I participated on 28.02.2025 to a meeting of Union IP about interpretation of claims and bifurcation.
During this meeting, when presenting G 1/24, the representative of the EPO drew the attention to a future referral to the EBA on the adaptation of the description.
EP 2 124 521 B1 relates to a mineral fibre product, particularly for hydroponics applications and particularly having a low phenol or phenol free binder.
Brief outline of the case
Following an opposition, the proprietor filed a new MR (MRn) as well AR 1, 1B, 1C, 1D, 1E, 2 and 3. AR 1B, 1C, 1D, 1E were filed during OP before the OD and discussed there. AR1, 2 and 3 have not been discussed at the OP.
The OD decided maintenance according to AR1E, whereby the adaptation of paragraphs 13, 16 and 20 was deemed not necessary.
Both proprietor and opponent appealed.
The board summoned to OP, first in-person, then by ViCo on 18.03.24.
The decision is not yet published, only the minutes of the OP before the BA are available.
The minutes of the OP before the board
The proprietor wanted to discuss AR1D first and was prepared to drop all higher ranking requests, if AR1D was deemed allowable by the board.
After discussion and deliberation, the board announced that AR1D was not allowable as claims 1 and 8 of AR 1D lacked IS.
After discussion and deliberation, the board announced that AR1E could be the basis for maintaining the patent.
Then, the discussion went on the adaptation of the description.
The opponent considered that the description had to be adapted, but the proprietor was of the opposite opinion, whereby it referred to T 56/21.
After a break and a deliberation, the board agreed that case law was divergent, but the question of the adaptation was decisive for the case.
The board held that the claims of AR 1E were inconsistent with paragraphs [0013] and [0016] of the description.
The board was of the opinion that, should an adaptation be needed, then AR 1E was not allowable under Art 84.
As a consequence the board was of the preliminary view that a referral to the EBA was needed.
The need for a referral might however not be there, if AR 1E would be replaced by a request with an AR could be admitted.
In order to file a new request comprising the claims of AR 1E and an adapted description, the proprietor requested continuation in writing. The opponent was opposed to a continuation in writing.
After deliberation, the chairman announced that, for the time being, continuation in writing for the adaptation of the description was refused.
The proprietor filed an amended description. Should the adapted description not be admitted, then the proprietor would resort to AR 1E and to the description as amended before the OD.
Thereafter, the opponent requested that the newly adapted description not to be admitted.
Subsequently, the board decided not to admit the adapted description.
After a further deliberation the chairman announced that, in view of the diverging case law, and since the adaptation of the description in order to comply with Art 84 was decisive for the allowability of AR1E, the proceedings would be continued in writing with the intention to refer this question to the EBA.
The proprietor withdrew the higher ranking requests.
Comments
It is not a surprise that the board did not admit the newly adapted description, as this submission can be considered as amendment of the proprietor’s case under Art 13(2) RPBA.
The board was however clearly of the opinion that adaptation of the description was required and hence implicitly disagreed with T 56/21, commented in the present blog.
It will be interesting to see the wording of the question referred to the EBA.
It is still is not understandable that the board in T 56/21 decided that the description did not need to be adapted and preferred to pre-empt G 1/24.
One thing seems however clear, the plea of the president of the EPO in its contribution in G 1/24, about integrating the question of the adaptation of the description in the future decision, has little chance to get a reply.
The topics in G 1/24 are difficult enough, not to complicate them with the question of the adaptation of the description, although the adaptation of the description can have an indirect influence on the interpretation of the claims.
Comments
8 replies on “EP 2 124 521 B1 (T 697/22) – Breaking news – A referral to the EBA on the adaptation of the description on the way”
Nice scoop.
So the Board admitted AR-1E, found those claims to be allowable, but did not admit a correspondingly amended description?
The mere fact that it is a case amendment is not sufficient to hold something inadmissible, I would have to see the written reasoning of the Board to see why the did not admit the revised description.
@ Plu,
All persons present at the meeting could come up with this news. It happens that I publish a blog.
By the way, there was even a well-known blogger as panellist.
It is clear that we have to wait the actual decision to know the reasons for not admitting AR1-E.
My guess is as good as anybody’s.
I think of Art 13(2) RPBA, as this could be a lever in order to bring the question of adaptation of the description to the EBA.
T 56/21 is one of the few which consider the description should not be adapted.
This decision is in contradiction with a bulk of decisions of other boards requiring adaptation of the decision.
In deciding not to admit AR1-E, there is a clear divergence in case law in a specific case, which can justify a referral. If the EBA decides that the description does not have to be adapted, there is nothing lost for the proprietor.
The board can still decide in favour of the proprietor. Just look at what happened in T 116/18 following G 2/21.
So here before the board at first, the proprietor requested that the description does not need to be amended for AR1E.
But also tried to file an amended description to be safe, but the amended description was not allowed into the proceedings.
So does that also mean at the time given an amended description should be filed for each and every AR should be filed with the requests?
@ WGR
In the present case, the proprietor, by referring to T 56/21 brought first forward that the description did not have to be amended. The board was of a different opinion and even noted discrepancies between the claims and the description. only the he filed an adapted description. Filing a new AR in appeal during an OP is rarely successful, cf. Art 13(2) RPBA.
To reply directly to your question, my answer is clearly yes. In principle, any time the applicant/proprietor files a new AR, he should file a corresponding amended description. There must be somewhere an older communication of the EPO making this clear.
In practice, the description has to be adapted once an allowable set of claims has been determined. In opposition, the opponent has to give its opinion on the adaptation. If the adaptation is OK for the OD, the opponent’s objection can be dismissed, but reasons have to be given.
The situation is crucial in examination/opposition when the applicant/proprietor does not turn up or connect during OP. If, in its absence, the applicant/proprietor simply files AR without an adapted description, the ED/OD has no choice but to refuse the application or to revoke the patent, as the documents on file do not allow grant or maintenance. As chair of an ED/OD, it happened a few times during my active life.
This is however nothing new under the sun. In examination see T 893/01 or T 109/02. In opposition, see T 725/00 or T 986/00.
See also T 1024/18, in which the board did not remit in spite of the claims of AR2 were allowable, but in the absence of the proprietor at the OP and of an adapted description, the board did not remit. the same happened in T 2196/11.
I find the reasoning around the amended description rather unusual. It is very rare in my experience that Boards will demand an amended description to be filed during the appeal procedure. It is far more common that if they hold claims to be allowable, they will remit to the Opposition Division for amendment of the description.
If that had been followed in this case, then the argument about adaptation of the description would have shifted to the OD (possibly with yet another appeal depending on the outcome).
I have the sense that the present situation has been engineered somehow by the Board in order to justify the referral that it has recognised as necessary. It will be interesting to see the full written reasons.
@ Anonymous
You are correct to state that the boards rarely request an amended description to be filed during appeal, and in most of the cases remit to the OD in order to adapt the description.
This is left to the discretion of the boards. As explained to WGR, in the absence of the proprietor at the OP, a board will not remit in order to the adapt the description in spite of an allowable set of claims.
You are also right to think that the situation has been engineered to justify the referral.
Next to T 56/21, a similar decision has been issued by the same board, T 1989/18 which was criticised in T 1024/18.
If the board was of the opinion that adaptation of the description was required and hence implicitly disagreed with T 56/21, why would it make the referral? It could have refused to admit the new description under the RPBA on the basis that these amendments could and should have been filed earlier, in view of the long line of established case law and the small number of isolated decisions. We cannot exclude that the board had some doubt about the legal basis for the established practice and thought the matter should be settled. Or perhaps the board felt some pressure from management to have the debate settled. We can only speculate.
@ Anon
The board could indeed have refused to admit the amended AR1E, and left it at this.
When reading the minutes, cf. page 7/11, the long paragraph, the board made clear that in its view, the amended claims of AR1E were inconsistent with paragraphs [0013] and [0016] of the description as amended before the OD.
To me this does not show at all “that the board had some doubt about the legal basis for the established practice and thought the matter should be settled”.
I furthermore do not think at all that ”the board felt some pressure from management to have the debate settled”. The board are truly independent, and the best proof of it are the divergent decisions of the boards in procedural matters. The management is interested by the production/productivity of the boards, and not so much concerned with the divergent case law on procedural matters.
In my humble opinion, it is because the board disagreed with T 56/21 that it announced the future referral on the adaptation of the description.
You may could consider these thoughts as speculative. However, in view of the circumstances, cf. the minutes, the likelihood that the board wanted to settle the matter with the EBA in view of the divergence established in T 56/21 and T 19899/18, is higher than the likelihood that the board may have had “some doubt about the legal basis for the established practice”.
We will know more once the decision and the question referred to the EBA will be issued.