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 history of the case
The OD decided maintenance according to AR1E, whereby the OD held that no adaptation of the description was needed in view of AR1E.
Both proprietor and opponent appealed.
According to the minutes of the OP held on 19.12.2024, the board came to the conclusion that the patent could be maintained according to AR1E.
The opponent maintained its position that the description had to be adapted.
Referring to T 56/21, the proprietor maintained its position that the description did not need to be adapted.
A further request in which the description was adapted to the claim was not admitted by the board, cf. Art 13(2) RPBA, as being too late. The wording of the claim was already decided by the OD. The proprietor should not have waited until the OP before the board to file an adapted description.
In view of the diverging position of the parties on the adaptation of the description and of the divergence in case law, the board decided to continue the procedure in writing with the intention to refer questions relating to the adaptation of the description to the EBA.
In a communication of 26.03.2025, the board suggested 4 questions and asked the parties for their comments within a period of two months.
Both parties commented as requested by the board.
The questions referred to the EBA
In interlocutory decision T 697/22 the following 3 questions have been referred to the EBA:
- If the claims of a European patent are amended during opposition proceedings or opposition-appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description of the patent, is it necessary, to comply with the requirements of the EPC, to adapt the description to the amended claims so as to remove the inconsistency?
2. If the first question is answered in the affirmative, which requirement(s) of the EPC necessitate(s) such an adaptation?
3. Would the answer to questions 1 and 2 be different if the claims of a European patent application are amended during examination proceedings or examination-appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description of the patent application?
Summary of the reasons for the referral
Considerations leading to Question 1
The board held, cf. Reasons 10.5 and 10.6, that the binders disclosed in paragraphs [0013] and [0016] of the amended description filed during the OP before the OD, were not limited to binders based on reaction products obtained by curing an aqueous solution comprising citric acid, ammonia and dextrose, as required by claim 1 of auxiliary request 1E, but are defined in a much broader way.
Therefore, in view of this amendment of claim 1 of AR1E, an inconsistency has been introduced between the binder as defined in this claim and the disclosure in paragraphs [0013] and [0016] of the amended description filed during the OP before the OD.
Considerations leading to Question 2
The board then analysed the case law in matters of adaptation of the description, and came to the conclusion that there exists two lines of case law.
The first line of case law, Reasons 14, exemplified by T 1024/18, Reasons 3.1.1 and T 438/22, Reasons 4.6, is followed in most of the cases and requires the description to be consistent with amended claims. The board however noted that there was no consensus in these decisions on one precise legal basis. Was it Art 84 alone, Art 84 and R 42, R 42 alone or for reasons of consistency a general rule of law.
The second, more recent, line of case law, is exemplified by T 56/21. The board noted that it was preceded by T 1444/20, and T 1989/18. A third case, Т 2194/19, following the same line, also preceded T 56/21. In T 56/21, it was held that neither Art 84 nor Rules 42, 43 and 48 provide a legal basis for requiring an adaptation of the description.
The referring board also looked at decisions of other courts, and referred to the Agfa/Gucci decision of the UPC-LD Hamburg on patent EP 3 388 490 B1. The UPC-LD Hamburg found an inconsistency between the claims as granted and the unamended description.
Considerations leading to Question 3
Acknowledging that the case dealt by the referring board was about opposition-appeal proceedings, the board found it necessary to file Question 3 in view of the same divergence of case law for examination-appeal.
The importance of G 1/24
The referring board considered that the fundamental character of the questions raised was reinforced by the order in G 1/24.
Following G 1/24, and the necessity to always consult the description when interpreting claims, the question whether an application can be granted or a patent can be upheld if there is an inconsistency between an amended claim and the description has become of even greater significance.
The board further explained why it considered its original Question 2 as not being worth a referral. The board did also not find the third-party observations of 23.05.2025 relevant since it did not relate to or at the very least is not relevant for the formulation of the referral questions.
Comments
Necessity of the referral
The question raised during OP in appeal is a classical one: the independent claim contains a statement which is not in accordance with the description. There is thus a clear inconsistency between claims and description.
In my opinion, G 1/24 has rendered the referral on the adaptation of the description inevitable.
The referring board has done a great job in analysing the existing case law and deserves praise for the clarity of the questions to the EBA.
Would it not be for the odd decisions, T 1989/18,T 1444/20, T 56/21 and T 2194/19,the present referral would not have been necessary. When looking at case law, there ias a clear consensus among the boards that any inconsistency between claims and description should be avoided.
The third party having filed the observations on 23.05.2025, had also filed similar observations in the procedure leading to G 1/24. It actually wanted the EBA to decide as well on the adaptation of the description. This was also a request from the president of the EPO in G 1/24.
When looking at previous decisions of the EBA which confirmed a large body of case law, e.g. disclaimers and gold standard, it is to be hoped that the EBA will confirm the case law requiring adaptation of the description to the claims.
That the adaptation of the description should not be carried out ex-officio when sending out the communication under R 71(3) goes without saying. That the adaptation of the description has to be done with care and not with brute force also goes without saying.
Leaving in the description statements allowing either a limited meaning or the broadening of claimed features, which, as such, are clear for the skilled person should be brought to an end. The description is not the dictionary of the claims.
Third parties should not be obliged to delve in the description to become aware that the scope of protection could be somehow different from that is directly and unambiguously derivable from the claim wording.
Adaptation of the description does not mean deleting whole chunks of the description, but clarifying what falls under the claims and what does not.
If an applicant/proprietor wants a more limited or a broader scope of protection, it is its duty is to bring the corresponding features into the claim. Then, any potential problem under Art 123(2) will be avoided.
Comments on existing case law
In T 56/21, commented in the present blog, the board chickened out from referring questions to the EBA, although it had announced to do so. It went as far as to pre-empt G 1/24.
T 1989/18,T 1444/20 and T 56/21 stem from the same legal member. T 2194/19, commented in the present blog stems from a legal member which apparently has great sympathy with his colleague of T 56/21. In my opinion, T 2194/19 failed to convince.
The Agfa/Gucci decision of the UPC-LD Hamburg was also commented in the present blog. If, before grant, the description had been adapted to the granted independent claim, the work of the UPC-LD Hamburg would have been facilitated.
Comments
4 replies on “G 1/25 – T 697/22 – Referral on the adaptation of the description”
You suggest that these decisions all stem from one specific legal member. However, at least two of ………agree with that legal member. At least one of …….. also agreed, as did at least one of ……….., as did at least one of ………. So, that legal member’s view is perhaps not as isolated as you make it out to be. Unless, of course, the boards issue decisions written by a single person.
I hope that we can at least agree that this referral is long overdue. When boards are disagreeing with each other so flagrantly, this cannot be good for justice.
Finally, I believe that you meant to refer to T 1444/20.
To the glorious anonymous,
In view of your reaction, you must most probably be a legal member of the boards. I even have a good idea who you could be.
If not a member of the boards, you are then a well known representative who thinks he knows it better.
I can reassure you. I checked the composition of the boards in all decisions I have been quoting.
I am also fully aware the a board’s decision is a decision taken by all three members.
The same is actually valid with divisions of first instance.
I have deleted the names you had mentioned in your comment. It is not necessary to give the names of members of various boards to explain that board’s decisions are, in principle, taken by all its three members.
The strange thing is that the name of the legal member in T 56/21 and T 1444/20 was never mentioned in your comment. In T 56/21 the legal member was even the rapporteur. It reminds me at school when another pupil threatened “I will tell it my father, and you will see what happens”. How ridiculous to hide behind other board members.
This does not change the fact that the question of the adaptation of the description is not a technical question but a legal one.
The immediate and obvious conclusion is that the decision of the whole board has been influenced by the legal member of the board.
It also happens that a given legal member of the bords can act in different boards. There is thus nothing special in your mention of different board compositions with the same legal member. Since in T 56/21 the legal member was even the rapporteur, this says a lot.
It is only for the odd decisions going, for whatever reasons, against the long lasting line of case law about the necessity to adapt the description, that the present referral was necessary.
Why did in T 56/21 the board chickened out from a referral which had been announced with full trumpets? It give some good clues about the author of the comment.
It will cost the parties and the office a lot of money which could have been spent more judiciously.
I express the hope that the EBA will confirm the long lasting line of case law and stop the non-sense created by a few boards.
I would further like to observe that, when it comes to procedural aspects, again the whole board decides, but it is a matter of fact that the decision is primarily a legal question.
In procedural aspects I have often criticised the boards for the lottery effect which results from the vastly divergent board’s decisions on procedural matters.
The vastly divergent board’s decisions on procedural matters is a matter of fact, and I am not the only one to criticise the boards for the too great importance given to formal aspects in procedures before the boards.
I refer here to an article published in JUVE in May 2024, which said:
“It must not become a lottery for users where each board provides a different service and result. The boards should also avoid basing too many of their decisions on formalities instead of looking at the technology. For years, users have criticised this aspect in what is otherwise a positive overall impression of the BoA”. There is nothing much to add.
It is because a handful of decisions wanting to oppose the existing the long line of case law that we ended with the present referral.
If you had carefully read the considerations leading to Question 2, you would have seen that I referred to T 1444/20.
By the way, it is not the first time that I have mentioned in my blog, that it was the same legal member acting in T 1144/20 and T 56/21.
Have you ever heard of the parable of the beam and the straw?
You must really have a chip on your shoulder to have reacted as you did.
I have nothing to add or retract from my comments, besides amending 1440 in 1444, which by now has been done.
For me, Daniel, your key words are “what falls under the claim and what does not”. Do you suppose that this is an easy thing to agree upon, prior to grant.
Perhaps, if we pretend that Art 69 EPC does not exist. But for those prosecuting patent applications at the EPO, both of your solutions (delete the offending disclosure, or write explicitly that it is NOT the invention) can be problematic for those thinking ahead to what might happen if the patent is asserted after grant against an infringer. Finding a balance between reasonable certainty for the public and “fair” protection for the inventor should be the watchword though, even prior to grant.
Dear Max Drei,
I have great sympathy with your views, but I cannot follow you on this path.
I can only repeat what I have said many times. With the EPC as it stands, and especially with Art 84 and its two prongs, any inconsistency between independent claims and description has to be resolved before grant.
What is not covered by the claims does not necessarily have to be deleted, but the description cannot stay as it was originally filed once new prior art has been brought in and the independent claims have been amended.
That in some countries the description as filed is not amended is irrelevant as far as the EPO and the EPC are concerned. This is the reality which are are both facing.