Introduction
Oliver Farnsworth is manifestly a pseudo, even if it looks like a proper name. It cannot be found anywhere.
Under World Enterprise Corporation, one can find different companies, all with different dates of creation and places, for instance in Japan, Texas, Ohio and between 14 and 38 years old. I could not find any company of this name in Arizona.
The whole TPO looks indeed as it could well have been drafted by an AI. At least for a large part.
The result of an AI is always subject to caution, as its output depend not only on the data with which it was trained, but also by the prompts used in interrogating the AI.
I. No agreement on why adaptation is required
The TPO insists first that there are different views on why adaptation is required. It is not because there are different views on this point that the EBA would be unable to reach a conclusion. This is a first problem with this TPO. I trust the EBA to come to the right conclusion.
On page 5, I read the following: “D.X. Thomas disagrees, at least with respect to claim-like clauses, arguing that these should always be deleted and that a statement is not sufficient. This directly contradicts the President’s position that the applicant may choose”. When reading and understanding the President’s comments, the contrary is true. In the latter’s comment, claim-like clause are not acceptable.
To conclude Part I by saying that an answer of “No, there is no general requirement to adapt the description” is clean, unambiguous, and internally consistent, is so easy that I would not have thought of it.
II. Art 69 and G 1/24
It can be agreed with the TPO that “The Enlarged Board has already held that Article 69 EPC does not apply in proceedings before the EPO”. There is however a proviso, that is Art 23(3). The only point when Art 123(3) is mentioned in the TPO is when discussing T 439/22. Considering in T 439/22 that the deletion of § 35 infringes Art 123(3), is to say, a strange conclusion. I would rather have thought it infringes Art 123(2).
The TPO is wrong when it claims with G 1/25 the EPO should ensure that the patent text is coherent enough for the EPO to perform its own task (assessing patentability), but should not optimize the patent text for the courts’ task (determining scope of protection), which is outside the EPO’s mandate.
This is not what G 1/25 aims to propose. Adaptation of the description means that the description cannot contain statements which are broader or more limited with respect of what is derivable from the claim and which gives raise to doubts about the definition of the matter for which protection is sought. There is nothing circular in G 1/25, it is only about a correct definition of the matter for which protection is thought.
The pemetrexed example is ill chosen, as it was this application which triggered the tightening of the Guidelines in respect of the adaptation of the description.
The TPO quotes one UPC decision, UPC_CFI_358/2023, Hewlett-Packard Development Company v Lama France, Paris LD, as it ignored that some features were declared as not being part of the claimed invention.
The TPO willingly ignored other UPC decisions, which plead in favour of adaptation.
In UPC_CFI_363/2024 of 01.08.2025, the LD Paris in § 1 of the abstract, the court further noted that the addition of the words “placed edge to edge” in claim 1 should have led, at the time of the grant of the said patent, the removal of the so-called “stacked” embodiment of the invention mentioned in the description, This is the same LD as that in the Hewlett-Packard Development Company v Lama France.
The second one is the Agfa/Gucci case in which the LD Hamburg, UPC_CFI_278/2023, stated that “chromatic” should have bee delete.
III. Art 84
The TPO alleges that “it is common, indeed typical, for patents to have descriptions that are broader than their claims, because that is how patent drafting works: a broad disclosure is filed, and the claims are (typically) narrowed during prosecution”.
This is certainly the case in the US where the description is not adapted. But in the US we have a file-wrapper estoppel which is unknown in the EPC.
Claims can be clear as such, but the unclarity/inconsistency/discrepancy which G 1/25 aims at resolving is what is the matter for which protection is sought?
When the description says “A, B and optionally C” alongside a claim to “A, B and C”, then the description is broader than the claim. What is then the matter for which protection is sought: is it A+B or A+B+C? If claims have primacy then C cannot be left as optional in the description.
The AI or the person behind the TPO has manifestly not understood what it means to say A+B and optionally C when the claim says A+B+C. The applicant can say, what is infringed is A+B, even if the claim says A+B+C. This does however not mean that it is correct to leave in the description that the matter actually sought to be protected is A+B.
The skilled person is not confused and can clearly distinguish between the meaning of A+B and optionally C or A+B+C.
Contrary to what the TPO says, an “Angora cat” interpretation of the claims justifies mandatory adaptation. Just see what Agfa did. It claimed infringement of “chromatic” while the claim was limited to “achromatic”.
The TPO is right when it say that the claims have to be clear, concise, and supported by the description. However, it forgets willingly that the claims define the matter fo which protection is sought. The matter for which protection is thought cannot receive a different definition in the description.
The TPO has not taken into account the fact that already under G 1/24 the boards are not prepared to carry out interpretative summersaults for the benefice of the applicant/proprietor. It simply mentions T 439/24.
Nowhere in the whole TPO, the function of the claims has been taken into account: to define the matter for which protection is sought.
This is a fundamental failure of this submission.
IV. EPO’s practice – Adaptation is not an Article 84 requirement
It cam be agreed with the TPO that the claims have to be clear as such and only clear claims can be compared to prior art. The TPO has manifestly overlooked that an unclear claim cannot render its subject-matter new or inventive, cf. T 571/05, T 422/06, T 872/09 and T 144/12.
Once the claim is clear, provided the description allows to clarify it, it can be compared with the prior art. This is necessarily done by consulting the description as required by G 1/24.
When consulting the description, it can be seen whether the matter for which protection is sought is defined differently in the description than in the claim.
See the example above: if the claim says A+B+C and the description says A+B and optionally C, the description and the claims are at odds when it comes to the definition of the matter for which protection is sought. This is why all the boards applying G 1/24, besides T 439/22, said that if the applicant/proprietor wants the definition in the description to be taken into account, be it broader or narrower, then the claim has to be amended accordingly.
V. “Supported by the Description” is unidirectional
In previous blogs and comments I explained why I was of a different opinion, and I will not repeat here.
What the USPTO, the UKIPO, the JPO, and the KIPO do with Art 6 PCT is actually irrelevant for the EPO and its boards.
All the other patent offices are part of an integrated system comprising the granting authority and a subsequent national jurisdiction. The EPO is different in that it has to deliver a patent in which the applicant/proprietor should not be allowed to define the matter for which protection is sought as he thinks fit.
VI. The “two types” framework
I have explained why, in my opinion, the EBA proposed two types of inconsistencies. No need to repeat it here.
There are indeed inconsistencies which the skilled person when reading claims and description can leave with. There are other inconsistencies which might bring the skilled person to wonder what is actually the matter for which protection is thought. The second one matter.
It appears quite daring for the TPO to allege that non-claimed embodiments in the description, broader definitions in the description than in the claims, and retention of “optional” language in the description where the claim makes a feature mandatory, are inconsistencies of the first type and can be ignored. The contrary is true.
In a system of file-wrapper estoppel, those inconsistencies subsist after grant, but the EPC does not provide for such a system.
It can thus not be agreed with the statement in the TPO that “The presence of broader or unclaimed disclosures in the description does not render the claims unclear or unsupported. It provides the technical background against which the claims are to be understood e.g. by providing a record of what the inventor had in mind when the specification was written.” What the inventor had in mind when it made its invention is actually irrelevant, as during examination, prior art can be found which needs narrowing of the claim.
When the skilled person, reading the claims with a mind willing to understand, cannot determine what the claim means at all, then we have manifestly a problem of clarity. It all depends whether the description can resolve the problem. If yes, it can be resolved, if not we are more facing an Art 83 problem.
When the TPO alleges that “The definition of Second Type inconsistencies should not encompass the ordinary situation of a description that is broader than the claims” this nothing more than an apodictic assertion without any legal basis.
There is no risk of non sequitur in the EBA’s provisional statement. Firstly, the EBA has not elaborated on the topic and has simply given an opinion. Secondly, the TPO starts from the postulate that anything can be in the description and can thus give a different definition of the matter for which protection is thought. See the example with A+B and optionally C and a claim with A+B+C. If this is not a massive inconsistency. then no discussion is necessary.
VII. T 56/21, G 1/24, and Article 84 ЕРС
The TPO has manifestly not consulted all the board’s decisions requiring the claim to be amended, when the description gives a different definition of the matter for which protection is thought.
T 56/21 has become the lifebuoy of all those opposing adaptation of the description. It is one view of a specific board, actually a specific LQM. It will not necessarily be the view of the EBA. T 56/21 has tried to pre-empt G 1/24 and is therefore to be taken with great caution.
As T 56/21 preceded G 1/24, it is not compatible with the proposition “Article 84 imposes requirements on the claims, not on the description”.
VIII. Conditions the EBA should bring in
Contrary to the TPO, all amicus curiae have not given clear instructions on how to handle the matter and merely suggested reasons.
It is amazing that a TPO, moreover anonymous, goes as far as to tell the EBA what it has to do and how it has to do it.
That an objection has to be reasoned is nothing new under the sun. There was no need for the TPO to come up with such a useless comment.
Conclusion
Contrary to what the TPO states
- the mere presence of non-claimed embodiments in the description constitutes an inconsistency, especially if some embodiments are not any longer patentable for lack of N or IS.
- the use of broader definitions or “optional” language in the description is an inconsistency as it allows the applicant/proprietor to change the definition of the matter for which protection is thought. See what Agfa fid in the Agfa/Gucci case.
There is no need to insist upon the fact that the applicant/proprietor has the choice of the amendment, either description or claims, as this is the basis of party disposition, cf. Art 113(2).
The last word whether the amendment is in conformity with the EPC as interpreted by the EBA lies with the boards of appeal and not with the applicant/proprietor.
Whether it was written by an AI or not the TPO remains anonymous in spite of a name given, which cannot be found and a company which apparently does not exist.
The TPO is long and tedious, but does not bring a new insight.
Comments
41 replies on “Some comments on the TPO of “Oliver Farnsworth””
If you are dealing with CLC objections, you might have missed T 0438/22. What makes this decision so interesting is that even though the Board generally aligns with the strict “First Line of Case Law” (requiring the description to be brought into conformity with the claims), they drew a hard line against deleting CLCs just because of their formatting. The Board explicitly pushed back on this practice:
“There is no provision stipulating that examples within the meaning of Rule 42(1)(e) EPC should not be in the form of claim-like clauses, i.e. in the form of one or more independent clauses followed by a number of clauses referring to previous clauses, at the end of or in another part of the description.
There is no justification for deleting such examples just because they were drafted as claim-like clauses. They are to be treated like any other part of the description and thus, inter alia, must support the claims (Article 84 EPC).” (T 0438/22, Reasons 3.4 and 3.5)
@ Who knows-16.04.2026
I have not missed T 0438/22. I even commented it in my blog on 15.01.2024.
As far as CLC are concerned, it is the opinion of a single board, and this decision has not been taken into account by other boards.
It might thus remain a one-off.
In any case, I cannot see in R 42,dealing with the description, or in R 43 dealing with the claims, any reference to claim-like clauses. As such they can even be considered as a way to avoid claim fees, and this is not acceptable.
I invite you to look at Catchwords 2 and 3 and to think of their deeper meaning.
2. It is a general and overarching objective, and as such also a “requirement” of the Convention, that authorities, courts and the public interpreting the claims at a later stage should, as far as possible, arrive at the same understanding of the claimed subject-matter as the EPO bodies deciding on the patentability of the same subject-matter. The only tool for achieving this objective is the patent specification as the expression of a unitary legal title. The description, as an integral part of the patent specification, should therefore also serve this overriding objective, i.e. it should provide a common understanding and interpretation of the claims. If the description contains subject-matter which manifestly impedes a common understanding, it is legitimate to insist on its removal under Articles 84 and 94(3) EPC and Rules 42, 48 and 71(1) EPC.
3. The board approves the practice where instead of a direct removal, i.e. the deletion of the subject-matter not covered by the claims, a “removal” by way of an appropriate statement is made, leaving the technical disclosure unaffected.
When the description allows a different definition of the matter for which protection is sought, be it broader or narrower, the subject matter in the description manifestly impedes a common understanding of claims and description.
In spite of what T 0438/22 says about CLC, it might thus be considered part of the “first line” of caselaw, requiring adaptation of the description. It is never good to just look at one part of a decision. The whole decision has to be considered.
It reminds me of an opponent, claiming during OP, that in T xxx/xx the board had said something which could help him. When looking at the whole decision, the opponent had taken a whole sentence out it its context. The argument felt flat.
I gather that Oliver Farnsworth was the patent attorney in the film “The Man Who Fell to Earth”. So, yes, here we have a
pseudonym
You are probably right, but can we be sure that it is not the well-known English: Coronation Street and Emmerdale actor, breaking into new pastures? – https://en.wikipedia.org/wiki/Oliver_Farnworth
Farnworth? Or was it Farnsworth? My money’s on the American spelling. Does it matter though? I think not.
And anyway, the TPO gives as his business address the fictional corporation that in “Fell to Earth” made so much money for the Bowie alien character.
Max Drei,
The name and the company are all fake. At the end of the day, “Oliver Farnsworth” has filed an anonymous TPO. It will interesting to see whether the EBA will discard them directly or merely mention them. Whatever, I doubt the EBA will be take them into account.
I agree with you, Daniel, that the Board will ignore the TPO’s.
I suspect that the TPO’s are intended to be read, instead, by the party to the upcoming oral proceedings that argues against imposing strict conformit.
The observations rehearse, over and over, reasoning why the EPO should refrain from insisting upon strict conformity. The aim of putting them on the EPO file at this stage is to assemble the word strings that put the case as succinctly and persuasively as possible, so persuasively that, when that case is argued at Oral Proceedings, the Board is left in doubt, whether its provisional intention to confirm that strict conformity is required is the correct way to go.
One thing is for sure. By the time the Board gets to make its Decision, it will have heard the arguments on both sides more exhaustively than ever before.
Mr Thomas, could you elaborate upon your comment that “It is amazing that a TPO, moreover anonymous, goes as far as to tell the EBA what it has to do and how it has to do it.”
Is that not the purpose of any TPO, amicus brief or party submission? All of them seek to persuade the deciding authority – whether it is an examining division, opposition division, board of appeal, or even the EBA – of the “correct” answer. Views on what that answer should be, often diverge. They can be expressed more or less forcefully. But fundamentally all such submissions seek to persuade the relevant body of what it ought to do and why it ought to do it.
Is your objection directed more to the tone than to the content? Reviewing the “Farnsworth” submissions I certainly agree they are lengthy and repetitive in parts. But do they “tell” the EBA what to do, or merely seek to persuade – even if in strongly expressed terms? Is your objection to the argument, or to the manner in which it is made?
@ Anon Y. Mouse
Who do you think you are to ask me to elaborate on a statement of mine? Up to now freedom of expression is what it is and I am not obliged to elaborate on anything presented in such an aggressive tone.
When remembering some of your comments on IPKat, their aggressivity was as well notable. As the same applies to your present comment, I was on verge of deleting for this reason. Here is a last warning.
It is perfectly acceptable for a TPO to give a personal view on the legal situation. however, I do not think it acceptable that at the end of a TPO a party says expressis verbis what it wants from the EBA. This is a part of the TPO which I find not acceptable. You might find it normal, I do not.
As the TPO of Oliver FARNSWORTH is actually anonymous, I find aggressive and in this respect comparable to that of the other anonymous TPO I commented upon.
In any case, since both TPO are anonymous, they will most probably not be taken into account by the EBA. I cannot see, for obvious, reasons the president’s representatives using any of those comments during the OP.
As far as parties are concerned, they have to be careful as any new objection/argumentation raised during OP might not be admitted. They could try to raise an objection of suspected partiality, but I doubt they will do so. They are apparently more polite than yourself, being yourself anonymous, and the authors of the two anonymous TPO.
It’s very easy to be aggressive and disrespectful of other people’s views when hiding in anonymity.
I will not hesitate in deleting any comment being aggressive or disrespectful hiding behind anonymity to disperse their venom. You have now been warned.
I really wonder what the person behind this TPO is trying to achieve here. If anyone wants to have a submission considered by the EBA, they have to follow the proper process for filing amicus curiae briefs. There is nothing to gain by filing a TPO later. Whatever they say is tarnished by the mere fact that they did not follow the proper process.
Besides, the fictional name “World Enterprise Corporation” is not even funny. Whoever is behind this TPO should have chosen “World Company” from a certain satirical show that used to be on French TV. At least that would have drawn a few laughs.
You ask, what is the person behind the observations trying to achieve here? Max Drei comments, above, that “I suspect that the TPO’s are intended to be read, instead, by the party to the upcoming oral proceedings that argues against imposing strict conformity”.
I believe that Max Drei’s hypothesis may be correct. There now appears on the EPO register a submission from the proprietor which appears to adopt several arguments which are very similar in substance to the third party observations which were filed over recent weeks.
@ Anon Y. Mouse
Further than to the submissions of the proprietor, there is a further TPO of Mr Snodin. It would have been a surprise if Mr Snodin would have not more or less repeated what he said before in its amicus curiae.
The proprietor’s submission does not appear to bring more than what has been said up to now. Dwelling on T 56/21 will not bring matters forward.
There is also a submission of the epi. It does not bring any more than what has been said in the amicus or in both anonymous TPO. Dwelling on T 56/21 will not bring matters forward.
In view of the RPEBA it will have to be seen whether the board will take all those submissions into account.
Any submission, i.e. for the parties should have been submitted before 17.04.2026. This does however not mean that there will be admitted.
Deleted.
DXThomas
In the last few days additional observations have been filed by several of the original amici: Roche, AIPLA, and Greenwoods, as well as by the Opponent. The Roche and AIPLA submissions are quite closely aligned with the “Farnsworth” submission. Interesting to note that the Opponent has focused mainly on highlighting what it sees as an inconsistency with G 3/14. This might hint at the direction of its oral submissions on the day of the hearing. Either way, it will be a very interesting hearing to watch.
The final stretch of the runup to the G 1/25 hearing sounds like a serial drama, with some submissionsproviding surprises, including a TPO under a name which was actually a pseudo, a suspicion of partiality targeting two respected Board members and the revelation of an article authored by one of these members, Mr Rogers, 20 years ago, which brings valuable insight to the issue.
It is not very surprising that the EBA communication has raised critical comments.
In my view, the rephrasing of question 1 asserted in the EBA communication deserves such comments. As Mike Snodin vividly explains, starting with an inquiry into « inconsistencies » is to put the cart before the horse. Inconsistencies which do not comply with the EPC cannot be defined if a legal basis in the EPC has not been identified.
This is all the more so as the Board decisions supporting the requirement, which form the « First Line of case law », have found a basis in many different EPC provisions, as pointed out in great detail in T 56/21, shifting in particular from the support requirement of Article 84 to the clarity requirement. This is a very weak point for the « First Line of case law ». It is to be noted that the EBA communication, while containing many references to T 56/21, is conspicuously silent as to this part of T 56/21. In my view, the term « First Line of case law » is somewhat deceptive because of its lack of consistent content.
This leaves the awkward impression that the adaptation of the description is a policy objective to be achieved, irrespective of the rationale put forward to justify it and of whether this rationale has a sound basis in the EPC.
I have found persuasive the comment in the submissions that the requirement of substantive amendments in the description is not consistent when the application has been found allowable by the ED, as this implies that the application has been found to comply with all EPC conditions including Article 84. With this in mind, the logic is to restrict amendments entered at the Rule 71(3) to minor matters.
Another significant take in my view is the revelation of Mr Rogers’ article cited in the Anonymous TPO. This article, citing T 1239/03, is significant by acknowledging first that a substantive adaptation of the description may shift the interpretation of claims, and second by raising the risk of new matter resulting from this shift. The proposal of the article to require showing that the proposed adaptation entails no risk of new matter is quite interesting. In the case T 1239/03 cited by Mr Rogers, the adaptation was proposed by the patent proprietor. It is suggested that the proposal should apply to the EPO deciding body as well when it requires substantive adaptation. This would be a robust deterrent.
As to the argument that the support requirement should not be unidirectional but bidirectional, I think this is comparable to shifting from the « comprising » to the « consisting » language in a claim, i.e. the addition of a very substantive condition to the EPC. The patent proprietor’s submission contains a robust rebuttal of the bidirectional interpretation of the support condition.
Other submissions target the objective of legal certainty put forward by the EPO, which relates to court proceedings. Hoffmann La Roche’s submission points out that there can be no « legal certainty » in this context. In addition, the risk of 123(2)/123/(3) resulting from deletions looms large and it in itself a source of significant uncertainty of the EPO’s own making.
Oliver Farnsworth’s TPO cited the UPC decision HP vs Lama of the Paris LD, point 41, in which the defendant argued that Fig 4-8 marked as « unclaimed examples » following adaptation of the description should not be taken into account in claim interpretation. But the court dismissed this argument, holding that the figures are part of the description and may be used when appropriate to interpret the claims.
@MaxDrei
Congrats, you guessed right regarding Oliver Farnsworth being a pseudo. And you are correct that this is a US name, the author of « The Man Who Fell to Earth » is Walter Tevis, a renowned American novelist.
As you say, the run-up is delivering good stuff. Frankly, I suspect that this was the Rapporteur’s plan, when he drafted his provocative preliminary opinion.
Max Drei,
If you suspect that it was the Rapporteur’s plan for the run-up to deliver good stuff when he drafted his “provocative” preliminary opinion, then the objection of partiality against the rapporteur is even less justified. In any case it is a disgrace.
The system of Art 112/112a is such that members of the EBA are at the same time members of the boards. It is an inherent flaw in the EPC and the setting up of the EPO and its BAs. The same mistake has actually been repeated at the UPC.
A revision instance, or an instance having to decide on the right interpretation of a legal ruling should not be composed of members of the same jurisdiction. The members should be different. The problem is that the contracting states did not want to amend the EPC when the EPO itself proposed a new structure of the BA/EBA in 2004/2005.
Personally, I do not find the preliminary opinion in the slightest way provocative. It is the way I have been taught to describe a legal situation before coming to certain legal conclusions.
Drawing the attention on T 56/21 was certainly a good move, as T 56/21 is the life buoy of those opposing adaptation of the description.
Mr Hagel,
It will not come as a surprise that I do not share your views on the various TPO and your position about the answer to the questions.
Mr Snodin does not only express his opinions vividly, he is at the same time apodictic, as he wants absolutely to tell the EBA what and how it has to do things. Being disappointed by the outcome of G 1/24, he also recycled to a large extent what he had already said in its amicus curiae for G 1/24.
At least you recognise that in Mr Rogers article, it was the proprietor who amended the description in order to gain benefit from this move.
T 56/21, is actually no more than the personal view of a LQM member of the boards, even if the decision of the board is a collegial decision of a board. We discussed this topic before. No need to dwell on it. T 56/21 is a kind of life buoy for all those opposing the adaptation of the description.
In all the submissions being against adaptation of the description, it is always question of interpreting the claims in post-grant and post-opposition procedures under Art 69. Not one of those submissions have ever said one word about the prime role of the claims which is to “define the matter for which protection is sought”.
I maintain, that the matter for which protection is thought cannot be defined differently in the description and in the claims.
There is no reason for letting proprietors change the definition of the matter for which protection is thought as they might think fit. This is what is actually at stake in G 1/25 and nothing else.
Hoffmann La Roche’s submission might point out that there can be no « legal certainty », but having a different definition of the matter for which protection is sought in the description and in the claims is a major source of unclarity.
All decisions applying G 1/24, besides T 439/22, require actually a first step of adapting the description: if the proprietor want the definition of the matter for which protection is thought in the description to be taken into account, he should amend the claims accordingly.
The proprietor cannot allege that in presence of a broad claim, the claim should actually be limited in view of the narrower definition in the description, in order to escape broad prior art. Conversely the proprietor cannot allege that in case of a limited claim, the broad definition in the description should be ignored, also in order to escape broad prior art. This is the purpose of G 1/24.
G 1/25 comes after this first clarification. After having decided on an allowable claim, necessarily more restricted than the originally filed claims, then the description has to be amended so as to exclude from the definition of the matter for which protection is sought in the claim, matter which is clearly not any longer falling under said definition found, but left in the description.
In case of only one of two alternatives being left over in the claim, the one not any loner claimed has to be deleted from the description, see Agfa/Gucci. The same goes for an optional feature in the original description which has been used to limit an independent claim. The optional character has to be deleted from the description.
When some embodiments are not any longer patentable, it cannot be left in the description that they still represent the claimed invention. I have never been for their deletion, but this fact has to be acknowledged. By not deleting anything, but clarifying the situation, it is difficult to see in how Art 123(3) could come into play, even remotely.
I am still waiting to see a first case of a patent being revoked under Art 123(2) after adaptation of the description. The only case I know of happened in the UK, and there again, as in the case of Mr Rogers, it is the proprietor who did so.
Deleting variants which do not any longer correspond to what is actually claimed cannot bring in added matter. The same is valid when embodiments not any longer corresponding to what is actually claimed are marked accordingly. Let’s remain serious.
I noted in my post that “Oliver Farnsworth” quoted one UPC decision, UPC_CFI_358/2023, Hewlett-Packard Development Company v Lama France, Paris LD, as it ignored that some features were declared as not being part of the claimed invention. The EPO cannot hinder post-grant or post-opposition jurisdictions to decide and interpret the description as they think fit. For the same token, those jurisdictions cannot explain to the EPO what are its duties towards the EPC.
“Oliver Farnsworth” willingly ignored other UPC decisions, which plead in favour of adaptation, one of them stemming from the UPC-CFI LD Paris.
The day there will be a kind of file-wrapper estoppel in the EPC, then I will agree that adaptation of the description will not any longer be necessary. We are far from this at the EPO.
At the risk of going around in circles, Daniel, arguing over ground already ploughed to exhaustion, on the question of what is a “definition” of anything, I say that the EPC declares the claim to be a definition but that the description has another function, namely disclosure. I would argue that it is a mistake to suppose that the description can be a “definition” of anything. In particular, I would argue that it makes no sense to say that it is a “definition” of the subject matter sought to be protected. That function is the exclusive province of the claim. An inconsistency between the claim and the description is not enough to generate two competing “definitions” of the subject matter which applicant, after substantive examination at the EPO, still seeks to protect.
As to the word “provocative” I do not use the word pejoratively. Is not the preliminary opinion succeeding in its object, namely, to crystallise focus on the decisive issues? Can you write more: why do you think that, if the opinion is provocative, it offends the principles you were taught?
Max Drei,
If somebody is risking to go around in circles, you better look into a mirror.
The description might be about disclosure, but the disclosure in the description of the matter for which protection is sought cannot be different from what the skilled person is deriving directly and unambiguously from the plain claim wording.
An inconsistency between the claim and the description is MORE THAN ENOUGH to generate two competing “definitions” of the subject matter which applicant, after substantive examination at the EPO, still seeks to protect. Is this so complicated to understand?
You did not even bother to explain why, in your opinion, the examples I gave, alternative not any longer claimed, optional feature added in an independent claim, embodiments not any longer patentable, could be consistent with the definition of the matter for which protection is sought, as defined in the claim. If there is no inconsistency in such a situation, we can stop any discussion.
I repeat for the last time, that the day a kind of file-wrapper estoppel is introduced in the EPC, then I can agree with you that the description will not have to adapted. We are far from this.
As far as “provocative” is concerned, it has a definite negative connotation in French. When somebody “provokes” a fight, it is certainly not to elicit a more detailed response to a question at stake before the fight.
English is not my mother tongue, but there are certainly more subtle expressions to use when wanting to elicit a more precise series of arguments on a specific topic.
By the way my patience is wearing thinner and thinner.
Deleted as the question raised is more than superfluous.
DXThomas
Daniel, while you were replying (thank you) I was looking again at T439/22. There, the description includes a “definition” of “sheet” and “gathered”. Given G1/24, and a “holistic” reading of the B publication, one has to read the claim in line with the explicit definitions, within the description, of terms found within the claim. On that, I have no quarrel. At least on that, I think we agree. Thank goodness for that small mercy.
With regard to effects under Article 123, I allow myself to point you to the decision T 439/22 of 11 December 2025, paragaphs 5.4 – 7.
I am curious: do you believe that the Board in T 439/22 was wrong to reach this decision?
Meanwhile, I think it is incorrect to assert that “Not one of those submissions have ever said one word about the prime role of the claims which is to “define the matter for which protection is sought”.”
This is explicitly acknowledged by numerous submissions. See this selection of the originally-filed amicus briefs for examples:
Michael Schmid, page 3, section 4.1
FICPI, page 3
Bayer, page 2
Siemens, Appendix
Canon, pages 2-3
Greenwoods, page 2
CNCPI, paragraph 14
Roche, page 5
CIPA, paragraph 1.6.1
Snodin, page 8
IP Federation, Summary and paragraphs 9 & 13
EFPIA, page 3
@ David Robert Jones
I would first like to note that in the list of professional representatives, I could only find a Roberts, David, a Jones, David Alan, but not a David Robert Jones. Since you did not give an e-mail address, I suppose you are using a pseudo. It does not matter as I reply to your comment.
In a post of 22.02.2026, I have commented T 439/22 and stated my disagreement with the views of the board in respect of Art 123(3). To me an objection under Art 123(2) would have been more appropriate. This was also the objection raised by the board in its preliminary opinion in preparation of the OP.
Here is the link to the post
https://blog.ipappify.de/t-439-22-a-long-awaited-decision-on-gathered-in-the-claim-vs-the-broadening-definition-in-%c2%a7-0035-in-the-description-ar1-and-art-1233/
I certainly disagree with T 439/22, and not only on this point.
You might think that my comment is incorrect, but I could not care less. I maintain my position as the views expressed in the example you mention reflect an incorrect view on Art 84. It is very nice to state what the claims are about, i.e. to define the matter for which protection is thought, but this is only half the story.
Where I fundamentally disagree with, is that all those people think that Art 84 is only from the claims to the description, i.e. is unidirectional. It is pretty manifest that what is claimed has to be found somewhere in the description, but this is only half the story. In the early days of the EPO we invited applicants to incorporate in the description subject-matter only disclosed in the originally filed claims. However, in T 758/13, the board held that repetition of the wording of the claim does not provide support for the latter.
Where I fundamentally disagree with, is when those people claim that the description can contain more, or even a different definition of the matter for which protection is sought.
I have been trained and have given this information to all examiners I was in charge of, that actually Art 84 is bidirectional, i.e. works from the claims to the description but also from the description to the claims.
Any inconsistency between the definition of the matter for which protection is thought in the description compared to that derivable directly and unambiguously from the plain wording of the claim gives raise to an unclarity of the definition for which protection is sought. The claim might as such be perfectly clear, but not when comparing definitions of the definition of the matter for which protection is sought.
For the surplus and for details of the situations in which the description has to be adapted, I refer to my last reply to Max Drei.
You better come with really compelling arguments if you want me to change my position.
That comment on T 439/22 is interesting, because you previously said that “I am still waiting to see a first case of a patent being revoked under Art 123(2) after adaptation of the description.” In T 439/22 itself we therefore have a case where your opinion is that the Board would have been correct to revoke the patent – or at least the relevant Auxiliary Request – under Article 123(2) after adaptation of the description, don’t we? That is so, even if the Board was mistaken to revoke it under Article 123(3) instead.
You are correct that my name does not appear on the list of professional representatives before the EPO. However, it should be clear to readers of this blog that interest in these proceedings extends far beyond the circle of EPO professional representatives. This is evidenced by amicus briefs originating outside the EPO member states.
Max Drei,
In reply to your last comment, I have other queries with T 439/22 and do not agree with it. Look at my post on T 439/22 and my reply to “David Robert Jones”.
I am not sure that T 439/22 was welcomed by the other boards, as it gives an interpretation of G 1/24 which is in line with the position of the German Federal Court (BGH) and is clearly at odds with all decisions having applied G 1/24 before T 439/22 was issued.
Daniel I defer to your knowledge of EPO decisions. I rely on T439/22 only to illustrate what I mean by “definition”. Most descriptions are devoid of any definition of a term found in claim 1. When there is one, the claim should be amended to include that definition, otherwise the claim is not clear. I guess you agree. It is standard practice at the EPO, right? But if the description is devoid of any such “definition” then, for me, it doesn’t define the subject matter for which protection is sought . For me, there is more than one kind of inconsistency, and not all of them offend Art 84. You repeatedly mention file wrapper estoppel. I think that the courts can, even without it, still do justice even when there are in the description some inconsistencies that fall short of rendering the claim unclear.
Max Drei,
If the description does not give a different definition of the matter for which protection is thought, I do not see a problem. It is only if the description attempts to give a different definition than that of an independent claim, be it broader or more limited, that there is an inconsistency which has to be resolved, at the applicant’s/proprietor’s choice.
Whether courts can do justice even when there are in the description some inconsistencies that fall short of rendering the claim unclear, is actually irrelevant. The claim has to be clear and supported by the description. The possibility courts have to iron out inconsistencies in the description does not dispense the EPO to do its job properly.
Agreed; the EPO should do its job properly. The way I see it, that job is to allow through to grant only when the patent application meets all the patentability provisions of the EPC. Its job is to grant, as soon as all those provisions are satisfied. So, G1/25 must tell us all, precisely, what it takes to offend Art 84 EPC.
That is to say, is it enough for the EPO to identify an inconsistency, any inconsistency? From the preliminary opinion, it seems not.
OK then, the question is begged. At what precise point does an inconsistency render an otherwise clear claim unclear.
The answer is, at the moment, not at all clear to me.
Overnight, two more thoughts. Not only for you, Daniel, but also for your other readers.
First, in drafting a statute, different words must mean different things. Here, we have “subject matter sought” and “scope of protection” and “invention”. The scope of protection is what the court gives you for what you have tried to protect, namely your invention. The claims define the subject matter, the description discloses what you consider your invention and the court decides what scope is correct, given the claim you wrote and the disclosure you have made. If the description includes a strict “definition” of a term in the claim, that binds to the claim. Same words= same meaning. Otherwise, “inconsistencies” between “the invention” and “the subject matter sought” are matters the UPC can handle, without breaking stride. Indeed, it helps when setting the scope of protection to know as much as possible about “the invention”, that is, the contribution to the art, that the inventor thought they had made.
Second, legal certainty. Frankly, I don’t know why the EPO worries, or tries to help the UPC. Think about the adjudication of obviousness. There is no alternative approach to it that gets anywhere near the level of legal certainty achieved in the EPO with its PSA approach. And yet, what does the UPC and its coterie of litigators do with that gift? They throw it in the waste paper basket.
What suddenly comes to my mind is that famous 18th century English cartoon of the milking cow, held by the horns by one lawyer and by the tail by another. The lawyers are trying to pull the cow in opposite directions. Of course, the cow doesn’t move at all. And all the time the tug-of-war continues, a judge is sitting on a milking stool smiling, and filling a large bucket with milk from the cow’s udder. I can scan and send you the cartoon, if you don’t know it already.
Max Drei,
I can agree with you that G1/25 must tell us all, precisely, what it takes to offend Art 84. I am convinced it will do. I am convinced that the standard inconsistencies I mentioned before, as well as claim-like clauses, will be dealt with by the EBA.
I agree with you that “inconsistencies” between “the invention” and “the subject matter sought” are matters the UPC can handle, without breaking stride. But I have to reiterate that does not dispense the EPO to do its job properly.
I am not sure whether the UPC has rejected the problem-solution approach as it has not been invented there, or if they had to absolutely distinguish itself from the EPO. At least the terminology chosen will bring confusion. The UPC considers as objective problem, what the EPO holds to be the subjective problem. Choosing the same word for defining something different is in my opinion intentional.
At the next CEIPI tutor’s meeting in June, we will have a lecture on how IS is seen by the UPC by a lawyer member of the Brinkhof’s lawyer firm. I am curious to see what he will have to say and how it will be defending the UPC’s position, as he is at the same time a professional representative before the EPO. I know him well as we have lectured together.
Please send me the cartoon. My contribution: for a scientist, current flows or not, there is nothing in between. For a lawyer the current might flow or not, depending on the party he is representing.
@ David Robert Jones-Reply 2
Your stupid comment does actually not bring matters forward and could have been deleted for this reason alone.
I will nevertheless reply.
Your are one of those very courageous anonymous commenters. I know the people behind some pseudo, but this does not mean that I will necessarily tolerate all their comments in the blog. In general I have a deep dislike of anonymous comments. This is my good right.
Whether you are working “far beyond the circle of EPO professional representatives” is actually irrelevant. You should stand by your opinions and not cowardly hide.
If you would have read my comments, also in reply to your prose, with I mind willing to understand, you would have realised that each deletion you quoted, the deletion was not required by the EPO but was carried out by the proprietor on its own volition.
I sincerely hope that with G 1/25, supplementing G 1/24, inconsistencies of the definition of the matter for which protection is sought will come to an end.
All decisions applying G 1/24, besides T 439/22, made clear that if an applicant or proprietor wants the definition of the matter for which protection is sought in the description to be taken into account, then this definition should lead to a corresponding amendment of the claim. If, in case T 439/22, the proprietor would have done so, there would not have been a problem of added matter. But the patent would have gone anyway.
Come up with something more serious if you want your opinion to be duly taken into account.
Do not merely parrot what others have said.
Mr Thomas,
You frequently insist on the use of pseudos by commenters on your blog in a critical way. I must confess I have in the past contributed comments under a pseudo.
It is quite understandable for people to use a pseudo when their comments might not please their employer or colleagues, or their clients, or professional organisations in which they have a role. The people who do not use pseudos are frequently retired people who do not have this problem any more.
“Insist on” is one of those phrases that can give rise to unfortunate misunderstandings.
In English it has the flavour of “obligating” or “mandating”, when a review of this blog would show that Mr Thomas is strongly opposed to this use.
On the other hand I believe that in French it carries more of a flavour of “emphasising” or “highlighting”, in other words “j’insiste” is much weaker than the English “I insist” and the French conveys more about the speaker’s state of mind than about the demands they place on others.
Would that be correct?
@ Anonymous
Although anonymous, I maintained this comment for a good reason.
English is not my mother tongue, although I have relatives in the UK which I regularly visit. I can claim having a good command of English, but sometimes the nuances in one language are not felt the same in the other one, besides what are faux-amis, e.g. “eventually” or “sensible” which have opposite meanings in French and English. English native speakers have a big advantage, but this should not turn into a battle. Some mutual tolerance is needed.
In an ideal world, people would not hide behind a pseudo. As the world is far from being ideal, I can live with anonymous comments, although I would prefer to know which natural person is hiding behind a pseudo. However I cannot and will not impose it. But this can lead to deletion of anonymous comments. See my reply to Mr Hagel. .
@Anonymous
You are correct and thank you for the explanation. I simply meant that Mr Thomas frequently criticises the use of pseudos. He has explained his position in his answers to you and me.
Mr Hagel,
For the reasons you give, I can, at a pinch, accept the use of a pseudo. There is one big proviso: there has to be an e-mail address which I can contact and which corresponds to a natural person.
My experience with people using a pseudo and not mentioning any e-mail address is that those are either beside the point, or aggressive, also towards my person or the positions I defend. For the sake of the discussion, I most of the time leave them, but the temptation is great to delete those anonymous comments. If people do not have the courage of their opinion, then they can stay fully anonymous and their comments not being published or being deleted.
Two prominent examples of this category are Anon Y. mouse and Proof of the Pudding, although I know who hides besides the second pseudo. I also know some of the people hiding behind a pseudo.
A different way of posting is however possible. For instance in epi 1/26, Mr Christoph D. Schober published an article approving G 1/25, although he is “Professional Representative before the EPO; part-time Technically Qualified Judge at the UPC”.
He made clear that “his article reflects the personal opinion of the author in his capacity as a legal practitioner. It does not express any view in his judicial capacity as a technically qualified judge at the Unified Patent Court, nor does it represent the position of any professional body or organisation in which he is involved”.
There is thus clearly another way to post comments. Why is this not done more often?
Staying fully anonymous is the courage of the cowards! That I strongly dislike this way of behaving is my good right.
Strictly anonymous comments have thus a high risk of getting deleted in the furure on this blog. This is also is my good right.
Two more submissions were filed on 17 April, one by epi, the other by AIPLA. They both argue against the requirement to adapt the description. This shows that there is consensus on this issue between the leading organisations representing European patent attorneys and US IP lawyers.
It is noteworthy that AIPLA has strong international connections as it includes the US Group of AIPPI and as such, it is concerned with worldwide harmonisation of patent law.
I have found AIPLA’s submission both very well written – clear and concise – and forceful. It summarises in a neat and potent way the arguments put forward in previous submissions by practitioners.
Mr Hagel,
It will not come as a surprise that I strongly disagree with your position and that of the AIPLA and of the epi.
As far as the AIPLA is concerned, it should not be forgotten, that in the US the description is not to be adapted in view of their file-wrapper estoppel. It would simplify the work of US applicants/proprietors if the same would be the case in Europe. How often did I see in my times at the EPO: we got this claim in the US and want the same in Europe? There is no good reason to follow AIPLA’s position.
Nothing like a file-wrapper estoppel exists in Europe. The AIPLA, like Mr Snodin, would like to see that the EPO adopts a holistic approach and read into the claim the definition for which protection is sought as defined in the description.
All decisions applying G 1/24, besides T 439/22, have made clear that it is exactly not the way G 1/24 has to be applied. The approach is that of the German Federal Court and I see no reason why it should be adopted at the EPO.
In G 1/24, the EBA just required that the description has to be consulted, but has not said what conclusions should be taken from this consultation. If the EBA had wanted that the definition of the matter for which protection is sought found in the description to be read into the claim, it would have said so.
T 56/21 is at odds with G 1/24 as it considers that, if the claim is clear, there is no necessity to consult at the description. I said it before, to me T 56/21 is the life buoy of those refusing to adapt the description and represents a small minority view amongst the boards.
It is not a consensus between epi and AIPLA which should guide the EBA, It is the EPC. As far as Art 84 is concerned, the AIPLA like all other organisations and people against adaptation of the description, consider that it is sufficient that the subject-matter of the claims is merely to be found somewhere in the description. This is a very partial view on Art 84.
I maintain, that if a claim is clear as such, the mere fact that if the definition of the matter for which protection is sought in the claim is different in the description, there is a major inconsistency between claim and description.
Worldwide harmonisation for the US boils down to adopting their practices. Just look at the desperate attempts of the US to push for a grace period. Why do you think that in R 43(2) only one independent claim in each category is allowed? Exactly in order to avoid US style claims.
I have found AIPLA’s submission not very well written, even if it can be held as being clear and concise, rather weak and anything but forceful. It summarises, in a pathetic way, the arguments put forward in previous submissions by practitioners opposed to the adaptation of the description. By scraping the bottom of the barrel, it looks more like a last desperate attempt to avert having to adapt the description.
You shouldn’t allow yourself to be reduced to a lackey of the Americans.
I hope that the EBA will not be fooled by AIPLA’s nonsense.
Daniel, you and I both recall Robin Jacob’s advice, to study carefully what the Americans do, and then make sure not to make the same mistake. Arguing who is right, Europe or the USA, can help to reveal the optimal way forwards.
I see that you continue to argue that it is the task of the description to “define” the subject matter for which protection is sought. On that, I still think you are wrong. The good thing is, we shall not have long now to wait, for the answer from the EBA, what the Board thinks on that issue.
Max Drei,
Thanks for reminding us of Robin Jacob’s advice. It should not be forgotten.
As far as the description is concerned, I can agree with you that the description is there to disclose the claimed invention. But not only.
Where we disagree is when I say that the description should not contain a different definition of the matter for which protection is sought than that which is derivable from the plain wording of the claim. The different definition in the description can be direct or indirect.
I am preparing a blog post on this topic. Its a kind of TPO without naming it so.