The application relates to “FC-region variants with improved protein A-binding” and the applicant is Hoffman-La Roche. The appeal is dealt with by board 3.3.04.
Brief outline of the case
The application EP 15 700 545.5 was refused as the applicant disapproved the text of the patent proposed by the ED in the communication under R 71(3).
In the communication under R 71(3), the ED deleted in pages 89, 93 claim like clauses were deleted, pages 90, 91 were completely deleted for the same reason, all with reference to the Guidelines F-IV, 4.4. Page 92 was completely deleted due to an inconsistency between the description and the claims under Art 84. In page 130 a generalising statement was deleted as it rendered the scope of the claims unclear under Art 84.
The applicant appealed the decision.
The board’s position
In a communication under Art 15(1) RPBA20, the legal member of the board 3.3.04 suggested a referral to the EBA. In this communication, it is noted that the case law in matters of adaptation of the description is diverging. Reference was also made to opposition proceedings in which Art 84 was not a ground of opposition and that according to G 3/14, Art 84 can only be invoked in case of amendments of the claims. The question at stake could thus also have an influence on opposition proceedings. The legal member would prefer to limit the questions to ex-parte proceeding. .
T 433/97 was also quoted with reference to Point 4 of the reasons in which the board held that “The question whether a given embodiment, be it described in the patent itself or elsewhere, falls under the extent of protection conferred by the patent in the sense of Article 69 EPC does not by itself concern a requirement of the Convention to be met by the patent and by the invention to which it relates, and it has not therefore to be decided as such by the Board.”
In Point 1.5 of the communication under Art 15(1) RPBA20, the legal member of the board invited the applicant to provide its observations as a referral would delay the grant of the patent.
The legal member also went on the legislative history of Art 84 as it was decided in 1973.
The applicant’s position
The applicant is, without any surprise, in favour of a referral.
The applicant considers that the questions at stake should not be limited to any specific proceedings.
The applicant even drafted some questions to be referred to the EBA.
Comments
It is thus highly likely that a referral to the EBA will come in the future.
I am fully aware that the legal member of the board acts in the name of the whole board, but it is clear that the crusade against the adaptation of the description stems mainly from one person.
It will thus be interesting to see how the questions will be formulated and what be the answer of the EBA.
As the potential questions might have a direct influence on the grant of patents, any amendments to the description by an ED under F-IV, 4.4 and Art 84 (support), will delay the procedure not only in the present case, but in lots of cases.
It will thus be interesting to see whether the grant procedure will be stayed.
In case of a stay, it would imply a drastic drop of the production of final actions by examining and opposition divisions, even from the boards. It is not sure whether the upper management of the EPO and of the boards will appreciate being put in such a situation.
One way for the EBA to avoid a dip in the production of “products” of the EPO could be to consider the referral as not being admissible. After all the position of the legal member of board 3.3.04 appears to be a rather minority opinion within the boards, as there are only very few decisions of the kind of those of board 3.3.04.
Another outcome of the referral could be a confirmation of the Guidelines F-IV, 4.4 and the way the majority of the boards deal with the support of the claims by the description under Art 84 (support). This would crush the hopes of lots of representatives in this matter.
Whatever happens, the EBA will have to decide rather rapidly.
Comments
20 replies on “EP 3 094 648 – Appeal pending under T 56/21 – Adaptation of the description at grant – Referral to the Enlarged Board likely”
As you say, Daniel, this is going to affect a huge number of pending applications. Only today, I received from an ED a text intended for grant, strewn throughout with edits made for the sake of conformity, at least some of which edits are, to my English language mind, detrimental to “clarity” and render harder rather than easier the task of a judge under Art 69, EPC. I feel obliged to advise the client to contest at least the most egregious of these edits.
Most every prosecution amendment, however small, is manna from heaven for those trying to avoid being found to infringe a valid claim. The more the merrier, for such people. A balance needs therefore to be struck, between the interests of the Applicant and those of the public, a balance achieved by taking to EPO grant a text that is clear enough to allow the courts (and freedom-to-operate opinion writers) accurately and fairly to grasp i) what is the scope of protection given by the granted claims, and ii) whether any of the assaults on the validity of the asserted claims have substance.
Clarity can never be achieved to a level of 100%. I would ask the EBA to tell us clearly, ideally directly and unambiguously, when enough clarity is present in any given description and, in the context of striving by its amendment to achieve perfect clarity, when enough is enough.
But I strongly suspect that you are on the button, when you surmise that the EBA might, in record quick time, deem the referral inadmissible. But even then, perhaps some good will come from the formulation of the referral, if it stimulates further debate, followed by high quality revision to the text, for inclusion in the next Edition of The Guidelines.
@MaxDrei
In a case of incorrect 71(3) amendments to the description, a challenge will likely succeed. A colleague recently told me of a case in which his challenge was immediately successful, the ED withdrew the amendments without further debate.
An alternative route is to use the complaint procedure. I used it successfully in two cases for IS objections on right-to-be-heard grounds. Your submission has to quite concise and the answer of the department in charge is very quick. If you have a clear argument that the amendments risk entailing 123(2) issues, it should be effective.
The ravages of irresponsible 71(3) amendments are not limited to description amendments, claim amendments must also be scrutinized. I audited a case last year in which the ED had created a new matter issue by deleting the term “substantially” (as in “substantially hemispherical”) as instructed by the GL because the description did not disclose a strictly hemispherical geometry. In this case, the meaning of “substantially” would have been clear to the skilled person considering the intended effect disclosed in the description.
As to the EPO practice of requiring description amendments, which has generated chaos and opened a Pandora box of diverging BOA decisions extending to the application of Article 69 to pending applications, it looks like an “unforced error” as they say in tennis. The only objective stated by the EPO, in their release of July 2022, is improving legal certainty in national court proceedings, which is none of EPO’s business. It was perhaps an overreaction to the pemetrexed decision of the UK Supreme Court, and then the EPO stuck to its stance to avoid losing face, and this is where we are.
It will be interesting to watch UPC decisions on how they interpret claims when substantial parts of the description have been deleted or declared outside the invention and whether they find new matter if the interpretation of claims has been altered as a result of the amendments.
It is of note that the convergence of practice programme between the EPO and national patent offices includes the application of Article 84. The published report refers to Article 6 of the PCT but description amendments are not mentioned. The logic would be to refer to Section 5.29 of the PCT ISPE guidelines which set out a reasonable approach, restricting description amendments to cases in which a discrepancy between the description and the claims causes doubt as to clarity. The benefit would be to harmonise the Offices’ practices within Europe.
Dear Mr Hagel,
I have just said in my reply to Max Drei, that amendments of the description/claims should be strictly limited minor amendments that should not fundamentally alter the documents submitted by the applicant.
On the other hand, one has to look at the situation in realistic terms. Up to now, queries about adaptation of the description have actually come from no more than two legal members of the BA, and the legal member in the present case is certainly the front runner in this matter. Why it is so, will remain a mystery, as there are plenty of other boards ignoring those few decisions or even express strongly a dissenting opinion.
I can however agree with you that clarification is needed whether Art 69 is to be applied in all circumstances when it comes to interpretation of the claims, or only in exceptional cases. This is a referral which would be much more useful than simply debating on the adaptation of the description before grant or after opposition.
Using the complaint procedure has one major drawback, and I am not sure that an immediate response positive for the applicant is always a good thing. It could also mean that the decision, in a specific case, has been imposed to an ED by a person who is not a statutory member of said ED. Do you really want such a practice to become common?
It will certainly be interesting to watch UPC decisions on how they interpret claims when substantial parts of the description have been deleted or declared outside the invention and whether they find new matter if the interpretation of claims has been altered as a result of the amendments.
On the other hand, decisions of the UPC are not binding to first instance divisions of the EPO and certainly not for the boards of appeal. Only decisions of the boards mentioned in the Guidelines are binding for first instance divisions. For boards of appeal, only G decisions are binding, and even this did not withhold certain boards to declaring some G decisions obsolete.
As far as application of PCT standards at the EPO is concerned, it will depend on the political will at the EPO. The new WIPO standard on sequence listings has been forced upon applicants, even for divisional applications were the parent has been filed under the whole standard. I am not convinced that the EPO intends to apply Section 5.29 of the PCT ISPE guidelines.
If the EPO sees an advantage in applying a WIPO standard, it will do so. In the contrary, it will ignore it.
Dear Mr Thomas,
Here is the link to the EPO report of March 2023 regarding the convergence of practice programme in respect of “Clarity, conciseness and support for claims in the description”.
https://link.epo.org/web/common_practice_claims_drafting_and_structure_en.pdf
and the objective is as follows:
“Offices are to provide that the claims are clear and concise and are fully supported by the description, in line with the provisions of the Patent Cooperation Treaty (Article 6 PCT).”
What is to be pointed out is the reference to Article 6 PCT and the exclusive focus on the claims. No mention whatsoever in the report (which summarises the consensus reached between the participants i.e. the EPO and national patent offices of EPC member states) of description amendments.
The reference to Article 6 PCT suggests the relevance to the issue of discrepancies between the amended claims and the description of Section 5.29 of the PCT ISPE Guidelines, which requires the removal of discrepancies only when they cause a clarity problem (a doubt as to the meaning of the terms of the claims). This sounds like an efficient approach esp. toward the harmonization of practices in Europe.
Dear Mr Hagel,
Thanks for the link to the EPO report of March 2023 which I am fully aware of. In § 2.1 of the EPO report of March 2023 I do however fail to see any reference to Section 5.29 of the PCT ISPE Guidelines.
You have repeatedly mentioned Section 5.29 of the PCT ISPE Guidelines when it comes to the adaptation of the description.
I can only repeat that it is a discretionary decision of the EPO to go along the PCT Guidelines or not. If the EPO thinks it is in its advantage, it will do so, if not it will refrain of doing so. You cannot expect anything else.
For example, the PCT foresees in its Rules of implementation, that the right of priority can be restored when the failure was unintentional or only if due care has been shown. The EPO has chosen the second position.
When the EPO chooses not to apply certain rules, you cannot expect that the EPO will strictly abide by the PCT ISPE Guidelines. Guidelines are not an absolute obligation.
It is frequent that the subject-matter of a dependent claim is incorporated as limitation into an independent claim. In general, the description mentions that the features of the original dependent claim are merely optional. Would consider that the description should not be adapted to this new situation? I am looking forward to your reply.
Dear Max Drei,
Thanks for your comments.
It is indeed a plague when examiners amend a lot in the description and even in the claims, when issuing a communication under R 71(3). In principle, amendments introduced when issuing the communication under R 71(3) should be of minor nature or should have been discussed beforehand with the representative. That applicants and their representatives are not pleased with this way of doing is understandable. I am still of the opinion that with some good will on both sides, such problems could be dealt with much less resentment.
I said it at different occasions, it is no more than an attempt by an ED to twist the arm of the applicant. With the perspective of a grant the representative might be more lenient with amendments. This is assumption which is not legitimate.
I am not very optimistic that from the formulation of the referral, if will stimulate further debate, followed by high quality revision to the text, for inclusion in the next Edition of The Guidelines. EPO’s official stance on the matter is well known, and I could well imagine that, if necessity arises, the question will be redrafted in order to come to an answer which is “politically correct”. We have seen this with G 3/19 and G 1/21. I have no more to add. A referral to the EBA is a sword with 2 sides, and the result might, in spite how well the question is drafted, not always be that hoped for.
However, I am still distinguishing amendments under Art 84 with amendments under the heading clarity as such, and under support of the description as such. I agree with you that clarity is never achievable to 100%, but here we are dealing with support and not with clarity as such.
When the subject-matter of dependent claim is limiting an independent one. I am still of the opinion that the subject-matter of dependent claim cannot be presented in the description as being optional.
Dear Mr Thomas,
The EPO is indeed seriously dysfunctional. While its right hand talks the talk (coordinate the convergence of practice programme with NPOs regarding the application of Article 84), its left hand does not walk the walk (stick to its isolated stance as to description amendments).
It is also dysfunctional for the EPO to depart in the EPO phase of euro-PCT applications from the recommendation laid out in the PCT ISPE guidelines for the international phase.
As to your comment on the complaint procedure, my first experience was sensational. As the in-house counsel for the applicant, I had recommended this procedure, because the ED had repeatedly ignored several robust IS arguments. The representative was initially reluctant, for fear that the complaint would upset the ED and would backlash. But he was flabbergasted when just 8 days after submitting the complaint, he was called by an EPO staff member, who said that (1) the examiner in charge was about to take early retirement, and (2) the file was transferred to a brand new ED. My second experience was also quite positive.
In any event I do not share at all your concern, the complaints are thoroughly filtered so that they are accepted and reconsideration is decided only if the applicant has been able to spot blatant violations by the ED. Which means that applicants must be very selective when it comes to complaints.
Dear Mr Hagel,
Thanks for your further comments.
I leave you the responsibility of claiming that the EPO is “seriously dysfunctional”. I have explained in my first reply that if the EPO is not willing to apply the most favourable rules provided by the PCT to Euro-PCT applications entering the regional phase, it is a discretionary decision of the EPO not wanting to apply the PCT ISPE guidelines. You might reiterate your complaint, but I doubt that the situation will change.
When comparing the Quality Charter of October 2022 and the actually published decisions of the boards of appeal, there is a serious gap between the reality and the Quality Charter. I would leave it at this.
As far as the complaint procedure is concerned, I can only tell you that you have been quite lucky. I know of cases in which the applicant also hesitated to lodge a complaint for fear of retaliation. When it did so, the reply obtained from the Complaints Department was non-committal and it was simply said that the ED had correctly applied the Guidelines and there was nothing more to say. And yet, in one case, the CPA was a mosaic of pieces of prior art! If this corresponds to what it said in the Guidelines on the choice of the CPA, je suis prêt à manger mon chapeau.
However, I would say that it is none of the business of applicants to be told that the examiner in charge is about to retire and that the case has been given to another ED.
I do however agree that applicants should be rather selective when filing a complaint. If an applicant complains constantly it might easily be earmarked as trouble causer.
Dear Mr Thomas,
If I said the EPO is dysfunctional, it is because of the utter contradiction between on the one hand the objective of the Convergence of practice programme, harmonisation in Europe, and the consensus reached as to the application of Art 84, and on the other hand its policy regarding description amendments, which is isolated within Europe and runs counter to harmonisation as to a key aspect of Art 84.
As to the complaint case I referred to, something else happened, and it was truly incredible. Before the complaint, we have combined the main claim with a dependent claim alongside the submission of arguments in an attempt to get the application allowed. We had the nice surprise that the new examiner in charge advised he considered acceptable the original claim 1. So we finally secured the broad scope we wanted. This was perhaps linked to a sense of embarrassment at the EPO upon review of our complaint, or perhaps just based on the professionnal assessment by the new Examiner. We also received a letter of unqualified apologies from the group in charge of reviewing the complaints.
In retrospect, I think this outcome was not sheer luck. Our line of argument in the complaint was to stress that the ED had outright ignored or dismissed without motivation several arguments each strong enough to show inventive step. In other words, there was in each case a « substantial procedural violation ». This type of argument is very strong and very convenient since you do not need to discuss and rebut the substance of the ED’s objections. Another example could be if the rejection is flawed because it relies on an interpretation of a prior art document you can easily demonstrate to be incorrect. But I would not recommend a complaint if the ED has duly considered the applicant’s arguments and based their rejection on articulate reasons.
I am sorry, I had not answered your question regarding the adaptation of the description if it depicts a feature of a dependent feature as « optional » and this feature is then included into an independent claim.
I doubt that this practice is general as you say. As far as I am concerned, I think it is very poor practice to call features « essential » or « optional » in the description, this is dangerous as it may affect your freedom to amend the claims so as to overcome a rejection based on prior art you were not aware of.
But I will answer your question. I do not think the description has to be amended.
First, the term « optional » qualifying a feature does not deprive the applicant from claiming this feature in an independent claim. If this is the applicant’s choice, the feature then becomes « essential » in a legal sense, irrespective of whether it is called « optional » in the description. After grant, the owner will not able to remove this feature anyway.
Second, the interpretation of the claims according to Art 69 and its protocol is a matter for the courts, it is none of EPO’s business. The EPO must not meddle in the interpretation of claims by the courts, and therefore should not require the applicant to amend the description so as to create a prosecution estoppel before the court.
Dear Mr Hagel,
I think that we have exhausted the question whether the EPO is dysfunctional or not, or whether there has to be some luck when filing a complaint. From my part, no further reply on this point.
Whilst I can agree with you that a good representative should never state in the description that some features are essential, the essential character of certain features might be derived directly and unambiguously from the context in which they are disclosed.
For example, if a certain effect can only be achieved under specific temperature and pressure ranges and with a specific catalyser, those three features are essential and should be found in an independent claim. If in three embodiments, one finds always one and the same feature, said feature is essential, even without saying so.
In general, all features of an independent claim are to be considered essential, even without saying so. When the subject matter of a dependent claim is introduced as limitation into an independent claim, the added features has become essential, even without saying so.
Subject-matter of dependent claims are most often originally disclosed as preferable features. Once the corresponding feature is introduced in the independent claim, it cannot any longer be considered as preferable or optional and it is correct to request amendment of the description in such a circumstance. I disagree with you on this point, but this should not come as a surprise.
I have difficulties in following you when you consider that, in general, when a feature is qualified as optional or preferable, it does not deprive the applicant from claiming this feature in an independent claim. It clearly depends of the context in which it has been disclosed. Claiming as such in an independent claim an optional or preferable feature, might well end with a totally justified objection under Art 123(2). That some national courts are more lenient than the boards of appeal of the EPO when dealing with added matter, it does not dispense the applicant to tidy out the description before grant.
When you claim that “the interpretation of the claims according to Art 69 and its protocol is a matter for the courts” and that “it is none of EPO’s business”, I beg to disagree. At least when it comes, in opposition, to assess amendments under Art 123(3), it is not possible to ignore Art 69.
Rather than discussing in a referral to the EBA solely about the adaptation of the description, it would be much better to refer to the EBA whether it is necessary in all procedures before the EPO, and not only in opposition, to refer to the description in order to interpret the claims, or whether it should be limited to cases in which a claim lacks clarity. There are clearly to divergent lines of case law in this respect. This would, in my opinion, also help to clarify the matter of adaptation of the description.
This time, Daniel, I’m not going to disagree with you, just utter a word of doubt about the usefulness of the question you imagine putting to the EBA. The way I see it, 100% clarity is out of reach. Every claim is less than 100% clear. So I can’t see how you can sort claims, like sheep from goats, differentiating those that are clear from those that are not. Context is everything. You can’t even begin to think about what any particular claim means until you have first assimilated and digested the context in which it is presented, and you do that by reading the description.
I would advocate a different question to the EBA, namely, “Given that no claim drafter can ever achieve 100% clarity, how much clarity is enough to meet the provisions of Art 84, EPC. Or, in other words, when should an ED desist from further demands on Applicant for ever higher levels of clarity in the wording of the claim under examination? Enough is enough, but how shall we know when enough is enough?”
Dear Max Drei,
Thanks for your further comments, but I think there is a misunderstanding.
The present discussion is, in my eyes, not about clarity as such, but about support of the claims by the description. It just happens that this topic is also dealt with in Art 84, which mainly deals with clarity as such.
I can agree with you that clarity is not a question which can be decided to 100%. The question to the EBA you appear to suggest is for the latter to define the boundaries of what can be considered clear. As it cannot be 100%, to which percentage a claim can still be classified as being clear: 90%, 80% or even less.
I doubt that such a referral would at all be admissible, as it depends directly from the topic and the technical area to which the subject-matter of the claim belongs.
My question is quite different and stems from the following observation: we are in presence of two diverging lines of case law.
A first line of case law, considers that reference to the description should not be made if the subject-matter of the claim is clear enough on its own in view of the technical domain of the claimed invention. It is only in specific circumstances, i.e. when the claim manifestly lacks clarity, that recourse to the description is allowable. Furthermore, Art 69 is for instance applicable, when the necessity arises to check whether the scope of protection has been extended in opposition, cf. Art 123(3).
A second line of case law, considers that recourse to the description in order to interpret the claim should be systematic. This is for example the position of the German Federal Court, which always starts with interpreting the claims in the light of the description. When it has to decide on infringement, Art 69 is certainly to be applied. When it comes to assess validity, I am less sure.
To sum it up, one line of case law only sees the necessity to apply Art 69 only in specific situations, whereby the other line of case law sees the necessity to always apply Art 69. This is to me a question of fundamental importance which affects a large number of cases and which deserves to be clarified (sorry for the pun).
The question of support of the claims by the description is to me an ancillary question to the fundamental question about the application of Art 69. Hence I see a referral on the application or not of Art 69 in all procedures before the EPO as being more important than a referral only dealing with the support of the claims by the description, and hence the adaptation of the description before grant or after amendment in opposition.
Thank you, Daniel and, yes. there is a misunderstanding. Before I write more though, I shall need to look into the case law of the two “lines” you can discern, to see if I can improve the text of the question that I want the EBA to answer.
Dear Max Drei,
The two lines of case law can be found here:
1) No recourse to the description
T 175/98, T 515/19, T 2370/16, T 1778/17, T 1583/17, T 21/16, T 1853/19, T 19/18 or T 1989/18
2) Interpretation of the claims in the light of the description under Art 69
T 16/87, T 416/87, T 684/95, T 587/95, T 942/96, T 275/10, T 1473/19, T 450/20
2a) Recourse to the description only in case of ambiguity
T 481/95, T 169/20
3) Neither one nor the other
T 274/94, T 1271/05, T 2309/11, T 42/22 Use of Art 69 in opposition
T 42/22 A bit of both
Dear Mr Thomas,
The question suggested by the BOA and approved by the applicant for a referral relates to the scope of the support requirement of Art 84. It has in itself substantial practical and legal implications for applicants since it relates to all applications. It has been the subject of a sharp divide between BOAs, even BOAs in favour of the amendment requirement have disagreed over the legal basis for the requirement. This is why we can expect the EBA, if the referral comes through, to address this question and hopefully deliver an outcome which will meet the applicants’ concerns.
I disagree with your view that this question is only ancillary to the application of Art 69. To my knowledge, the case law of the EPO as to Art 69 has been that the EPO must apply Art 69 only post-grant to assess compliance of amended claims with Art 123(3), as you noted yourself. However, the EPO cannot apply the protocol of Art 69, which deals with the assessment of equivalents and is a matter exclusively handled by the courts.
Before grant, the claims must be given their broadest reasonable interpretation provided the terms of the claims are clear. This is different from Art 69. Of course, during examination the description and the drawings are used (and are generally necessary) to understand the claims, but cannot be used to « read » into the claims limitations based on specific embodiments i.e. to « interpret » the claims in the meaning of Art 69, which may involve an interpretation departing from the literal text of the claims so as to encompass equivalents.
As to the requirement to amend the description under Art 84, the EPO has made it clear in its press release of July 2022 that the objective was to improve legal certainty in the proceedings before the courts, in other words to influence the court’s assessment of the equivalents.
To be clear, I think that shifting the question referred to the EBA from the application of Art 84 to that of Art 69 would be a diversion.
I have noted a recent decision of the UK Patents Court (Philip Morris v Nicoventures and BAT, 2023 EWHC 2616, 25 Oct 2023), which is quite relevant to the question as it deals with the assessment of an unclaimed embodiment as equivalent.
Pursuant to the « disclosed but not claimed » principle of UK case law, the court asserts in point 94 : « Where the patentee says in the description that the technical effect identified can be achieved either by means A or B but goes on to claim only means B, this is a clear indication from the patentee that means A does not fall within the scope of the claims, whether as a matter of normal construction or equivalence. »
Dear Mr Hagel,
When you state that the question of support of the claims by the description “has been the subject of a sharp divide between BOAs”, we have to look at figures. To my knowledge there are handful of decisions which put in question the need to adapt the description after grant. Two of those decisions stem from the same legal member. All the other decisions I am aware of, consider that the description has to be adapted to the claims after amendment, be it in examination or in opposition.
There are many more decisions on both sides when it comes to applying systematically Art 69 during proceedings before the EPO or only in very specific cases. This question is in my eyes much more important than a referral to the EBA about the adaptation of the description. Just look at the number of decisions in my reply to Max Drei. There are not 3 decisions against hundreds of them, but a similar number on both sides.
The indiscriminate applicability or not of Art 69 “has in itself substantial practical and legal implications for applicants since it relates to all applications”. To my knowledge, there is only a minority of applicants or their representatives which argue and bicker about the adaptation of the description. Some have tried, but having realised that it could cost them their patents, they gave up.
I am still waiting for the first case in which a national court has raised an objection of added matter in view of the adaptation of the description to the claims.
I would go even as far as to claim that the example you give, taken from UK case law, is the best reason to adapt the description after amending the claims. What is not claimed does not belong to the invention. It could not be more transparent, that in such a situation legal certainty is an important factor.
It is clear that we disagree on the topic of the adaptation of the description, but we should at least agree that we disagree. I do not see how a continued discussion could change our divergences.
Last but not least, I would invite you to have a look at T 1426/21, where the discussion turned around claim-like clauses. They were amended so that any discrepancy between the claims and the description was removed. The thrust of the decision was however on IS, but in the Reasons 2.3 the board links Art 84 with Art 69, which is to be applied by national courts.
An interesting complement to the saga of the description amendment at the EPO was brought last week on the Kluwer patent blog by Beat Weibel, chief IP Counsel at Siemens. He explains that the EPO’s press release of July 7, 2022, which was totally misleading, was considered by himself and other IP corporate managers unacceptable and a proof that the EPO did not listen to the users’ concerns, and triggered the creation of the Industry Patent Quality Charter (IPQC).
It did not need the IPQC to show that the EPO is not really listening. Numerous surveys directly aimed at the public have been carried by the EPO in recent years. It happens that the result of those direct surveys are always supporting the views of EPO’s upper management. This is not a judgement of value, it is a statement of facts.
Statistics which do not corroborate EPO’s beliefs are simply dismissed as incomplete, inaccurate or even erroneous. See Mr Rowan’s reply to IPQC.
The user’s satisfactions surveys carried out on behalf the EPO by outside firms show, surprise, surprise, only positive results! The number of complaints is rather low. This is also taken as a sign of satisfaction of the users.
What are you complaining at. The EPO is full ears listening to its users!
Not to forget: there’s none so deaf as those who won’t hear!
Please have a look at “Bye bye”s comments on Beat Weibel’s Kluwer patent blog, they are revealing. The key factor creating quality issues is the lack of time, examiners do not have the time to read the description.
“Bye bye”s comments on Beat Weibel’s Kluwer patent blog are indeed revealing.
What was not said is that on top of this, there is classification work.
For applications claiming a priority, the IPC classes given by the original office can be an indicator, but sometimes this classification is incorrect. It is nevertheless kept and more “EPO” IPC and CPC classes are given to the document.
Part of the experience in search is also given by classification work. If there is no time for classification, such an experience is missing.
Even more revealing than “Bye bye”s comments is the following blog publication of Martin Wilming:
https://www.patentlitigation.ch/productivity-vs-quality-at-the-epo-a-rare-glimpse-behind-the-curtain-thats-worrying/
In the past such instructions were given orally, nowadays directors are so sure of the support by the upper management that they can write those instructions down on paper…. Have a special look at the redacted e-mails.
When Mr Rowan replies to IPQC’s complaint that every case is dealt with by three pair of eyes, one might just wonder if he knows what is going on in his department. Those times have long gone. There are three signatures on the grant, but whether 6 eyes have actually looked at a case is rather doubtful.
Anything which does not correspond to the beliefs of EPO’s upper management is simply dismissed, considered inaccurate or plainly wrong. Mr Rowan’s reply to IPQC is also revealing of EPO’s deafness.