tag:blogger.com,1999:blog-5574479.post5615563747038064728..comments2024-03-28T16:45:51.051+00:00Comments on The IPKat: Board of Appeal finds no legal basis for the requirement to amend the description in line with the claims (T 1989/18)Verónica Rodríguez Arguijohttp://www.blogger.com/profile/05763207846940036921noreply@blogger.comBlogger19125tag:blogger.com,1999:blog-5574479.post-67954346259466505432022-01-24T15:51:22.301+00:002022-01-24T15:51:22.301+00:00Someone back in this thread said that the requirem...Someone back in this thread said that the requirement of conforming the description to the amended claims is unique to the EPO. Not correct: it is a feature of practice in at least one member states of the EPC, which (I believe) is why it came to the attention of the EPO. However, I do think the EPO made a BIG mess of reinforcing practice in this area, and the guidelines were overkill/over-interpreted. To make matters worse, the examiners did not really know the reasons, and would just explain that "our managers" require it. <br /><br />To make my first point concrete, there is case law in the UK that failure to excise a no-longer-covered embodiment can lead to the finding that a specficiation was not framed with reasonable skill. This does not render a patent completly unenforceable, but it can have severe consequences on damages for past ifnringement, when a patent is found to be "partially valid" under S 63 of the Patents Act 1977. The case is Rediffusion Simulation Ltd v Link Miles Ltd, 1992 WL 895277 (1992). Headnote (8) says "there was a lack of reasonable skill in framing the specification if a patent agent had failed to make such consequential amendments as were necessary when a claim was altered ". From memory, the embodiment of Fig 6 of the drawings was no longer within the scope of the amended claims, but was still described as an embodiment of the invention in the granted specification. <br /><br />Anonymous (13Jan) has it right when they say that to see every sentence of the description starting with "In some embodiments" is not really helpful to anyone. To base amendments on this "modern" (aka "lazy scattergun") style of description while meeting the "Gold Standard" becomes very difficult, not only amendments of the description but also amendments of the claims. jj9noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-86438278822340319712022-01-13T10:46:45.390+00:002022-01-13T10:46:45.390+00:00Would it be enough to only describe the subject ma...Would it be enough to only describe the subject matter of original claim 1 as an embodiment, and leave everything else in the description as optional features? The days of the clearly-delineated numbered embodiments are (mostly) long gone anyway: you're more likely to see every sentence of the description starting with "In some embodiments" which is not really helpful to anyone.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-18563576067660164012022-01-11T08:55:28.471+00:002022-01-11T08:55:28.471+00:00Hi,
I am a student working on my master's th...Hi, <br /><br />I am a student working on my master's thesis. The topic of the thesis is the right / obligation to make changes to the patent description. T 1989/18 will be central to my thesis and your views on the matter is very helpful for me. If you have any relevant decisions you recommend reading regarding this topic, please let me know!Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-89253132807224778732022-01-05T08:37:45.148+00:002022-01-05T08:37:45.148+00:00As I wrote before, there is nothing in the EPC tha...As I wrote before, there is nothing in the EPC that requires the description to be supported by the claims (art. 84 requires the OPPOSITE), therefore the description should not be adapted to the claims and in particular there is no need at all to delete subject-matter not covered by the claims. Such a deletion may even raise issues of art. 123(2) and (3) EPC.Patent Robotnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-10443859321005761322022-01-05T08:10:56.032+00:002022-01-05T08:10:56.032+00:00Thank you, DXT. Perhaps the Board here was doing s...Thank you, DXT. Perhaps the Board here was doing something like what I enjoy doing on the blogs: set a hare running and see who chases it. Or, as one of my critics on the US blogs often says: throwing stuff against a wall to see what sticks.Max Dreihttps://www.blogger.com/profile/03338443708960801180noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-198849355557663352022-01-04T21:18:56.247+00:002022-01-04T21:18:56.247+00:00Dear Max Drei,
It is worth noting that the chair ...Dear Max Drei,<br /><br />It is worth noting that the chair in T 1989/18 was simply deputising. <br /><br />By the way, M.Harrisson is chairing BA 3.2.06 and the present decision was taken by BA 3.3.04.<br /><br />To come back on the case, why on earth does a deputising chair find it necessary to come up with such a decision, even if he is the deputy chair of the BA?<br />Was the legal member wanting to show off? <br /><br />The description has to be adapted to the claims and most of the boards require it. <br />When they remit after having found some claims allowable, they remit for further prosecution which mostly means adapting the description. Sometimes they even say so. <br /><br />In the absence of the applicant or the proprietor at the OP, most BA refuse the application or revoke the patent. Some are more lenient and remit in spite of the absence of the proprietor. Are all those BA so wrong that they need a telling off by BA 3.3.04?<br /><br />If the description does not need adaptation then the last sentence of Art 84 should be deleted. But then, like in the USA, the behaviour of the applicant should be taken into account when he starts an infringement action.<br /> <br />To me it was exactly the Pemetrexed case which lead me to think that it was the description which was not amended correctly which caused the upheaval. During the whole examination the applicant wanted a quick decision and accepted to limit its claims to pemetrexed disodium. <br /><br />The applicant drew a “distinction between subject matter which is relevant to the invention which is indicated as being to which “the present invention generally relates” and the “subject matter provided by the invention” which is the subject matter claimed”. The applicant further “highlighted that the reduction of toxicity of the anti-folate in the use of the combination therapy is relevant and should be retained”. <br /><br />The only combination therapy ever disclosed or envisaged during examination disclosed was pemetrexed disodium + the anti-folate, i.e. vitamin B12. <br />This should not have been left in the description. DXThomasnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-1164117716365500902022-01-04T09:07:07.915+00:002022-01-04T09:07:07.915+00:00Art. 84 EPC requires the claims to be supported by...Art. 84 EPC requires the claims to be supported by the description (to avoid that what is claimed cannot be found also in the description).<br />However, there is nothing in the EPC that requires the descriiption to be supported by the claims.Patent Robotnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-80208249535968764222022-01-03T17:52:07.272+00:002022-01-03T17:52:07.272+00:00Excellent arguments, Anonymous. They reminded me o...Excellent arguments, Anonymous. They reminded me of the Pemetrexed litigation, in which the courts gave the claims a wider scope of protection than their literal wording would seem to allow. In that case, an unconformed description might have been more helpful to the court than one strictly conformed to the claims after prosecution amendment. Where's the harm in everybody agreeing that if Applicants wants it, the "support" requirement of Art 84 EPC can still be met even if the description remains as filed, even on into the B publication?<br /><br />One consequence of the importation of a DoE (Doctrine of Equivalents) into the EPC is that it wipes out the ages-old maxim that what comes after and infringes would, if coming before, destroy novelty. Could it be that an unintended consequence of the arrival of the DoE is that it clears the way for descriptions to go to B publication without being conformed? Max Dreihttps://www.blogger.com/profile/03338443708960801180noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-10177489664082492062022-01-02T16:00:38.455+00:002022-01-02T16:00:38.455+00:00Thanks for sharing your thoughts. As to your first...Thanks for sharing your thoughts. As to your first point, an applicant submits the application with the belief that the invention as described is patentable. If the examining body of competent jurisdiction disagrees, the applicant has an opportunity to amend the claims until they are found to be allowable, or to appeal the refusal. However, any "concession" made by the applicant to obtain a patent is not admission that the allowed claims define the broadest scope of the invention. Rather, it is a compromise offered in exchange for a grant of IP rights (better to get something than to get nothing). Thus, it is not necessarily a contradiction for the description of the invention to be broader than the allowed claims if one (correctly) presumes that the claims, and not the description, define the scope of protection of the granted patent. As long as the scope of the claims are clear (as required by the EPC), then any description broader than the claims can be understood to be beyond the scope of the patent rights and not confused as to being some alternative interpretation of those rights (that is what the claims are for).<br /><br />The problem with the Gold Standard (other than the tension between Art 84 and Art 123(2)) is that there is no clear requirement for amending the description. From a practical standpoint, most patents are shelved. The few that are asserted are likely to have sufficient value that the parties (either on their own or through the courts) can spend the time and money to litigate what the patent covers and what it doesn't. This acknowledges that the patent examiner doesn't, and shouldn't, have the final word in an ex parte proceeding. While the goal of clarity is admirable, and we should want to reduce the number of bad patents that are granted, it also seems like forcing the applicant to commit to the Examiner's interpretation prior to grant is like putting the cart before the horse because patents are not self-enforcing. In the U.S., the USPTO (for better or for worse) has adopted the broadest reasonable interpretation standard in an attempt to mitigate these sorts of post-grant interpretation issues. If an Examiner believes that the claims are too broad, then the Examiner should make a refusal on that basis and not, instead, force the applicant to hew to the Examiner's interpretation of what the invention is (as opposed to what aspect of the invention the applicant has agreed the claims cover).Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-78148338135904778102022-01-01T23:44:25.517+00:002022-01-01T23:44:25.517+00:00I suppose this comments thread has gone to sleep n...I suppose this comments thread has gone to sleep now but, if not, I offer the following comment and hope for reaction.<br /><br />I find para 5. of the "reasons"in the written Decision somewhat superficial because it fails to address the question what does the word "support" mean (in the context of Art 84 EPC). Does it mean i) "backs up" or "corroborates", or does it mean ii) "enables" the claimed subject matter.<br /><br />Suppose I file at the EPO, with a claim to the feature combination A+B+C+D, the EPO searches and finds in prior publication P1 exactly that feature combination. In reply I file a 2-part independent claim to "A+B+C+D characterized by X". I leave the description unamended, whereby it continues to declare that the invention is A+B+C+D. That was true when the patent application was filed but it is manifestly false, as soon as D1 is brought to light. The unamended WO description text enables the granted claim but does it corroborate the granted claim? I think not. Consider witness testimony at trial. Witness A gives evidence of fact and, later, Witness B gives evidence which flatly contradicts that given earlier by A. Does Witness B "support" Witness A? Isn't that contention a bit of a stretch?<br /><br />Reverting to Para 5 of the Reasons, after the first two sentences, the text simply recites the constraints on using the description to construe the claim. But just because you can't use the description to get to an artificial meaning for the claim does not mean that it is obligatory and in all cases and circumstances to construe the claim as if you have not already read the description (or that the description doesn't even exist). I mean, the B publication is a single document with several parts. One supposes that the legislator envisaged that the person construing the claim would do it only after reading all the parts of the document, to gain a cumulative undertsanding of its teaching. Shouldn't those different parts then be rendered consistent with each other, to spare the court construing the claim unnecessary stress and confusion? If a description in an EPO B publication flatly contradicts the granted claim in regard to what the subject invention is, to what extent does that description "support" that claim? In other words, will an enabling description always satisfy the Art 84 requirement that it "support" the claim, regardless how egregiously the description contradicts the claim in its statements of what the invention is?<br /><br />The EPO has an ongoing practical problem with the strictness of its Gold Standard. Applicants with a deserving invention nevertheless often find themselves in the Bermuda Triangle, needing to amend to comply with Art 84 but unable to do so without offending one or both of Art 123(2) or 84. I wonder whether the motivation for this Decision is to reduce the number of deserving inventions that perish in the Bermuda Triangle. The problem with that is that easing the requirement to conform the description strictly to the allowable claims will do nothing to help in that regard.<br /><br />Alternatively, the EPO Boards of Appeal are looking for ways to remove aspects of practice peculiar to the EPO (of which conforming the description is one) which increase prosecution costs at the EPO and which therefore irritate bulk corporate EPO filers and so occupy their powerful lobby. <br /><br />Max Dreihttps://www.blogger.com/profile/03338443708960801180noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-29179275263143973852021-12-29T20:11:57.736+00:002021-12-29T20:11:57.736+00:00I would like to draw the attention to T 1399/17 wh...I would like to draw the attention to T 1399/17 which came to a different conclusion.<br /><br />As the claims amended during the OP before the OD which lead to maintenance in amended form were not adapted to the description and hence left doubts about the scope of protection, the MR was not allowable. <br /><br />https://www.epo.org/law-practice/case-law-appeals/recent/t171399eu1.html<br /><br />See Point 2 of the reasonsDXThomasnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-5591266713259782322021-12-29T19:50:06.707+00:002021-12-29T19:50:06.707+00:00Dear Max Drei,
I only used the word trance as I h...Dear Max Drei,<br /><br />I only used the word trance as I have rarely seen a topic in which so many representatives commented on a decision. <br />You might not have spotted the cheek in my tongue. <br />I fully agree with your statement about the B publication, but construing the claims does not mean for me leaving in the description statements which could put doubts about what the claim cover. Attentive Observernoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-69465026381378440002021-12-27T17:51:56.444+00:002021-12-27T17:51:56.444+00:00I'm a representative, Attentive, but I'm n...I'm a representative, Attentive, but I'm not one of those put into a trance. I am somwhat equivocal about the whole issue of conforming the description. If we see the description as a historical record of what was filed by the Applicant on the filing date of the application, then any effort to conform it to the allowed claims is misguided. Conversely, if the description of the B publication is to be that which informs the task of construing the issued claims, then it should be conformed.<br /><br />For me, the more interesting choice is whether to excise passages of the description or, instead, hang on to them but preface them with words indicating that they are not descriptions of subject matter within the ambit of the claim. I find that my decision varies from case to case, often turning on Art 83 EPC considerations. Sometimes I want to hang on to those passages but in other cases I am thinking that the scope of infringement by equivalent is best optimised by excision of such passages of the descrption. As ever , Applicant has to decide what text goes to issue.Max Dreihttps://www.blogger.com/profile/03338443708960801180noreply@blogger.comtag:blogger.com,1999:blog-5574479.post-34047690311654842402021-12-27T16:56:59.598+00:002021-12-27T16:56:59.598+00:00Arguing that we shouldn't seek legal certainty...Arguing that we shouldn't seek legal certainty in one area because there are other bigger issues in another area is a fallacy. <br /><br />Description amendments put us in a trance because they waste our clients' money and do not improve legal certainty enough to justify the additional costs. When I am prosecuting, description amendments are purely a waste of my time and the client's money. When I am reviewing third parties' patents, it makes essentially no difference to my infringement opinions whether the description has been amended. So what is the point, particularly when the legal justification is so weak? Article 84 requires the description to support the claimed invention, but a bridge can support many cars simultaneously. Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-12460036592204569042021-12-27T15:26:33.728+00:002021-12-27T15:26:33.728+00:00There is one decision T 1989/18 which goes against...There is one decision T 1989/18 which goes against T 1808/06 which is the reference in matters of adaptation of the description.<br /><br />Should the president file a referral for every decision which is contrary to another one the legal department of the EPO would only be busy with such matters. This is not reasonable.<br /><br />To me there is one referral which could be useful: depending on the BA to which the file goes, the absence of a measuring method is considered sometimes as a matter under under Art 83 which leads to the revocation of the patent. For other BA it is a mere problem of Art 84 which under G 3/14 cannot be discussed in opposition. <br /><br />This lottery effect should be brought to an end, and if a BA is not prepared to refer the question to the EBA, then the president should do so. <br /><br />The adaptation of the description seems to become kind of fixation that puts representatives in a trance.Attentive Observernoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-55948549564631818902021-12-27T14:33:54.712+00:002021-12-27T14:33:54.712+00:00Shouldn't this pave the way for a further refe...Shouldn't this pave the way for a further referral by the President to the EBoA? Clearly, conflicting decisions by different Boards concerning a point of fundamental nature.Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-7688509411763007432021-12-27T11:27:01.423+00:002021-12-27T11:27:01.423+00:00There is a lot of discussion on LinkedIn about thi...There is a lot of discussion on LinkedIn about this decision.<br /><br />There are two distinct threads but both are about the same decision:<br /><br />https://www.linkedin.com/feed/update/urn:li:activity:6880822812777443328/<br /><br />https://www.linkedin.com/feed/update/urn:li:activity:6880931690655584256/<br />Anonymousnoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-3062659630178554132021-12-27T11:19:17.985+00:002021-12-27T11:19:17.985+00:00Dear Max Drei,
I can agree with you that it would ...Dear Max Drei,<br />I can agree with you that it would help if the description would not have to be adapted to the new claims like in the US.<br />There are however two conditions to fulfil:<br />1) the last sentence of Art 84 should be deleted, and this needs an amendment of the EPC other than by "secondary legislation";<br />2) like in the US, the behaviour of the applicant/proprietor during examination should be taken into account.<br />The problem is that there is a fluctuating legislation about the doctrine of equivalents. This results to a large part of the refusal of the contracting state to adopt a definition of equivalents in the protocol on Art 69 during the diplomatic conference of 2000. An Art 2 has been added, but the Art 3 about equivalents has been rejected.<br />The EPO cannot cater for the various ways equivalents are dealt with by the national jurisdiction and can thus not accept that what is claimed is not really what is claimed but could also be something else.<br />By the way the BA in T 1989/18 seems to have confused clarity of the claims as such (first part of Art 84) and support by the description (last sentence of Art 84).<br />Last but not least, it is, at least for the time being, a single decision.<br />Should the Guidelines be adapted, it might indeed take quite a while. <br />How long did it take to remove the purposive selection in the Guidelines?<br />The three points test = ex essentiality test is still in the Guidelines in spite of the heavy criticism by the BA. <br />Attentive Observernoreply@blogger.comtag:blogger.com,1999:blog-5574479.post-77960191415118015342021-12-27T09:22:56.924+00:002021-12-27T09:22:56.924+00:00For me, this decision is a bolt out of the blue bu...For me, this decision is a bolt out of the blue but, on reflection, perhaps we should have been expecting it. Striking out the requirement for strictly conforming the description to the allowed claims will deliver a huge boost (to use the technical term de jour) to efficiency at the EPO. Such a huge uplift in efficiency would clear the way for management to reduce the numbers of highly paid EPo Examiners quite considerably. Besides, the Americans don't do it, and their courts can still manage to do patent litigation, so why should we Euro's worry, eh?<br /><br />One would have thought that Boards of Appeal are unswayed by thoughts about efficiency. Not any more though. The topic seems to weigh more and more heavily in their delibarations. Perhaps the members of this deciding Board are all still young, in tune with the times, and at this stage of their career within the EPO find thoughts about improving efficiency particularly persuasive.<br /><br />Meanwhile, if past performance is any guide to the immediate future, we shall all have to continue delivering strict conformity, that is, until the Examiners' Bible, The Guidelines, suffers its next revision by management.Max Dreihttps://www.blogger.com/profile/03338443708960801180noreply@blogger.com