CASELAW-EPO - reviews of EPO Boards of Appeal decisions

EP 3 094 648 A1 has been filed as WO 2015/107015 and relates to “FC-region variants with improved protein A-binding”. The applicant is Hoffman-La Roche. The present case has already been commented in this blog.

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).

The applicant appealed the decision.

The legal member of the board issued two communications under R 100(2), the second suggesting a referral to the EBA.

In response to the first communication, the applicant filed an amended set of claims replacing the set of claims of the MR. In response to the second communication, the applicant agreed to a referral and provided comments on the point of law proposed for referral. The arguments presented have been considered in the decision.

 Anonymous third-party interventions were filed, submitting literature potentially relevant to the point of law. The appellant responded thereto. Subsequently, two further sets of third-party interventions were filed.

The board set aside the decision of the ED and order the grant on a non-adapted description.

The board did not refer any question to the EBA.

Preliminary considerations in the board’s decision

For the board, the question to be addressed is that of whether Art 84 provides a legal basis for objecting to an inconsistency between what is disclosed as the invention in the description and the subject-matter of the claims, the inconsistency being that the description contains subject-matter which is not claimed, and for requiring removal of this inconsistency by way of amendment of the description, hereinafter: “adaptation of the description”.

If so, an application could be refused if the applicant did not amend the description accordingly, or did not agree to an amendment of the description proposed by an ED.

The appeal is not concerned with the correctness of the Guidelines and, even less, with a possible need for their correction. The board relied on T 162/82, OJ EPO 1987, 533, and confirmed that the boards are not bound by the Guidelines.

The board decided thus to only judge whether the division has acted in conformity with the EPC. The board did not consider whether the division has acted in accordance with the Guidelines.  

The board came back on the history of Art 69 and of the Protocol on interpretation and referred to T 1473/19.

A series of obiter dicta

The first part of the decision consists of a series of obiter dicta, on the following topics

• Function of the claims
• Function of the description
• Relationship between claims and the description
• Relevance of Art 69 in grant proceedings
• The examination of Art 84 is not linked to Art 69
• No limiting interpretation of claims in grant proceedings
• No limiting interpretation of claims in opposition proceedings
• Divergent views on relevance of Article 69 EPC for claim construction
• No extensive interpretation of claims when assessing patentability

Under all this points, the board cited a number of decisions of the boards of appeal and of the EBA, as well as decisions of national courts and of the UPC in order to come to the following conclusions:

• (a) In proceedings before the EPO, the extent of protection conferred by a patent is only relevant to the assessment of Art 123(3) in post-grant proceedings.
• (b) The assessment of clarity and of support of the claimed subject-matter by the description before grant of a patent is a matter distinct from determining the extent of protection conferred by granted claims after grant. It is the purpose of the assessment of Art 84 as part of the examination of patentability to arrive at a definition of the patentable subject-matter in terms of distinctive technical features distinguishing it from the prior art.
• (c) Art 69(1 and the Protocol are not concerned with the definition of the subject-matter according to Art 84. Instead they are concerned with the post-grant effects of a patent in the Contracting States. Their purpose is to prevent the protection conferred by a patent being limited to “literal infringement” relying on a narrow construction of the claims in a patent.
• (d) Art 69 and the Protocol are not concerned with the “interpretation” of claims in the sense of claim construction, i.e. determining the meaning of the terms of a claim and its subject-matter for the purpose of assessing patentability. These provisions do not therefore provide a general methodology for determining the subject-matter claimed for assessing patentability in examination.
• (e) Relying on the description to resolve ambiguities or contradictions in claims of an application before assessing their compliance with clarity and support requirements under Art 84 deprives claims of their function as defined by Art 84, and affects the assessment of Art 84 EPC and further requirements for patentability.
• (f) It is not the purpose of the examination of European patent applications to anticipate equivalent matter potentially relevant to infringement. Construing claims in a way that extends the subject-matter claimed beyond the strict wording of the claims when assessing patentability distorts this assessment.
• (g) The meaning of the claims put forward by an applicant has to be understood before assessing compliance with the requirements for patentability of the EPC. The finding of lack of clarity is a potential result of such construction, not a condition for claim construction. Since granted claims have the character of a legal norm rather than that of a contractual clause, claims should be construed objectively and not subjectively, based on the usual technical understanding of the features in the context of the claim as a whole. The board referred to T 10/22, Reasons 2.3. The description provides the overall context and, more importantly, the disclosure which supports the subject-matter claimed and forms its basis under Art 83 and 123(2). Nevertheless, the understanding of the disclosure should not replace or add to the definition of the subject-matter in the claims by way of implicit features, but allow for a definition of patentable subject-matter in the claims.
• (h) In summary, Art 84 is not mutually complementary or subordinate to Art 69(1) and the Protocol. Art 69(1) EPC and the Protocol are therefore not to be applied in examination and quoted a number of decisions to this effect. .

It is only after this series of obiter dicta that the board came to the core question.

Art 84 – Interpretation of the requirement of support by the description

For the board, it follows from the title and wording of Art 84 that this article states a requirement of the claims and not of the description. This is confirmed by the phrase that the claims must be supported by the description.

The ordinary meaning of the words does not support a requirement to bring the description into agreement with claims intended for grant by deleting or disclaiming subject-matter in the description which is not claimed.

The board noted that legislative history of the EPC 1973 offered little evidence on the legislative intent of the requirement for the claims to be supported by the description.

A first aspect, i.e. that the claims correspond to the description, requires that the claimed subject-matter be drawn from the description and that nothing be claimed which is not disclosed in the description. The board cited a series of decisions to underling this point.

A second aspect, i.e. that the claims are consistent with the description, requires that all the features described in the description as being necessary to carry out the invention, the essential features, be present in a corresponding claim. The board cited a series of decisions to underling this point.

Based on a further series of decisions the board held that, the claims must be commensurate with the description, i.e. their subject-matter must be justified by the extent of the disclosure in the description.

For the board, the assessment of the permissible extent of generalisation in claims when examining the support of the claims by the description brought in the policy consideration of a fair balance between the abstract definition of what is claimed on the one hand and what is “made available” to the public as the “invention” in the description on the other hand. The board cited a series of decisions to underling this point.

Decisions of the Boards of Appeal on the adaptation of the description

Linked with the protocol 1973, the board noted that several BA decisions reasoned that the subject-matter claimed not only had to be justified by the actual technical contribution to the state of the art as disclosed in the description, but that the description also had to be brought into line with amended claims considered allowable. 

However, it was not entirely clear from these decisions whether a possible uncertainty arising from the lack of complete agreement between the description and the claims was seen as resulting in a lack of clarity or a lack of support of the amended claims contrary to Art 84.

The board concluded that both clarity of the claims and their support by the description within the meaning of Art 84 were relied on as a legal basis for requiring the description to be adapted to match the subject-matter of the claims.

 Two main reasons were put forward to justify this requirement under Art 84 EPC:

•  the policy consideration of ensuring legal certainty for third parties about the extent of protection conferred to a granted European patent in accordance with Art 69,
• the common function of the claims and the description to define the “invention” in a European patent.

For the board, these justifications misconstrue the relationship between Art 84 and 69 as intended by the legislator and understood by the EBA, as well as the relationship between the claims and the description.

For the board, Art 69 and the Protocol are not concerned with grant proceedings before the EPO. The addressee is the national authorities entrusted with the enforcement of patents. 

Art 123(3) represents he sole exception for the application of Art 69 and of the protocol, but in post-grant procedures before the EPO.

This follows from the rationale of G 1/93, OJ EPO 1994, 541, Reasons 10,  of the s) and the explicit statement in G 2/12, OJ EPO 2016, A27, Reasons VIII.2.(6)(b), 4th paragraph. The board also mentioned decision G 3/14, OJ EPO 2015, A102, Reasons 57 to 59.

While the decisions of the boards evolved as regards the relationship between Art 84 and Arte 69 in the context of claim interpretation, adapting the description to amended claims of restricted subject-matter appears to have remained a habit rather than a duly contemplated practice.

However, the relationship between the description and the claims as well as between Art 84 and 69 cannot be viewed differently in the context of claim interpretation and in the context of adaptation of the description.

This is due to the fact that Art 84 sets out requirements to be met by the claims and not by the description. Inconsistencies between the claims and the description, which are argued to potentially cast doubt on the extent of protection conferred by the patent, can only be seen as encompassed by the requirements for support or clarity if the definition of the matter for which protection is sought can be derived both from the claims and from the description.

If Art 84 cannot be regarded as linked or subordinate to Arti 69(1) and the Protocol, as is the reasoned view taken by the present board, Art 84 on its own does not provide a legal basis for a mandatory adaptation of the description to the more limited subject-matter claimed.

In this regard, the board disagreed with decision T 1808/06, which did not explain why the requirement of support of the claims by the description pursuant to Art 84 could be interpreted as requiring consistency between the subject-matter claimed and the disclosure in the description independently of Art 69(1).

Legal certainty for third parties requires that claims be understood without having to resort to the description, cf. G 1/04, OJ EPO 2006, 334, Reasons 6.2. Ambiguous or vague features in claims are to the detriment of legal certainty as they blur the boundaries of the forbidden area.

Since clarity is a claim requirement, a clarity deficiency in a claim should be removed by way of amendment of its wording, and not by seeking to understand the technical subject-matter, which the claim possibly defines, considering the description.  

The present board accepted that a clear definition of the subject-matter in the claims is a prerequisite for determining the extent of protection conferred by a patent, this does not provide a rationale for adapting the description to match the subject-matter claimed.

Evidently, adapting the description to unclear claims would fail to provide the required legal certainty. However, requiring that a description be adapted to clear claims would likewise fail to improve legal certainty about the extent of protection of a granted patent under Art 69(1), since the Protocol was intended to avoid extremes in the interpretation and application of Art 69(1) 1973 rather than to achieve uniformity.

By requiring the description to match the subject-matter of the claims, the EPO and the boards may have attempted to reduce the variability in the determination of the extent of protection of a patent by the national courts of the Contracting States under Art 69(1) EPC and the Protocol, and to arrive at a more “harmonised” determination of the extent of protection of granted patents. However, this encroaches on the competence of both the national courts and the legislator.

Matter disclosed in the description which is not linked to a part or element of a claim, is not to be considered, cf. G 1/93, OJ EPO 1994, 541, Reasons 14; see also German Federal Court of Justice, 10 May 2011, X ZR 16/09, BGHZ 189, 330, headnote a); German Federal Court of Justice, 14 June 2016, X ZR 29/15, BGHZ 211, 1, headnote a).

In other words, while Art 69 and the Protocol assist a patent proprietor in contending for a broader protection than may be warranted by the literal meaning of the claim, these provisions do not provide for an extension of the protection beyond what is claimed by way of technical features.

Thus, accepting the determinative role of the claims as enshrined in Art 69(1), a discrepancy in extent of protection should not normally arise in a situation where the description discloses additional subject-matter which is not encompassed by the claims, in particular in embodiments, examples or claim-like clauses disclosed in the description which do not come under the definition of the subject-matter claimed. The board referred here to German Federal Court of Justice, 10 May 2011, X ZR 16/09, BGHZ 189, 330; German Federal Court of Justice, 14 June 2016, X ZR 29/15, BGHZ 211, 1; see also T 507/16, Reasons 1.4.4.

With reference to Art 2 of the Protocol, if equivalent elements disclosed in an application are removed from the description in examination because they are no longer encompassed by the subject-matter of the claims intended for grant, they could nevertheless extend the protection conferred unless the patent proprietor is barred by a prosecution history estoppel.

Overall, the early decisions of the boards requiring a description to be adapted to claims of restricted subject-matter in examination hinge on a legal link between Art 84 and 69. However, no convincing or stringent rationale has been put forward that could justify such a link:

• (a) Art 69 and its Protocol address the extent of protection in the context of national proceedings after the grant of a European patent. The proceedings before the EPO are separate and independent of Art 69.
• (b) The claims, rather than the description, are the primary determinant of the extent of protection. Legal certainty for third parties regarding the extent of protection of a patent is best served by claims which are clear and concise such that they allow the “forbidden area” to be demarcated without needing to resort to the description.
• (c) Adapting the description to match the more limited subject-matter claimed does not improve legal certainty regarding the extent of protection, may have unwarranted consequences in post-grant proceedings and may encroach on the competence of national courts and legislators.
• (d) If the description defines a term more broadly than its technical meaning in the claim, such a discrepancy in terminology should be addressed under R 49(2) by amending the description to match the clear but narrower meaning of the term in the claim.

The board also cited a series of recent decisions on the adaptation of the description: T 1989/18, T 2194/19, T 3097/19, and T 1444/20 concern ex parte proceedings dealing with the adaptation of the description.

The board insisted on T 2149/19 which held that the requirement that the claims are to be supported by the description does not necessarily mean that all the “embodiments” of the description of a patent application have to be covered by the (independent) claims. The board agreed with T 2194/19, Reasons 6.2.3, that in particular R 42(1,c) cannot be a legal basis for establishing a general requirement for an adaptation of the description to the claims.

T 3097/19, held that claims and description do not precisely define the matter for which protection is sought if they contradict each other. For the board, like the earlier decisions, T 3097/19 fails to justify the premise for the alleged further “elementary requirement” of Art 84 to ensure legal certainty about the extent of protection, which premise is a necessary link between Art 84 and 69. The board expressed strong  reservations as to the correctness of this view.

The board also referred to further decisions in opposition appeal proceedings on this issue: T 2766/17, T 1024/18, T 121/20, T 2293/18, T 1516/20, T 1473/19, T 169/20 and T 447/22. The board found it not necessary for the present decision to answer the question of whether and, if so, for which reason a different conclusion may be warranted in opposition proceedings as compared to appeals in examination.

For the board, Rule 48(1,(c) cannot and does not provide a legal basis for refusing an application. The bord noted that several decisions have relied on R 48(1,c) as a potential legal basis for requiring the description to be adapted to the subject-matter as claimed, most recently also decision T 438/22.

Nevertheless, on closer analysis, the wording and history of this provision suggest that this was not its intended purpose. The Board agreed in this regard with the analysis provided in decision T 1989/18, Reasons 9 and 10.

The board also held that deriving from Rule 48(1,c) a requirement to bring the description of an application into agreement with the claims intended for grant requires stretching the wording far beyond of what is a reasonable interpretation in accordance with the principles set out in the VCLT.

No referral to the EBA

Although the Board initially envisaged referral of a question to the EBA, it did not proceed with the referral.

For the board, there is no need to seek guidance on the issue of adaptation of the description since the requirements of Art 84 for the purpose of examining European patent applications appear unequivocal when considering the different elements of, the guidance by the EBA and the practical implications.

The wording of Art 84 as well as its context leave no room for requiring, in examination, that the description be adapted to allowable claims to match their subject-matter.

Comments

The decision is extremely dense and very long so that it was not easy to summarise it. Some comments are nevertheless necessary.

Guidelines and boards of appeal

That the boards are not bound by the Guidelines is an acquired and is by no means a scoop. It remains that divisions of first instance, be it an ED or an OD, are bound by the Guidelines, and parties to procedures before the EPO can expect to be treated in accordance with the Guidelines.

By ignoring the Guidelines, the present board seems to have forgotten to abide by Art 20(2) RPBA as the board manifestly gives a different interpretation of the EPC from that provided for in the Guidelines.  

Contrary to what the board claims, the requirements in Art 84 and Rule 43 do belong to the requirements for patentability in the strict sense. How can it be decided whether the subject-matter of claim is new and inventive, when the claim is either unclear or not supported by the description?

Interference with the referral G1/24

By debating over the relevance of Art 69 in grant proceedings the present board has actually pre-empted decision G 1/24.

It can be agreed that Art 123(3) is not applicable in examination but only in opposition and limitation.

The board has tried to construe a distinction between Art 69, not being applicable in examination and Art 84.

In T 439/22, cf. Reasons 6.2.5, the referring board suggested a reversal of the order of legal examination by always considering the description first, irrespective of whether the claim is clear as such.  

The present board has implicitly rejected this suggestion by on top, referring to Art 52-57, as well as to Art 83 and 123(2). The present board actually tried to give an answer to the questions raised in T 439/22. This is clearly preempting the decision of the EBA in the referral under G 1/24.

There are clearly divergent views among the boards on the relevance of Art 69 for claim construction. This is actually the reason for the referral T 439/22.

The answer to the referral is to be given by the EBA,  and not by board 3.3.04.

Adaptation of the description

The thrust of G 1/93 lies in the inescapable trap between Art 123(2 and 3). G 2/12 relates to the allowability of a product claim directed to plants or plant material such as a fruit resulting from an essentially biological process, and has been superseded by G 3/19, known under “dynamic interpretation”. G 3/14 is about clarity of the claims in opposition. G 1/04 relates to diagnostic methods.

In spite of some reference to Art 69 and to the Protocol, those decisions have little to do with the adaptation of the description.

It is interesting to note that the “habit” of adapting the description has been pursued by the vast majority of the boards and mainly board 3.3.04 appears to have taken a different stance.

The board considers that adapting the description to clear claims would not improve legal certainty. This is a rather specious argument as the board simply forgets that, while in principle at grant claims should be clear, reality shows that granted claims might lack clarity, hence G 3/14.

Having to resort to case law of the German Federal Court of Justice in order to dismiss the adaptation of the claims does also show the weakness of the whole argumentation of the present board. Decisions of the German Federal Court of Justice are always beginning with an interpretation of the claims (Auslegung) which is what the referring board suggests in T 439/22 and which is not accepted by the present board.

Relying on Art 2 of the Protocol, which as such should no be applied according to the present board, the board appears to contradict itself.

Furthermore, prosecution history estoppel is a notion unknown at the EPO. It has been recently applied at the UPC CFI LD Munich (UPC-CFI-292/2023) but not accepted by the UPC CoA (UPC_CoA_1/2024).

T 1989/18 and T 1444/20 have the same legal member. Taking one’s own decisions is tantamount of a self-prophesy and cannot be considered as independently supporting the present decision.

 T 2194/19, has been commented on this blog, but fails to convince. It is one decision added to T 1989/18 and T 1444/20 going against the necessity of the adaptation of the description.. Those decisions do not weigh much when considering the bulk of decisions requiring the description to be adapted to the claims.

T 3097/19, linked support and clarity by stating that claims and description do not precisely define the matter for which protection is sought if they contradict each other.

T 438/22 held that claim-like clauses do not have to be deleted, which actually supports the view of the present board.

The few decisions supporting the non-adaptation of the description have little weight in view of the majority of decisions requiring the adaptation of the description.    

No referral to the EBA

As a referral to the EBA on the adaptation of the description would have meant a quasi stall of the production of first instance divisions and a heavy dip in the productions of the boards, the present board refrained from referring questions to the EBA.

It is not by its considerations that the board could convince that a referral would not have been useful.

The decision fails to convince

Whether the argumentation of the board of the non-necessity of the adaptation of the description to the claims is convincing, remains to be seen.

By limiting the answer to examination procedures, and ignoring what ought to happen in opposition, the board has, at least for this reason, failed to convince.

If an independent claim is amended by features considered as optional in the original disclosure, it is unthinkable that the description does not have to be adapted by deleting the optional character of the feature in the description.

If some originally disclosed embodiments are not any longer covered by amended, i.e. limited claims in view of the prior art, it is also unthinkable that those embodiments are still qualified as belonging to the claimed invention. They should not necessarily be deleted, but it should be made clear that they are not any longer covered by the claims.

Claim-like clauses have mainly the purpose to stretch a possible interpretation of the actual claims in case of infringement. It is difficult to conceive that those claim-like clauses might in any way contribute to legal certainty. The contrary seems true. They should be deleted.

I am not sure that the majority of the boards are ready to follow the present board. My guess is that they will not do so.

Some interesting aspects in the decision

It should not be forgotten that the creation of the EPC created a divide between obtaining a title and using the title against presumed infringers. It is therefore legitimate to distinguish between what happens at the EPO in examination and opposition proceedings, and before the national courts and the UPC.

It is therefore clear that the EPO does not have to ask itself questions about possible infringement, whether direct or indirect, by equivalents or not. This is the prerogative of the national courts and of the UPC. If the EPO were to take this path, it would indeed be encroaching on the domain reserved to the national courts and the UPC.

In spite of stating numerous decisions of the German Federal Court (BGH), the present board does not agree that the claims have to be systematically interpreted (Auslegung) before any decision on the claims and/or on infringement.

This is the position of the CoA UPC and of the referring board in its decision leading to G 1/24, see T 439/22, Reasons 6.2.5. Thi route should thus not be followed by the EPO.

T 56/21