Preliminary note
This a personal recollection of the discussions and does neither intend to be exhaustive nor to be complete.
Should I have missed important aspects in the respective statements, or worse, having misunderstood some of them, I am prepared to amend this post.
The proprietor’s position
The position of the proprietor can be resumed as follows:
- There is no provision in the EPC requiring adaptation of the description
- There is no provision in the EPC requiring that the scope of the claims must be the same as the scope of the disclosure, which is the consequence of requiring adaptation of the description
- The first line of case law requiring adaptation of the description is in conflict with Art 84
- Requiring adaptation of the description does not enhance legal certainty
- Requiring adaptation of the description is in conflict with Art 69
- Requiring adaptation of the description is in conflict with R 42 and Art 84
- Requiring adaptation of the description is in conflict with R 48 and actually introduces more prohibited matter
- It is a false problem to consider that when feature in incorporated in an independent claim, this feature can be left as optional in the description. This alleged inconsistency is solved with Art 69 and G 1/24
- Requiring adaptation actually introduces Art 84 as a ground of opposition which is not correct
- Requiring adaptation of the description can also have unexpected consequences detrimental to the applicant/proprietor especially with respect of added matter
- When filing a large number or AR, an adapted description should be filed for each AR
- The patent is addressed to a skilled reader with a mind willing to understand
- There are cases in which it is not possible to adapt the description and we will have to leave with it
The proprietor’s statement was interrupted at few occasions by very pointed questions from the British external member of the EBA. The rapporteur also interrupted the proprietor’s statement reminding the practice of the boards in matters of adaptation of the description in presence of a large number of AR.
The opponent’s position
The opponent attempted to structure its statements along 5 points. There were overlaps from some points to others
The position of the opponent can be resumed as follows:
- G 1/24 is not only applicable to Art 52-57, but also applies for Art 83 and Art 123(2)
- The consequence of G 1/24 is that the description is always to be consulted
- Consulting claims and description is a unitary process as exemplified in T 439/22.
- The description should be amended before the claims are examined under Art 52-57
- The opponent urged to give clarification and clear guidance as to what represents n inconsistency
- T 56/21 and G 1/24 are in accordance with each other and T 56/21 reaches the same conclusion as in G 1/24, the primacy of the claim is the major issue
- The opponent also referred to the travaux préparatoires and the change from fully supported to only supported. This indicates some more freedom for the applicant/proprietor
- Reference was also made to R 42 and R 48
- Art 84, support, does not apply both ways
- When it comes to litigation the parties and the court could look at all the file and determine by themselves how the procedure arrived at the granted claims
- Adapting the description could cause problems with Art 123(2+3) in later proceedings, reference was made to the decision “Okklusionsvorrichtung of the BGH. It could even bring problems when it comes to entitlement
- Art 84cannot give legal certainty inasmuch Art 69 cannot give legal certainty
- Adaptation of the description should only be requested in case of serious doubts about the matter for which protection is sought
- G 3/14 has also consequences when it comes to the adaptation of the description in opposition. When combining dependent claims with an independent claim, or in case of deletion of a category of claims, G 3/14 forbids adaptation of the description.
- R 80 is also to be taken into account when it comes to amending claims
- Reference was also made to T 829/93
- The EPO is the only office in the world requesting adaptation of the description. Requirements in this respect are not harmonised in all EPO contracting states and the EPO should refrain from requiring adaptation of the description.
- The industry does not require adaptation of the description. Excess matter can be left in the description
The opponent’s statement was interrupted at few occasions by very pointed questions from the British external member of the EBA. There as well, the rapporteur intervened.
The position of the representatives of the EPO’s president
The position of the president’s representative can be resumed as follows:
- The EPO approves the provisional opinion of the EBA in the matter
- The EPO does not require identity between claims and description
- The EPO does not interfere with the prerogatives of national courts or of the UPC
- Even some UPC decisions require deletion of some features of the description when they do not correspond to the granted claims
- The EPO has to grant patents which, according to Art 97(1) for which all conditions of the EPC have to be fulfilled
- The granted patent is the reference to third parties when they are looking at the boundaries of the FTO
- According to Art 84 the claims ought to define clearly the matter for which protection is sought
- Art 84 works both ways not only from the claims to the description, but also the other way round
- The EPO has to grant a patent valid in a large number of counties with different ways of interpretation and legal traditions within Europe
- The EPO is not there to take into account requirements valid in countries outside Europe requiring certain ways of drafting
- Claim like clauses have nothing to do in the description. The EPC only knows claims and/or description, but nothing in between. CLC are also a way to dodge claim fees
- T 56/21 was heavily criticised as being not consistent with G 1/24. It represents a minority opinion whithin the boards
- Adapting the description increases legal certainty
- Art 84 is a legal basis for requiring adaptation of the description, which can be completed with R 42 or R 48
- G 1/03 and G 1/16 also require adaptation of the description.
- Question 3 should not receive a different answer than question 1
The statement of the representatives of president was also interrupted by very pointed questions from the British external member of the EBA. There as well, the rapporteur intervened. Two other members of the BA sitting in the panel also put questions to the president’s representatives,
After lunch brake
After the lunch brake, the proprietor and the opponent, as well as the representatives of the president, got the possibility for further comments. There were in line with their respective preceding statements.
Comments
Normally when it comes to OP before the EBA, both parties defend different points of view. In this case, the proprietor’s and the opponent’s views converged in their refusal of the adaptation of the description.
It could even be said that the opponent’s representative tried to have more pungent reasons for not adapting the description than the proprietor.
The proprietor insisted heavily on the fact that what the EPO requires is that the scope of the claims must be the same as the scope of the disclosure. I am not convinced that this is at all the case.
The present OP is probably the OP before the EBA in which members have asked more questions than usual, and certainly when compared with the OP in G 1/24.
It is difficult to foresee the decision of the EBA, but I would be very surprised if the EBA would decide that the description does not at all have to be adapted and completely reverse the provisional opinion.
Comments
4 replies on “Some takes from the OP in G 1/25”
Thank you very much for taking the time to minute the discussion.
Regarding the oral proceedings, it was quite clear to me that the EPO President’s representatives struggled to adequately answer the questions posed to them. While the representatives for the Patentee and the Opponent performed well and addressed the bench’s questions directly, the President’s representatives seemed to stumble. At times, observing the body language of the EBA members, it felt like the EPO’s representatives were relying on erroneous approximations.
That being said, I was struck by the rapporteur’s intervention regarding Auxiliary Requests. When the Patentee suggested the impracticality of providing multiple amended descriptions for every single auxiliary request before the Opposition Division, the rapporteur was somewhat dismissive, ‘reminding’ them of Board practice. The rapporteur seems to have completely forgotten that one of the primary reasons this issue is before the EBA in the first place is precisely due to the referring Board of Appeal’s refusal to admit late description amendments (late filed).
Apart from this, it was refreshing to see Lord Justice Arnold asking pointed questions to figure out how this works in practice. I highly doubt he believes there is any legal support in the EPC requiring the specification to be a strict mirror image of the allowable claims; rather, it seemed he was trying to understand exactly where the line for ‘inconsistency’ should actually be drawn.
While your blog summary notes the EPO President’s position that the EPO ‘does not require identity between claims and description,’ actual practice often feels otherwise. Overall, I am not even sure the EPO truly wants to push anymore for this strict mirroring practice anymore, given the pushback.
Finally, despite what the Opponent apparently argued regarding amending the description before examining the claims, I strongly hope that if adaptation is required by the EBA, it firmly remains the absolute last step in the proceedings, and definitely only undertaken after a final agreement is reached on what the allowable claims look like.
I have to agree that the representatives didn’t deal very well with the questions by the Board. In particular the question by Mr. Beckedorf about where in G1/24 a position by the EPO president would be and the negative reaction by him when the representative answered very telling.
However, I had the impression that the patent proprietors representative was better able to deal with Arnolds questions (and also by answering Rogers question that we wouldn’t be here if the EPO had done what it according to Rogers would always do, or how Daniel Thomas put it: the interruption of the rapporteur how the office deals with multiple AR). I had the impression the opponents representative rather struggled to answer the questions directly, even though they were answered later on as the representative continued.
I also found it very refreshing that the opponent itself (my guess the in-house representative?) took the time to attend and also say something about this matter from the perspective of an actual “customer”.
From my perspective I would rather agree with the opponents representative that actual inconsistencies should be dealt with at the same time as claim amendments. This whole adaptation business to bring the description into conformity with the claims after finding them to be patentable is non-sensical to me anyhow, while actual inconsistencies should be dealt with immediately.
@ BF,
Your input shows again that the perception of how the OP unfolded vary depending on who attended. This is however normal.
As far as the president’s representatives are concerned, see also my comment in my reply to “Who knows”. I would like to add that the last representative was a bit too self-assured and it is not a wonder that he earned a query, not only from Mr Beckedorf, but also from Mr Pricolo. Indeed, his input was sometimes problematic as being over simplifying. .
That the president’s representative aligned themselves to the provisional opinion, was to be expected, but, imho, they could have achieved more by talking less. The fact that the function of the claim is to define the matter for which protection is sought, came out, but in the middle of a lot of what I would consider background noise.
Mr Laudrup is indeed an in-house representative of the opponent, and at the same time a qualified representative. I can understand his position, but the arguments brought forward where not convincing. Claiming that adapting the description is a nuisance, that it can cost money are not legal arguments, as in such a forum, only legal arguments matter.
To me, the presentation of the opponent was better than that of the proprietor, but was also not free from repetitions.
Having, for a long time, practiced adaptation of the description, I claim that it can be done in a very pragmatic way. What is to be done can be done simply provided the parties stay within the case and do not think at possible future litigation.
The “whole adaptation business to bring the description into conformity with the claims after finding them to be patentable” is anything but non-sensical. It remains that it is only once the wording of the claim has been agreed upon that inconsistencies between claims and description become apparent.
@ Who knows,
Thanks for your comment. You manifestly watched the OP yourself.
It is interesting to see your conclusion. I can agree with you that adaptation of the description should be the last step in the procedure before grant or maintenance. The opponent’s argument that first the description has to be adapted before the claims are examined under Art 52-57, 83 and 123(2) is therefore difficult to follow.
For the rest, my perception of the OP was quite different.
I am not at all convinced “that the EPO President’s representatives struggled to adequately answer the questions posed to them”. What was unfortunate, was the preliminary speech of the lead representative. In my opinion, her speech was misplaced and good for a general conference, but not before the EBA.
Touting that the office aims at delivering quality is actually disproved when looking at the result of oppositions after appeal, in spite of the official figures issued by the EPO. It was right that she was interrupted by the EBA. Her utterance about the purpose of a patent not only being for the skilled person, but also for the public at large, was difficult to understand in the context.
In ancient times, the EPO requested indeed an adapted description for every AR filed. I could never understand this rule as it would make unnecessary work for the applicant/proprietor. However, if the proprietor files AR without an adapted description and does not appear at the OP, he risks that the application to be refused, see e.g. T 109/02, T 1480/12, T 3097/19, or the patent to be revoked, see e.g. T 725/00, T 986/00, T1024/18, should one of those AR be deemed allowable. Neither can the ED or the OD decide grant or maintenance in such a situation. In my opinion, the rapporteur’s comment was fully justified.
To me, the pointed questions of Lord Justice Arnold, can indeed be seen to figure out how this works in practice, but they were actually pointing at inconsistencies in the argumentation of the all the “parties”, proprietor, opponent and EPO’s representatives.
To conclude that Lord Justice Arnold believes that there is not legal basis in the EPC for adapting the description amounts to wishful thinking. After all, the provisional opinion of the EBA has been issued by the rapporteur, but I doubt that it was its personal opinion.
I have reasons to believe that the EPO has understood the pushback, but I cannot believe that the EBA can ignore what the EPC says and which is reflected in all the amicus curiae in favour of adaptation or in the president’s written submissions.
The position of some EDs or ODs can be considered as overly academic, not to say pedantic when it comes to adptation of the description. On the other hand, some EDs and ODs are well known to have ignored Art 84, for production purposes as Art 84 is not a ground of opposition. This discrepancy in the way cases are dealt with by different first instance divisions is certainly a cause of concern. This point has not been really brought formward.
With G 1/24, these times should be over. There is still a rest of patents clambered with inconsistencies which have slipped through before grant, see e.g. the Agfa/Gucci case before the UPC.
It can therefore not be sufficient to simply decide that post grant or post opposition judicial bodies know how to deal with titles issued by the EPO which are clambered with inconsistencies, and like Pontius Pilatus, for the EPO to wash its hands of the matter.