no, even if the opinions are only preliminary. Moreover, it makes precisely zero sense to wait for the EBA’s final decision before expressing fears of partiality that are objectively justifiable. That would be akin to shutting the stable door after the horse has bolted.
@Proof: I am sure you will have noted the irony in DXT alleging contempt for daring to criticise the EBA’s approach to interpretation while, in the very same comment, criticising the EBA for a political decision. Astonishing.
Delete@ Proof of the pudding-23.03.2026-11.04.00 GMT
DeleteFor a start, I could not give a damn of what happens in a jury in the US. In France there are also some courts (Cour d’assises) comprising jurors which are not professionally trained judges, and the solicitor of the accused can recuse some of them. This has nothing to do with what is happening here.
As you are not party to the proceedings, whether you have allegedly or “objectively justified fear of partiality from views expressed in a Preliminary Opinion”, is totally irrelevant. Only the parties have the right to express fears of partiality, and as it happened in G 1/21, the members of the EBA can act.
It is your good right to criticise a provisional opinion of the EBA, but you should not forget that, at the end of the day, it’s the EBA which will decide and not you. You might consider that the EBA’s decision is based upon a demonstrably false assumption, but this is as well irrelevant.
I am of the opinion that your considerations are no more than an allegation. You have apparently not understood that what the EBA did in its provisional opinion, that is to set the stage as it would be done in any legal analysis of a given situation.
The reasons for the conclusion will be given in the decision. I can only agree with the EBA that only those inconsistencies which matter are those not in accordance with the EPC. We have thus to be patient and not jump at the gun and coming with unjustified fears of partiality.
Art 84 states that “The claims shall define the matter for which protection is sought”. Nowhere in the EPC, and especially not in R42, it is said that the matter for which protection is thought can be given a different definition in the description. Claims and description have different functions which are clearly distinguished in the EPC.
If the description allows to give a different definition of the matter for which protection is sought than that found in the claim, then it follows logically that something is wrong with the claims and an objection under Art 84 is the direct consequence.
Art 84 does not apply directly to the description, but indirectly if the description contains statements giving a different definition of the matter for which protection is sought. If primacy of the claims is not be left meaningless either the description or the claims have to be amendment so that the same definition of the matter for which protection is sought is found in both. This is the key message of all decisions applying G 1/24 preceding T 439/22.
Any decision of the EBA, bee it right or wrong is applicable, whether we like it or not. I do not like G 2/24, which confirmed G 3/04, as I consider that the EBA, and its rapporteur especially, has not realised that the UPC could lead appellants in opposition play tactical games so that the intervener is deprived from any possibility to act centrally and has to defend itself at high costs at the UPC. I do also not like G 3/19, as I think it is a political decision.
I criticise EBA’s decisions only once they have been issued and not whilst they are still in limbo and after the EBA has issued a provisional opinion. I see there a fundamental difference. I further criticise the fact that you clearly think that you know best what the EBA should do.
To me T 56/21 is a kind of life saving ring for all those who are clearly against the adaptation of the description. That the EBA criticises T 56/21 is certainly not welcome for all those, but I understand and support the EBA’s position as it results from the provisional opinion.
I can agree that judges are supposed to not only remain impartial but to ensure that their utterances do not give rise to any objectively justified fear of partiality. This is for instance why the members of the EBA have decided that the Chair of the BAs could not participate in G 1/21. I cannot see anything partial in the utterances of the EBA in its provisional opinion.
Of course it has to be "clear" what is "the subject matter for which protection is sought". Art 84, ding, ding!
DeleteAs to the "scope of protection", because of Art 69 EPC, that is a different matter. I'm not sure that over-zealous efforts to render the subject matter "clear" are always helpful for those charged with deciding what is the rightful scope of protection, by which I mean, what is an equivalent and what is not.
I'm hoping that G1/25 will help everybody, so that in future we can all make a more accurate assessment of what infringes and what does not.
@DXThomas
DeleteWell, I am pleased to see that our views differ far more on matters of judgement than they do on matters of principle.
I can agree that we must be patient and not jump the gun. But not jumping the gun is a principle that also applies to the EBA. For me, the gun has very much been jumped if, without any reasonable justification, the EBA rephrases (and answers in the affirmative) Q1, with the result that the first topic to be discussed during the oral proceedings changes from:
1) For a patent amended during opposition, is there such a thing as an "inconsistency" (between the description and the claims) that causes a non-compliance with the EPC?
to:
1*) For a patent amended during opposition, which provisions of the EPC are not complied with in the case of an "inconsistency" (between the description and the claims) that causes a non-compliance with the EPC?
I would hope that you would be able to spot the difference between these two topics. Whilst it is conceivable that the parties will push back on the EBA's rationale for rephrasing Q1, the Preliminary Opinion does not invite discussion on that point. Indeed, the Preliminary Opinion very much presents the matter as case closed - by claiming that the rephrasing is entirely logical.
Given that the EBA's "logic" can be demonstrated to be flawed, I see the rephrasing of Q1 (and the changing of the topics to be discussed) as somewhat problematic, especially in the light of the EBA's subsequent, subjective assessment of the different lines of case law.
Feel free to disagree, and to perceive all of this as "stage setting" instead. This will not change the fact that, objectively, the Preliminary Opinion gives a strong impression of an EBA that has already jumped the gun.
@ Proof of the pudding-26.03.2026-11.05.00 GMT
DeleteIt is actually irrelevant whether you are pleased or not with the fact that our views differ far more on matters of judgement than they do on matters of principle.
You are free to consider that the EBA has jumped at the gun. It will not come as a surprise that I disagree.
As far as amendment of the claims in opposition are concerned, I would like to draw your attention to the fact that, in the executive summary of my amicus curiae for G 1/25, I wrote:
“Question 1 is to be answered positively, under the proviso of G 3/14, but this proviso could be lifted”.
The title of Section III.1.5.6.2 reads: “Limits of the adaptation of the description in opposition and/or opposition appeal procedures”
In this section I drew the attention to the EBA that there might be situations in which adaptation of the description does not appear be possible in view of G 3/14.
In reply to Question 3, I wrote:
“In examination and examination appeal procedures, there is no limitation under G 3/14 as in opposition and opposition appeal procedures”.
When reading attentively my amicus curiae brief for G 1/25, you would have realised that I was well aware of the problem you presently raise.
Therefore, your questions 1 and 1* do not surprise me. I thought of a potential problem in opposition a while ago. My reply being clear and comprehensive, I do not find it necessary to answer in any detail your questions 1 and 1*.
Actually, the above is the reply I gave on 16.03.2026 to a comment of "Curious George" in my post on G 1/25. I must have been convincing, as I did not see any reply.
In any case, it will be interesting to see how the EBA deals with the problem.
It might well be that the EBA comes with a dynamic interpretation of G 3/14, when dealing with amendments in opposition. We have to wait and see.
Well, you certainly win the award for most abrupt change of topic.
DeleteYou are of course free to disagree re: the EBA jumping the gun. You are also equally free not to provide any explanation whatsoever re: your reasons for disagreeing. Nevertheless, it is notable how much you struggle to provide carefully explained and logically reasoned responses to certain arguments. Indeed, it seems that, instead of addressing the substance of certain comments, you are often inclined to respond by attacking the commenter, changing topics and/or shifting the goalposts. Those are all rather odd tactics for someone who professes to be very confident in their position.
I had indeed spotted your speculation about a "dynamic" interpretation of G 3/14. I had also spotted what seems to be an obvious flaw in your arguments, which has to do with:
- the reasoning in G 3/14 as to why the assessment of clarity has to be the same, regardless of whether the assessment relates to dependent or independent claims; and
- the absence of any reason derivable from the text of the EPC to treat clarity and support any differently.
Proof, I am reading this exchange with bemusement. Quite how we ended up where we are is difficult to wrap my head around. When it comes to arguing about this topic, plus ça change.
DeleteI can only hope the EBA will put us out of our misery as soon as possible. At this point, I don’t even care if they reach the obviously wrong and obviously political decision by deciding that description adaptation is needed despite the obvious lack of legal basis. I would simply like to stop seeing the same arguments (well, one side provides arguments while the other side provides endless repetitive, circular, illogical, rambling assertions) endlessly on these blogs.
@Anon
DeleteI hear you. My concern, however, is that an obviously wrong EBA decision would have effects outside of the EPO.
If the EBA interprets a provision of the EPC to mean something that it obviously does not, what are the national patent offices, national courts and the UPC to make of that? Do they toe the line? Or do they instead steer their own course, thereby setting up decades of battles between the EPO and the courts ... battles in which patentees and the public will get caught in the crossfire?
Nevertheless, in the light of your bemusement, I can see that I really should not have kept up the to-and-fro on this thread for so long. There are clearly some occasions where it is best for all concerned for me to stop flogging a dead horse (ie where, despite my best efforts, I have been unable to elicit a straight answer from an obdurate opponent).
@ Proof of the pudding-29.03.2026-17.47.00 GMT+1
DeleteThe day you come with clear questions, or at least not questions framed as a trap, you might complain about a change of topic.
For a patent amended during opposition, an "inconsistency" between the description and the claims, that causes a non-compliance with the EPC, is one which after amendment, results in that the definition of the matter for which protection is thought is different when comparing the definition in the description with that directly and unambiguously derivable by the skilled person from the plain wording of the amended independent claim. This can be tackled either under Art 84, clarity, or under Art 84, support, as for me support goes in both directions.
What matters is primarily the independent claim. However, it can well happen that with an amended independent claim, a lack of clarity is introduced in the combination of the new independent claim with the existing dependent claims. It can also happen that added matter can be introduced in the combination of the new independent claim with the existing dependent claims. The latter was a classical exercise in Paper C of the old EQE.
It is thus not sufficient to check whether the independent claim is, as such, novel and inventive, but it is also necessary to check whether the new combination with existing dependent claims does not induce a lack of clarity or added matter. This is actually also needed before deciding grant. A lot of ED’s do, alas, not think of the problem. They are happy to get rid of the case, and the problem then appears during opposition.
In view of the limitations of the application of Art 84 in opposition introduced by G 3/14, it is thus legitimate to raise the corresponding problem.
By the way, the above is what I have been trained to do, check clarity and added matter of dependent claims when the independent claim has been amended. This is also what I taught the examiners I was in charge of. I do not think that there is anything wrong with this.
The present reply, like others, should be within the reach of any person looking at the replies with a mind willing to understand. That you think you know best, and even allow yourself to tell the EBA what is right or wrong, is your good right, but not sharing your views has nothing to do with flogging a dead horse. To sum it up, your arguments are, in my view, not compelling, and thus worth being disputed.
@ Anonymous, 16.03.2026-11.36.00 GMT
ReplyDeleteI look at the provisional opinion of the EBA like a document set up by legally qualified people.
The EBA defined firstly two types of inconsistencies and then secondly two types of case law when it comes to the interpretation of Art 84.
The presentation of those four possibilities is a standard way of drafting a legal analysis of a situation, when a plurality of possibilities can be distinguished.
It might look like stating the obvious, but the contrast between the two types inconsistencies eventually clarifies the situation. Only those which imply a non-conformity with the EPC are to be taken into account.
I concur with your point of view that the EBA invented the first type as a legal fiction to provide a logical basis for the remainder of its opinion.
An example of inconsistency of the first type could be for instance, a misspelling of the same word in the claim and in the description. Such a misspelling does not affect the substance of the scope of protection, and can be considered as irrelevant.
Such an inconsistency can be rectified as a typo under R 139 in procedures before the EPO and under R 140 once a decision is issued if there is a typo in the decision. There is thus no reason to be bothered by inconsistencies of the first type. They can be corrected at the request of the applicant/proprietor.
As regards the case T 873/24:
ReplyDeleteLet's assume we have exactly 0.2% titanium in 1kg of the claimed steel:
The Titanium content in 1 kg of said steel is 0.2% * 1000 g = 2 g.
If the ratio is determined in weight percent:
Ratio = Weight of Nitrogen / Weight of Titanium = 3.42.
Weight of Nitrogen= 2 g / 3.42 ≈ 0.585 g
If the ratio is in molar mass:
Ratio = (2g / 47.87g/mol) / (Weigth of Nitrogen / 14.01g/mol) = 3.42.
Weight of Nitrogen ≈ 2.004 g
In summary, while a ratio in wt% allows only for 0.585 g of Nitrogen in 1 kg Steel, a molar ratio allows up to 2 g of Nitrogen in 1 kg of said steel.
The omission of wt% thus clearly extends the scope of the claim.
I think you have just shown that A=A.
Delete@Kant: No actually Anonymus has proven that 0.5<2 and that therefore the omission extends beyond the application as filed
DeletePut it this way, 2 g Ti = 2/47.87 moles, = 0.0418 moles.
Delete0.0418/3.42 moles of N has a mass of 0.0122 x 14.01 = 0.171 g
Do you at least agree that 0.171 is less than 2.00?