The EBA is certainly in the position to defend itself.
I do however find it necessary to comment on the content of this anonymous TPO.
I think it was wise for the writer to stay anonymous.
The aggressive tone and the accusation of partiality are so strong that they are difficult to accept in general, and certainly not by the EBA.
Introduction-Admissibility of anonymous TPO by the EBA
On the substance
In point VI(3) of the facts and submission of G 1/03, the EBA made clear that an anonymous statement has not been taken into account by the EBA.
It is doubtful that the EBA will change its position in the present case and uses its discretion to admit this submission.
Whilst anonymous TPO have been admitted in examination appeal proceedings, this has never been the case in opposition appeal proceedings. A TP cannot be put in a more favourable position than the parties. It should also be insured that no party can circumvent the valid RPBA by filing anonymous TPO.
Potential Suspicion of Partiality under Art 24
As far as a presumption of partiality is concerned, this is normally for the parties to raise such an objection or the other members of the panel to decide whether one of its members should be replaced.
Moreover the potential suspicion of partiality is without merit.
I. Redrafting of Question 1 and Circular Methodology
The provisional opinion of the EBA has to be seen in its structure like a document set up by legally qualified people.
The EBA defined firstly two types of inconsistencies and then secondly two lines of case law when it comes to the interpretation of Art 84.
The presentation of those four possibilities is a standard way of drafting a legal analysis of a situation, when a plurality of possibilities can be distinguished.
Two types of inconsistencies
It indeed looks like stating the obvious, but the contrast between the two types inconsistencies eventually clarifies the situation. Only those which imply a non-conformity with the EPC have to be taken into account.
There is no redrafting as such of Question 1. The alleged “redrafting” clarifies the topic at stake. For any person with a will to understand this should not be a problem. Any inconsistency, like for instance a different spelling of words in the claims and in the description, cannot be considered as implying a non-conformity with the EPC, for as much the meaning remains clear for the skilled person.
Art 84, relating to the claims, and R 42 (1,c), relating to the description, are both concerned with the definition of the matter for which protection is sought. Art 69 defines the scope of protection, which is something different as it can include equivalents.
At grant and/or after maintenance in amended form, it is the duty of the EPO to insure that the definitions of the matter for which protection is thought is identical in the description or in the claim.
If the description or the claim allow a different definition of the matter for which protection is thought, then we are in presence of an inconsistency/discrepancy between claims and description. The definition of the matter for which protection is thought can be broader or more limited in the description than in the claim or vice-versa.
II. Observations on Potential Suspicion of Partiality under Article 24
The EBA has made clear that there are two lines of case law, the first one requiring adaptation of the description and the second one denying it.
The EBA has also made clear that there are only 4 decisions relating to the second line of case law. In T 1989/18, T 1444/20 and T 56/21 the same LQM has been at work. It is not disputed that the decisions were collegial decisions of the whole board. It can however not be disputed that, since the problem is primarily a legal problem, the LQM had a big influence in the decision. In T 56/21 said LQM was even the rapporteur.
The composition of the panel of the EBA deciding under Art 112 is the prerogative of the chair of the boards. It is thus not for a TP, moreover acting anonymously, to raise any objection regarding the choice of the panel members.
In view of the overwhelming number of decisions according to the first line of case law, it will be difficult to find many members of the boards, be it TQM or LQM who are neutral in this situation.
The TPO would manifestly have preferred that the panel would exclusively be composed with BA members adhering to the second line of case law. However, it is not for the TP to decide.
Even taking into account G 1/05, most TQM and LQM can be considered members favouring the first line. The second line of case law appears only to be supported by a minority of TQM and LQM.
In G 1/05, Catchword 2 and Reasons 27, the EBA has held that participation in a referral pending before the EBA of a board member having already dealt with the matter as a member of a board of appeal is not excluded by these provisions, and an objection of partiality cannot be based on that very same fact alone.
Unless there are specific circumstances throwing doubt on the board member’s ability to approach the parties’ submissions with an open mind on a later occasion there cannot be any objectively justified, i.e. reasonable suspicion of partiality against a member of the EBA within the meaning of Art 24 for the reason that a position on the matter was adopted in a prior decision of a board in which the board member concerned had participated.
For this reason alone, the objection of suspected partiality is without merit as far as Mr Pricolo and the rapporteur, Mr D. Rogers, are concerned. The suspicion of partiality corresponds to the subjective appreciation of the writer of the anonymous TPO. A subjective appreciation cannot be a reason for a suspicion of partiality.
As regards the potential suspicion of partiality against the rapporteur, Mr D. Rogers, this is particularly insidious.
In the article annexed to the TPO, Mr Rogers did indeed report that deleting examples in the description could infringe Art 123(2).
However the deletion of examples 2 and 3 was carried out by the proprietor on its own volition, see T 1239/03, Reasons 3.3 last §.
“In addition to its explicit statement to this end (sections II (2) and VIII (3), above), the Respondent/Patent Proprietor has tried, by deleting Example 3 in particular, to give preponderance to an interpretation of the percentage value as weight percent”…
The quotation of the rapporteur, D. Rogers, insinuating that he was in favour of deleting parts of the description, and this would be a problem if G 1/25 required amendment of the description is at least biased, not to say dishonest.
III. Failure to Refute the Substantive Legal Reasoning of T 56/21
For a start, a provisional opinion is not to be considered as requiring the presentation of the full reasoning of the EBA in its dealings with T 56/21.
The EBA has rightly noted that is its current view, that many of the conclusions of T 56/21 are inconsistent with decision G 1/24 and its underlying reasoning.
It can be agree with T 56/21 that Art 69 has nothing to do in examination proceedings. As far as opposition proceedings are concerned, the scope of protection is only to be checked under Art 123(3). It can also be agreed with T 56/21 that examination of Art 84 not linked to examination under Art 69. It can further be agreed with T 56/21, Reasons 32, that the extent of protection and its broadening is not a matter to be assessed during examination. The agreement stops there.
In Reasons 32 of T 56/21, the board alleges that in examination, legal certainty for third parties is protected by Art 123(2). This is correct, but incomplete.
Be it in examination, or in opposition, the duty of the EPO is to check that the definition of the matter for which protection is thought cannot be different in the description, be it broader or more limited, than that resulting for the skilled person from the plain wording of the claim. Art 84 and R 42(1,c) are there to insure that claims and description are to be aligned.
For this reason, a broader definition of the matter for which protection is thought is a no go in opposition, even if the latter was contained in the original description.
Nevertheless, where T 56/21 is in clear contradiction with G 1/24, is when it alleges that, if claims of more limited subject-matter are deemed allowable, any statement in the description allowing a broader definition of the matter for which protection is thought must be ignored. This means that the description does not have to be consulted.
This position is manifestly in contradiction with the order in G 1/24, which applies in examination and in opposition. Moreover, allowing a different definition of the matter for which protection is thought between claims and description is clearly inviting the proprietor to come up with a nice Agora cat in post-grant or post-opposition proceedings.
Conclusion
Not only should the anonymous TPO to be disregarded by EBA due to its nature, but it is also incorrect in substance.
One or more features contained in the original independent claim, but deleted due to prior art, cannot be left in the description to still represent the matter for which protection is thought.
By doing so, the description is ignored. T 56/21 has decided that if the claim is clear, there is no need to consult the description, cf. inter alia, Reasons 38+39 in T 56/21. This is clearly at odds with G 1/24.
The same goes when an optional feature in the original description is used to limit an independent claim. Once it has limited the independent claim, the same feature cannot remain as being optional in the description.
After all, besides Art 65 and the London Agreement on translations, in order to obtain a grant or maintenance in amended form, only the claims have to be translated in the two other EPO official languages other than the language of proceedings.
If the description allows a different definition of the matter for which protection is sought than that resulting from the plain wording of the claim, such a specification, as a whole, does not allow a proper definition of the matter for which protection is sought.
Why should third parties have to dig deep in the description to determine whether the matter for which protection is sought may be different from that derivable by the skilled person from the claim wording?
I have not yet seen a compelling argumentation brought forward against these views. Simply saying that, like in T 56/21, Art 84 goes only from the claims to the description, is by no means convincing.
Final comment
Knowing that the EBA has previously not taken into account anonymous TPO one wonders what could have been the motives for the writer of this TPO.
One possibility could be that he wanted to show to the EBA and to the profession that he knew better than the EBA and all other representatives.
As in T 1239/03, in EP 3 587 104 (T 0873/24) with a referral envisaged on the applicability of G 1/24 when it comes to added matter, it boils down to the difference between weight % and mole %, it can be considered that the anonymous observer is getting ready for battle when this referral comes.
Comments
16 replies on “G 1/25 – Open letter to the Glorious anonymous with its TPO of 03.04.2026”
You might not be enlightened, but since your comment does not represent a useful contribution to the post, it has been deleted.
The author
I see that there is now a further TPO on the Register, this time from a commenter that names itself “Oliver Farnsworth”. A pseudonym, I suspect.
Oliver’s 22 pages are so serious, so unemotional, I begin to think that they have been assembled by a skilfully instructed AI. Does anybody here know, who is Oliver, and what does he hope to achieve with his impressive filing, in the run-up to next month’s oral proceedings?
Max Drei,
Oliver’s 22 pages look serious and unemotional, but to me it is an accumulation of postulates, not to say crap.
I have published a comment on this TPO
In the meantime, Daniel, somebody has told me who Oliver Farnsworth is, namely the patent attorney in the film: The Man Who fell to Earth. Amusing choice of pseudonym, I thought. Perhaps an AI suggested it to the anonymous poster.
Here a link:
https://en.wikipedia.org/wiki/The_Man_Who_Fell_to_Earth
Is “serious and unemotional” such a disqualification? I would rather have thought that all professional arguments at the EPO should be made seriously and unemotionally. Emotional arguments may be rhetorically persuasive if made orally, but normally fail to convince if made in writing when the deciding body has the time to reflect.
Incidentally, the fact that we cannot decide for sure on whether submissions are AI-generated or not is surely a topic for discussion. I presume that many AI models have been trained on publicly available data, and the repository of (mainly) sober, businesslike, professional, non-emotional and detailed submissions in EPO proceedings must be a goldmine in that respect.
@ Anon Y. Mouse
A further rather agressive comment in the tone, on the verge of being deleted.
The discussion on the AI was not about the present one, but about that of Oliver FARNSWORTH TPO. You should therefore be more selective where you place your comments.
I would like to note that I did not bring in the discussion the notion of “serious and unemotional”. It was Max Drei. Therefore I will not say anything about this, as I am the wrong addressee.
As far as AI is concerned, there is a major problem with it. The output depends first on the data it has been trained with and second from the prompt.
An AI output has to be taken with a large pinch of salt as it is no more than the result of a statistical evaluation of what could be a plausible outcome. For example, the AI in Oliver FARNSWORTH TPO delivered a manifestly wrong conclusion in opposing my view to that of the president of the EPO in matters of CLC. The contrary is true
I fail thus to see that the output of an AI can be a goldmine for submissions to the EPO.
One party has once tried to justify CGK with AI. The attempt was nipped in the bud by the board, as the only date which was certain was the date when the output was created. In patents, you should know that what matters is the publication date of any document used as prior art.
For the future be very careful about what you write and how you write it. Last warning!
I’d like to add another layer to the G 1/25 debate, specifically regarding the recent TPOs (which I am not part of) that rely on Article 6 PCT as a mirror image of Article 84 EPC. If we look closely at the PCT history and corresponding UK case law, it strongly challenges the Enlarged Board’s preliminary inclination to require strict adaptation of the description.
Here is why the concept of “support” was always intended to be a one-way street:
1. The PCT Travaux Préparatoires and Unidirectional Support
The drafters of the PCT deliberately separated the description and the claims to define their specific roles:
Article 5 PCT (mirroring Art 83 EPC) is explicitly titled “The Description”.
Article 6 PCT (mirroring Art 84 EPC) is explicitly titled “The Claims”.
The CPT notes for Article 6 clarify that the description and drawings are meant to be used conjunctively to determine “whether the claims are fully supported by the description.” There is absolutely no historical indication that the claims were meant to act as a restrictive filter used to mandate the deletion of technical teaching from the description.
Furthermore, the records of the 1970 Washington Conference show that the claims define “the matter for which protection is sought” (evolving from “the protection applied for”). The language is inherently unidirectional: the description supports the claims, but the claims do not dictate the erasure of the description.
2. Historical Reluctance and UK Jurisprudence
Interestingly, during the PCT drafting, some countries, including the UK, were initially reluctant to even provide the patentee with the possibility of amending the specification (under what became Article 28 PCT). This historical resistance to tampering with the specification aligns perfectly with modern UK jurisprudence:
The Lundbeck case: The UK courts rejected the idea that a broad product claim must be restricted in scope simply because the specification only disclosed one inventive method of making it.
The Actavis case: Lord Neuberger explicitly warned that assuming a patentee intends to exclude variants just because they limited a claim to a specifically tested embodiment “confuses the disclosure of the specification of a patent with the scope of protection afforded by its claims”.
If the EBA adopts a strict “First Line of Case Law” requiring descriptions to be aggressively adapted to perfectly match the claims, they risk artificially truncating the contextual technical teaching. This strips away the vital context that national courts rely on to properly assess the true scope of protection and the doctrine of equivalents.
@ Who knows,
My first reaction was to delete your comment as, in my opinion, it is not helpful.
It boils down to merely rehashing tired old ideas which fails to convince.
I will nevertheless reply briefly.
What matters are the travaux préparatoires for the EPC and not those of the PCT. The travaux préparatoires for the EPC are very short when it comes to Art 84. Nothing can really be drived from them.
It is a fallacy to claim that Art 84 is unidirectional. If the claims define the matter for which protection is sought, the description cannot contain statement which allows to raise doubts about this definition. This is what all decisions of the boards, besides T 439/22 have said. If the definition of the matter for which protection is sought, is different from that of the claim, there is manifest inconsistency. Either the claim or the description has to be amended. There are two UPC decisions confirming this. See my comments on the TPO of Oliver Farnsworth.
UK jurisprudence might be interesting but is actually of little relevance. In the famous Actavis case, Lord Neuberger, with due respect, did not show a good knowledge of the EPO’s case law on added matter. So what he has said, has to be taken with a large pinch of salt.
When taking the Epilady/Improver case, the claim was clear as such and the national jurisdictions, but the UKSC, did correctly consider that the rubber rod with slits is equivalent to the rotating spring. A national court is always free to look at the vital context of the invention by consulting the file. I am sure that in case of litigation, the parties do this, be it only to come with an objection of added matter.
Yourself and Oliver Farnsworth manifestly confuse the definition of the matter for which protection is sought and the scope of protection.
When the EPO grants a patent, it has the duty to insure that the description does not allow a different definition of the matter for which protection is sought from that derivable by the skilled person from the plain claim wording. See for instance T 2027/23.
Thank you for not deleting my comment and for taking the time to reply. This blog is one of the few places where we can rigorously exchange views on these nuanced issues, and I appreciate the debate. I don’t believe it should be so personal as a debate.
I believe the fundamental disagreement between us boils down to this: You believe the EPO has a strict duty to “clean up” the description, whereas the vast majority of users, especially the litigators who actually enforce these patents, believe that the courts do not need the EPO’s help to handle potential clarity issues.
Here is why the current push for strict adaptation oversteps. We can hopefully agree that the EPC establishes a clear division of assigned work. The EPO is responsible for pre-grant procedures (along with oppositions and limitations within the EPC framework). Everything else post-grant is the strict domain of national courts and/or, today, the UPC. This split work process was effective for four decades. National courts are not paralyzed or unable to reach decisions just because a description contains broader embodiments. Even if there has been the occasional odd decision where a judge wished the EPO had handled specification differently, it has never actually stopped a court from reaching a conclusion.
You mention that users confuse the definition of the matter (Art 84) with the scope of protection (Art 69). However, litigators argue that it is the strict adaptation practice that conflates the two. By aggressively scrubbing the description of anything outside the literal claim wording, the EPO is preemptively restricting the contextual teaching that courts rely on to determine scope.
This brings us to the major issue. If the Enlarged Board in G 1/25 aligns with your strict view, what happens to the doctrine of equivalents? Article 69 EPC exists precisely so courts can interpret the scope of the claims beyond their literal wording. If the EPO forces the deletion of all broader context during examination, would it not hinder the courts’ ability to apply this doctrine of equivalents ?
Finally, we cannot ignore the ultimate Catch-22 that this strict adaptation practice forces upon applicants: the inescapable tension between Article 84 and Article 123(2).
If an applicant complies with the hyper-strict approach to “support” that you advocate, they are forced to surgically delete or modify “inconsistent” features from the description. However, doing so runs the severe risk of inadvertently altering the technical teaching of the application, thereby creating an added-matter trap.
The tragic reality for users is that this trap is often only discovered years down the road during post-grant opposition or national litigation. By then, there is absolutely no recourse to fix it, attempting to reintroduce the deleted text to cure the 123(2) issue will invariably violate Article 123(3) (extension of protection), rendering the patent irrevocably invalid.
This danger is rooted in the statutory text itself. As previously noted, Article 84 EPC is explicitly titled “The claims”. In stark contrast, Article 123(2) EPC applies to “the European patent application” or patent as a whole (which inherently includes the specification). Demanding that applicants aggressively scrub the specification to satisfy an overly rigid interpretation of Article 84 forces them to gamble blindly with the unforgiving, fatal axe of Article 123(2). This has been raised by many others and I am conscious of it.
Hopefully we can still have this discussion…
@ Who knows-16.04.2026
In your comment on the thread TPO Oliver Farnsworth you mentioned T 0432/28. Look at my presentation on T 0432/28 in my blog (24.01.2024) and on my reply in said thread.
Even if in matters of CLC this decision is a one off, said decision has clearly given the reasons why claims and description should be aligned. This decision reinforces the position that the EPO has a strict duty to “clean up” the description.
What the litigators believe or not is of no concern of the EPO. It sounds brutal, but so it is. In any case when it comes to litigation the whole file is gone through with a fine toothed comb.
If the Enlarged Board in G 1/25 adopts a coorect view, nothing will happen to the doctrine of equivalents! The claim might be clear as such, but the proprietor should not get the possibility to chose between two definitions of the matter for which protection is sought, cf. T 0438/22. National courts or the UPC are free to do what they think fit in matter of equivalents, but it is the duty of the EPO to bring in the necessary clarity on what is actually claimed.
If done correctly, I have not yet seen one patent revoked because the EPO has required the adaptation of the description. There is one case in the UK, but there, it is the proprietor which amended the description on its own volition. Also in T 1239/03, it was the proprietor which deleted examples 2 and 3 on its own volition,
I was never in favour of a strict deletion of unclaimed embodiments, but embodiments not any longer covered by the definition of the matter for which protection is sought cannot, in all logic represent the invention claimed. This is the case when embodiments are not any longer patentable. They have to be marked accordingly, but cannot be left as in the original description.
In presence of only two alternatives, e.g. chromatic and achromatic, if the claim is limited to one of those, the other cannot be held as defining the matter for which protection is sought. A feature optional in the original description, cannot be left optional in the latter, when it has limited the independent claim.
The EPO does not force the deletion of all broader context during examination, and therewith does not hinder the courts’ ability to apply any doctrine of equivalents ?
I do not call this aggressively scrubbing the description of anything outside the literal claim wording. The EPO is by no means pre-emptively restricting the contextual teaching that courts rely on to determine scope when it grants or maintain a title in which there is only one definition of the matter for which protection is sought.
You dismiss the PCT travaux préparatoires by pointing out that the EPC travaux for Article 84 are very short, concluding that “nothing can really be derived from them.” But there is a very obvious, practical historical reason for that brevity.
The PCT was concluded at the Washington Diplomatic Conference in June 1970. The EPC was signed in Munich in October 1973. The drafting phases of these two monumental patent treaties heavily overlapped, and they were negotiated by many of the exact same national delegations and patent office representatives.
Article 84 EPC is a near-verbatim copy of Article 6 PCT. The European delegations did not need to extensively re-debate or exhaustively document the intention behind “supported by the description” in the Munich travaux because they had just finished negotiating, defining, and agreeing upon that exact language for the PCT. They all knew exactly what the intention was.
Therefore, looking at the PCT records, such as the explicit explanation of the third sentence of Article 6 PCT, is not irrelevant. It is the most accurate historical lens we have to understand the true, original intention behind the language that was copy-pasted into Article 84 EPC. Ignoring the PCT history simply because it is not explicitly repeated in the EPC documents ignores how these treaties were actually harmonized and drafted.
@ Who knows-16.04.2026
I will not repeat what has been said before, but what matters are the travaux préparatoires of the EPC and not those of the PCT. I was already in the patent business at the time, and when the EPC came, it was only the EPC what mattered, not the PCT.
You might not know it, but it is the threat of the PCT which brought European countries to agree on a patent, not limited to the EU/EEC, but, at the time, opened to non-EU/EEC countries.
There is also a fundamental difference between PCT and EPC. With the EPC a patent can be granted. With the PCT the grant is left to a national or regional granting authority. Anything else is pure speculation.
As to the writing of the PCT, I think it irrelevant here. What gets acceptance amongst the parties drafting the PCT is what they can all agree to. I find it inconceivable that, back in the early 1970’s, a proposal to conform the description could gain traction.
But so what? Why should that deter the EPO, in its absolute discretion, 40 years on, and in a sincere effort to help the UPC, from making it a condition of grant?
Similarly, jurisprudence in England is worth taking into consideration, but persuasive? Hardly.
Anon Y mouse is old enough to defend himself.
As your comment did not contribute substantially to the discussion, it has been deleted.
In the future, refrain from filing such useless comments.
It is not because on this blog comments are automatically published that you have to indulge in filing such useless things.
Only comments contributing to the substnce of the discussion should at all be posted.
Deleted as not contributing in substance to the discussion.
The EPO register might be public. I am not sure that the EPO wants to see it poached.
Anon Y mouse is ld enough to defend himself.
Your commdent was not helpful, hence it was deleted.
DXThomas