The patent relates to a process for preparing a carbohydrate-containing nutritional powder by spray–drying.
Brief outline of the case
The patent was revoked and the proprietor appealed the decision.
The OD decided not to admit the fresh ground for opposition under Art 100(a) regarding lack of novelty.
The OD identified two differences in claim 1 as granted over D19, namely that the starch is pre-gelatinised and that the starch particles are blown (i.e. not sucked) into the spray dryer. It did not consider the claimed subject-matter inventive.
Claim 1 of AR 1, filed during the OP before the OD, was also found to lack inventive step.
The opponent’s view was that there was no distinguishing feature over D19.
The board agreed with the opponent and held that claim 1 has no distinguishing feature over the disclosure of the closest prior art D19.
Based on G 7/95, OJ 1996, 626, Reasons 7.2, the board considered that a finding of lack of novelty …. inevitably results in such subject-matter being unallowable on the ground of lack of inventive step.
The subject-matter of claim 1 thus lacked an inventive step due to the absence of any distinguishing feature, as the belated ground of opposition of lack of N was not admitted by the OD.
Hence, the board confirmed the revocation.
Interpretation of the claim in the light of the description
§ [0012] of the patent discloses that the pre-gelatinised starch is introduced into the spray dryer via the apparatus for blowing back fines. Such a process is according to the invention. This confirmed that introducing the pre-gelatinised starch via a fines return system qualifies as introducing it into a spray- dryer’s zone of turbulence.
The proprietor argued that § [0012] of the patent had by mistake not been adapted during the examination proceedings leading to grant. The statement in this paragraph was not meant to define what the zone of turbulence was.
This argument was not found convincing.
Firstly, interpreting a claimed feature in light of the description requires that account be taken of the description as it is actually contained in the file. Therefore, when interpreting claim 1 of the patent as granted, account must be taken of paragraph [0012] as it is contained in the patent specification.
The board also noted that the proprietor adapted the description before grant of the patent. In particular, the examples were stated not to be according to the invention. If the proprietor had wished to introduce further adaptations during the examination proceedings, then it should have done so. A mere intention in this regard is irrelevant. The patent specification has to be taken at face value.
Secondly, the teaching in § [0012] of the patent specification makes technical sense and is confirmed by the closest prior art D19. Moreover, dependent claim 4 of the patent as granted also specifies that a blow back apparatus is used for introducing the particles of pre-gelatinised starch into the spray-dryer.
For the board, introducing pre-gelatinised starch into the spray-dryer via a fines return system as disclosed in D19 necessarily means that the starch is blown into the zone of turbulence.
Therefore, claim 1 has no distinguishing feature over the disclosure of the closest prior art D19.
Comments
This decision could lead to the conclusion that when the description is adapted to the claims, the adaptation has to be correct by all means. This is the right approach.
A further possible conclusion, would be that it is better not to adapt the description to the claims.
According to the majority of case law on adaptation of the description, this second solution would be contrary to Art 84, second sentence.
However, this decision shows once more that a decision of the EBA on whether or not the claims have to be interpreted taking into account the description during prosecution in examination or opposition is urgently needed.
https://www.epo.org/law-practice/case-law-appeals/recent/t211093eu1.html
Comments
15 replies on “T 1093/21 – Interpretation of the claims – Adaptation of the description to the claims”
Dear Daniel, my jaw dropped when I read your comment about not conforming the description. For me, one lesson from this case is that, if Applicant embarks on the work of conforming the description, then the work needs to be done thoughtfully and carefully, lest a half-baked and hurried schedule of description amendments leaves Applicant worse off than ever.
Who was it? St Augustine perhaps, a thousand years ago. I’m thinking about the prayer to give me the determination to change that which can be changed, the stoicism to accept what can’t be changed but, above all, the wisdom accurately to distinguish the one from the other.
Conforming the description is a challenge, a minefield. With this case we see that TBA’s at the EPO seem not to need Applicants to do it in order to get to the right result. Perhaps patent courts don’t either.
Dear Max Drei,
You better be careful. Your jaw has no reason to drop. Not adapting the description could be one conclusion drawn from the decision. But it is not the one I am favouring. It is no guess that it is the first one: the description has to be adapted.
Whether it was St Augustine who said “give me the determination to change that which can be changed, the stoicism to accept what can’t be changed but, above all, the wisdom accurately to distinguish the one from the other”, is not so important.
When it comes to apply this wisdom, I think it ought to be applied when there is no rule one has to abide for. Here we have Art 84, second sentence. I am thus of the opinion that, as long as we have Art 84 as it stands, what St Augustine said is not applicable in the present instance.
Adapting the description is not a minefield, the present decision just reminds that when it is done, it just has to be done correctly. It certainly does not say that it should not be done.
To me the more important question is whether in prosecution before the EPO, the description has systematically be taken into account when interpreting the claims or only in exceptional circumstances.
Such a referral seems to me more important than just about the adaptation of the description.
Thanks for the appreciative comment of my blog in IPKat.
I replied to you on IPKat and I hope that my reply will be published.
No reply yet visible on the IPKat blog, Daniel, but author Rose Hughes is in house for a large pharmaceutical company so has much more important things to do than curate her blog postings. I always find her posts impressive, and am grateful that her employer allows her to contribute so expertly.
Perhaps over the week-end she will let through your post onto her blog item. I do hope so.
Meanwhile, I smiled at your writing about conforming the description that there is no problem with it, so long as it is done “correctly”. No different then from any other part of patent drafting. As a drafter, all you have to do to keep your client out of court is to remember always to draft “correctly”.
Dear Max Drei,
I fully agree with you about the performance put to light by Rose Hughes.
I would add that most other drafters of blogs, be it Just Patent Blog, Delta Patent Blog or Le Blog du droit européen des brevets, are active professional representatives, and keeping a blog next to professional activities is anything but easy.
In this respect, I have a much easier task as I am not any longer a staff member of EPO and retired. This allows me not only to draw the attention to some decisions of the boards, but also allows me to comment the same.
That you were smiling at my comment is not a surprise. The present decision shows that indeed the adaptation has to be done correctly, like so many other actions when dealing with patent applications and granted patents.
In the meantime my reply is visible on IPKat.
@MaxDrei
I believe the author of the prayer you quote is Emperor Marcus Aurelius. I like the phrase, it is clear and concise as we say in patent parlance, although one should also realise that « the things that cannot be changed » are generally defined on the basis of preconceptions. You know the phrase by Mark Twain « They did not know it was impossible, they did it. »
Turning to the decision, it is an utterly unsurprising illustration of the potential for trouble of the EPO practice of description adaptation, leading both the applicant and the EPO to trip over the carpet. Reckoning at the EPO over this practice is long overdue.
Thank you Francis, and thank you, Daniel. I wasn’t aware of the Twain quote. I like it. On what is or is not “possible” within the meaning of Art 84, EPC is something on which reasonable minds disagree at the moment. There have been occasions in the past when the EBA has brought great clarity to a point of raging disagreement. I set my hopes on the TBA doing it again, on the vexed question of how much “conforming” of the description is necessary to satisfy the provisions of Art 84, EPC. a number of different outcomes are all plausible, I would think.
Dear Max Drei,
I can only insist on the necessity for a referral to the EBA about taking or not into account the description when interpreting the claims, other when assessing in opposition whether the scope of protection has been extended or not.
But assessing the scope of protection cannot include any doctrine of equivalents. This is and should remain the privilege of national courts.
A broader referral to the EBA seems more appropriate than just a referral just on the adaptation of the description.
For me, the more interesting question for the EBA is what does “support” mean, in Art 84, EPC. In particular, we already know that it means that what is within the claim has to be described. But does it also mean, just as forcefully, that everything that is described has to be subjected to a binary sorting into i) within the claim or ii) outside the ambit of the claim.
@MaxDrei
@DXThomas
Since your refer to the EBA, it is worth noting that the EBA decision G 2/21 published this week, which deals with post-filing evidence, brings food for thought concerning the requirement for adaptation of the description.
G 1/22 presents the application as originally filed as the cornerstone of inventive step assessment, as clear from the following :
“A patent applicant or proprietor may rely upon a technical effect for inventive step if the skilled person, having the common general knowledge in mind, and based on the application as originally filed, would derive said effect as being encompassed by the technical teaching and embodied by the same originally disclosed invention.”
Bearing this in mind, it appears utterly inconsistent for the EPO to require any substantive adaptation of the description. The EPO should wonder whether such amendments can have any effect, if the basis for the assessment of inventive step, is only the application as originally filed as emphasised in G 2/21.
Frankly, what is the name of the game for the EPO practice ? It is acknowledged in T 1024/18 and in the EPO press release of July 2022 that, in the name of « legal certainty », it is to weigh in on the interpretation of claims and the assessment of equivalents by national courts. But this is outside the EPO’s remit as clear from the established case law.
Besides, even if it was assumed that an amendment of the description is effective in the context of judiciary proceedings, this would imply that it has the potential to alter the interpretation of the claims by the court. This in itself can be held inadmissible new matter, whether the amendment is an addition or a deletion (see UK MPP section 76).
@MaxDrei
@DXThomas
Since your refer to the EBA, it is worth noting that the EBA decision G 2/21 published this week, which deals with post-filing evidence, brings food for thought concerning the requirement for adaptation of the description.
G 1/22 presents the application as originally filed as the cornerstone of inventive step assessment, as clear from the following :
“A patent applicant or proprietor may rely upon a technical effect for inventive step if the skilled person, having the common general knowledge in mind, and based on the application as originally filed, would derive said effect as being encompassed by the technical teaching and embodied by the same originally disclosed invention.”
Bearing this in mind, it appears utterly inconsistent for the EPO to require any substantive adaptation of the description. The EPO should wonder whether such amendments can have any effect, if the basis for the assessment of inventive step, is and remains only the application as originally filed as emphasised in G 2/21.
Frankly, what is the name of the game for the EPO practice ? It is acknowledged in T 1024/18 and in the EPO press release of July 2022 that, in the name of « legal certainty », it is to weigh in on the interpretation of claims and the assessment of equivalents by national courts. This is outside the EPO’s remit as clear from the established cas law.
Besides, even if it was assumed that an amendment of the description is effective in the context of judiciary proceedings, this would imply that it has the potential to alter the interpretation of the claims by the court. This in itself can be held inadmissible new matter, whether the amendment is an addition or a deletion (see UK MPP section 76).
Dear Mr Hagel,
I have a had a look at G 2/21 and commented it on the present blog.
I am fully aware that you and Max Drei would like to see the last sentence of Art 84 to be deleted or at least to be ignored.
I am at a loss to understand why and how G 2/21 could bring “food for thought concerning the requirement for adaptation of the description”.
It is certain that G 2/21 is insisting upon the application as filed, and of its interpretation when it comes to accept or not post-published evidence when assessing IS, but to conclude that the description should not be adapted, is a conclusion I cannot find, directly or indirectly, in G 2/21.
Free evaluation of evidence has nothing to do with adaptation of the description and T 1024/18 simply states the obvious: when the description has to be adapted, it has to be done correctly.
In T 1024/18, the board identified an inconsistency between the claims and the description, and concluded that the claims were not supported by the description. AR 2 was therefore not allowable under Art 84, second sentence.
To conclude that the adaptation of the description is outside the remit of the EPO is a step I will not take. T 1024/18 represent a major line of case which has only be contradicted by three decisions to the contrary.
The adaptation of the description leaves national courts entirely free to decide what falls under the claims, and especially to devise any doctrine of equivalents they think fit. On the other hand, the description cannot contain any statement which would contradict or gives rise to doubts about what falls under the plain wording of the claims.
Dear Max Drei,
In reply to your comment of 24.03.2023, I invite you to see what I said to Mr Hagel with respect to T 1024/18.
In order for the claims to be supported by the description, it is necessary to ban from the description any statement which would contradict or gives rise to doubts about what falls under the plain wording of the claims.
It might look binary, but it is how Art 84, second sentence is applied by the vast majority of the boards.
Dear M. Thomas,
I am surprised that you can attribute me the inept idea that the 2nd sentence of Art 84 should be deleted or ignored. It is of course an easy way to discredit someone you disagree with. But this is not respectful, to say the least.
As a matter of fact, I have written the contrary in an article I published in the 1/2023 issue of epi information. I wrote that the support by the description is an effective bulwark against inadmissible new matter, and on the positive side, it is clearly necessary for understanding the meaning of the claims.
If G 2/21 is food of thought for the issue of description adaptation, it is simply because it insists that a « technical effect » must be disclosed in the description as filed. This was also pointed out in G 1/19 for simulations. When this is acknowldged, what is the point of adapting the description to claim amendments ? The skilled person will understand the « technical teaching » encompassed in the originally filed application, having in mind the common knowledge at the filing date. No room then for post-filing amendments of the description.
I do not need to elaborate again on the drawbacks of the EPO practice : unnecessary costs and delays, new matter issues, especially in view of the Rule 71(3) amendments, and legal uncertainty regarding the « description » referred to in Art 69 : should it be the original description, or the adapted description including post-filing amendments ?
I agree with MaxDrei on this topic, but I beg to differ on a way toward resolution. I doubt that the EBA will look at the matter, and even if it did, it would be unlikely to cure the isolation of the EPO vis-à-vis the national patent offices. I have suggested in my article that the EPO management should consider adding the issue to the scope of the « Convergence of practice » programme which is part of the EPO’s 2023 objectives. But this would assume harmonisation of patent practices in Europe is a high-priority for the EPO.
Dear Mr Hagel,
My intention has never been to discredit anyone. Should you have had this impression, I regret it. But I do not accept that you say that my intention was to discredit you. I do not agree with your point of view, but this does by no mean boils down to a lack of respect. We are all professionals and that the points of view might differ is part of life’s rich tapestry. I even would go as far as to say that to a certain extent I even understand your point of view. Coming with lack of respect is not a notion I want to see in professional discussions.
If the description should not be adapted, the only possibility I see to do this, is either to delete or to disregard Art 84, second sentence. It might look simplistic at a glance, but I do not have a better or different conclusion to draw. Moreover I never said it was an inept idea.
Besides the very abstract notions brought in by the EBA, “encompassed by the technical teaching” and should be “embodied by the same invention”, G 2/21 is difficult to follow. It speaks about an effect and reminds us of using the problem solution.
When applying the PSA, which is as less to be found in the EPC as the notion of “plausibility”, the objective problem might be the same as the one the inventor was faced when he developed its invention, but in view of a possible different closest prior art, the effect might be different.
In a comment on IPKat, I gave the example of an independent claim limited by incorporation of a dependent claim. If the original independent claim is not allowable for lack of IS, the effect we deal with is obtainable from the prior art. Otherwise the subject-matter of the claim would be inventive.
If the claim is limited by the subject-matter of a dependent claim and allowable, then with the same closest prior art, the differences being different, no pun intended, the effect must be different, but still derivable from the original disclosure. Features from a dependent claim are in most cases specified as being optional in the description. However once they are added to the features of a non-allowable independent claim, they are not any longer optional.
I am of the opinion that in such a situation, the description has to be adapted to the new claims. You cannot leave the original statement in the description as the description would say something different from what is claimed. In French: CQFD!
I agree with you that examiners are often quite cheeky when amending the description and/or the claims in the communication under R 71(3). It is a kind of arm twisting exercise, and the applicant or its representative is perfectly entitled to react. If he consents to such changes, he cannot complain letter as the responsibility for drafting the description and the claims lies with the applicant, cf. Art 113(2). But to conclude that the description should not be adapted to amended claim is a path I am not prepared to follow.
I read with interest your contribution in epi Information 1/23, but for the reasons I have given above here, I do not see, with every respect for your point of view, any reason to change what I have said.
That deleting “substantially” or “approximately” is indeed dangerous and should not necessarily be accepted by the applicant. But this type of amendment has nothing to do with adapting the description to the claims. It is to be found under F-IV, 4.7 whereas the adaptation of the description is to be found in F-IV, 4.3(i). When the description says that some features are optional, but those features are included in an independent claim, there is indeed a verbal inconsistency between claims and description.
I personally doubt that the EPO sees a need to bring the topic of adaptation of the description to the claims in the framework of the convergence practice, but one never knows.
Daniel, despite our arguments in blog columns, about “conforming” the description, I suspect there is less difference between us than might appear to onlookers. I am thinking that G2/21 helps me more than it does you, on the issue of how thoroughgoing the process of “conforming” has to be. G2/21 tells us to discover (for example during opposition proceedings) the technical effects from the disclosure content of the application as filed. Wholesale removal from the description of a slew of drawing Figures and their supporting description, during prosecution of a patent application, just because (perhaps because of an accidental anticipation or some formal issue) the full scope of the original claim 1 can no longer be sustained, alters the disclosure content and thus alters what technical effects the skilled person can derive. Likewise, with worked Examples that were presented on the filing date as examples of the invention and now must be explicitly stated to be NOT in accordance with “the invention” this will disturb the assessment of the technical effect given to the skilled reader of the patent application as filed.
Given the fundamental importance of divining from the application as filed the technical effects which are the very foundation of patentability, I think that the EPO ought not to be wilfully disturbing the ability of the courts to make that assessment accurately.
It is all very well for you to tell us that Applicant has their fate in their own hands, when conforming the description, but neither the Applicant nor the ED knows what prior art an Opponent will rely upon. When that new prior art arrives on the table, and the OTP changes, everybody involved needs the originally filed description, undisturbed, for comparison with the new prior art starting point, to see whether that which was filed on the legal date of the claim is sufficient to support the claim in suit.
In a nutshell, I can accept amending the description for consistency, to remove statements that a specific realisation of the subject concept, no longer within the literal wording of the claim, is an example/embodiment of the “invention”. I just baulk at going further, and adding an explicit statement that it is NOT the invention. Thus, with my way of conforming a case with a device claim,, the reader of the B publication finds numerous devices illustrated and described, of which only one is still stated to be “of the invention”. Those no longer stated to be “of the invention” are still part of the disclosure, and contribute to the process of deriving what technical effects are delivered exclusively by the claimed combination of technical features. Likewise in chemical cases and process inventions. Skilled readers are not dim. They can distinguish bertween those embodiments stated explicitly to be in accordance with the invention and those embodiments that are NOT stated to be in accordance with the invention.
I should add that what the contributor “Santa” writes on the IPKat upsets me as much as it does Proof of the Pudding. From Santa I derive that the view within the EPO is indeed that the Office (the executive branch of the three pillars of democratic society) has to take charge because neither the legislative nor the judicative branch is competent to steer the course of patent law in Europe. Does Santa think he is Father Christmas, perhaps. What do you think?
Can you show me that Santa is wrong? I do hope so.
As you say, Daniel. Your words capture very well the difference between us, on Art 84, EPC. It goes to the ordinary meaning of the simple English word “support”.
For you, a claim is not “supported” whenever a description includes a string of words that is “inconsistent” with the claim. For me, the presence of such a word string is not a good enough basis to declare that the claim is NOT “supported” by that description.
As you say, the case law is against me, but I live in hope of getting clarification, one day, from the EBA.