I did not have the time to file a last TPO before the deadline of 17.04.2026, but the present posting could replace it.
I have been following the discussions on the present blog and the arguments brought forward in the various submissions to the EBA on G 1/25 in matters of adaptation of the description.
In its decision, T 697/22, leading to G 1/25, the board has noticed two lines of case law in matters of adaptation of the description.
For the majority of the boards, the description has to be adapted to the claims after those have been amended, i.e. limited, be it in examination or in opposition.
For a minority of boards, the description should not be adapted to the claims. See T 1989/18, T 1444/20, T 56/21 and T 2194/19.In this set of decisions, T 56/21 is the most prominent one. It will be dealt with separately.
Situations in which the description must be adapted
I have come to the conclusion that there exist some situations in which the description, or the claims, have to be adapted:
- When the description gives a different definition of the subject-matter for which protection is thought, whereby this definition could be broader or more limited than that derivable from the plain wording of the claim. See “gathered sheet”.
- When one originally claimed alternative has been deleted from the claim, the description cannot continue to disclose this feature as belonging to the invention claimed.
- When a feature disclosed as optional in the original description is used to limit an independent claim, the optional character of said feature cannot be left in the left in the description.
- When after examination, the claim is limited and originally disclosed some embodiments are not any longer patentable for lack of Novelty and/or Inventive Step. Those embodiments cannot be held in the description as still falling under the definition of the matter for which protection is sought. They do not have to be deleted, but marked accordingly.
- Claim-like clauses are not a notion found in the EPC, neither when it comes to the claims not to the description.
Case 1
In all decisions applying G 1/24, besides T 439/22 of 1.12.2025, the boards have made clear that should the applicant/proprietor wants the definition in the description to be taken into account, the independent claim has to be amended accordingly.
See e.g. T 2027/23 in case of a limiting definition of the matter for which protection is sought in the description, or T 1849/23, when the definition of the matter for which protection is sought is broader in the description. This latter case corresponds to T 439/22.
Manifestly, it should be left to the applicant/proprietor to decide what it prefers, adapting the description or the claims, cf. party disposition and Art 113(2). The choice of the definition of the matter for which protection is sought should not be left to the applicant/proprietor. He has to decide what he wants.
In this respect, I cannot agree with T 439/22, when it merely provides that the definition of the matter for which protection I sought in the description has to be read into the claim. This position is at odds with all the other decisions applying G 1/24. G 1/24 only requires the description to be consulted, but has not said which conclusions have to be drawn from said consultation. The position defended in T 439/22 is that of the German Federal Court, and there is no reason for the EPO to adopt it.
G 1/24 has a direct effect on the search
What is however manifest is that in search, the applicant will be confronted with the broadest possible definition the matter for which protection is thought. Any limitation in the description will be ignored if the claim is broad. Conversely, if the claim is limited, the broad definition of the matter for which protection is thought in the description will be taken into account.
It is left to the applicant when entering examination to decide which definition of the matter for which protection is thought should be taken into account. In opposition, the situation applies mutatis mutandis.
G 1/24 induces automatically an adaptation of the description of the claims
By obliging the applicant to make a choice of the matter for which protection is sought when entering examination, a first adaptation of the description to the claims, or vice-versa, is thereby induced.
It is thus possible to consider that G 1/24 has paved the way of the adaptation of the description to the claims. This adaptation should be finalised with G 1/25, in the other cases mentioned in the following.
Case 2 and case 3
Those cases can be dealt with together.
If the description is not adapted in such a situation, in post-grant or post-opposition procedures, the proprietor can still claim that the claim covers the variant which is not any longer claimed or the optional character of the feature is still valid, in spite of the fact that the independent claim has been limited by this feature.
Such attempts should be nipped in the bud.
This is what Agfa did in the famous Agfa/Gucci case before the CFI-LD Hamburg UPC_CFI_278/2023. In this decision the CFI-UPC considered that “chromatic” should have been deleted at grant, as not being covered by the claim. A similar adaptation was held necessary by the CFI-LD Paris in case UPC_CFI_363/2024.
For legal certainty, it cannot be left to the applicant/proprietor to change the definition of the matter for which protection is sought as he thinks fit. Angora cats should become a thing of the past.
Case 4
This is probably the most controversial issue. Those submissions opposing the adaptation of the description always come up with the danger of added matter, cf. Art 123(2) or extension of scope of protection, cf. Art 123(3).
The best way to deal with the embodiments which are not any longer falling, directly or indirectly, under the definition of the matter for which protection is sought, is not to delete them, but to clarify their situation.
This is best achieved with marking those examples accordingly. This avoids any problems of added matter or extension of scope.
When the applicant/proprietor, on its volition, deletes those embodiments, he can indeed face a problem of added matter. This happened once in the UK.
When the applicant/proprietor, on its volition, deletes those embodiments, he can indeed face a problem of extension of scope of protection. See T 1239/03, or T 439/22. In the latter decision, it is difficult to follow the board, as the board had originally considered that the deletion of a broader definition of “gathered” infringed Art 123(2). This conclusion appears more logical.
Case 5
Claim-like clauses are originally an invention of US applicants. Whether in R 42, defining the content of the description, nor in R43, defining the content of the claims, I cannot see any mention of claim-ike clauses.
Claim-like clauses are also a way of saving claim fees. This is not acceptable either.
There are thus enough reasons for not accepting this artificial creation of some applicants. Claim-like clauses have to be deleted.
When parties submit that the EPC does not contain any legal basis for adapting the description, for the same token. I do not see any legal basis for claim-like clauses in the EPC.
T 56/21, G 1/24 and Art 84
T 56/21 has been used like a lifebuoy in all submissions opposing adaptation of the description.
It can be agreed with T 56/21 that examination of the requirements of Art 84 and the determination of the extent of protection under Art 69 are separate assessments to be carried out, and that Art 69 not relevant to grant proceedings. It is however relevant in opposition proceedings. This has been confirmed in G 1/24.
Art 84 indeed requires that the claims are clear as such, since their prime function is to determine the matter for which protection is sought. As stated in T 56/21, such a clear definition of the subject-matter claimed inherently enables the extent of protection to be determined under Art 69 in case of infringement.
It can be agreed with T 56/21 that it is not admissible to claim subject-matter which is not disclosed in the description. This is however only half the story.
T 56/21 is at odds with G 1/24 and Art 84, when in the catchword, T 56/21 alleges that in examination of a patent application, neither Art 84 nor Rules 42, 43 and 48 provide a legal basis for requiring that the description be adapted to match allowable claims of more limited subject-matter.
This stance manifestly undermines G 1/24 as, in other words it means that when the claims are clear, there is no need to consult the description.
Even T 439/22 goes against this view. “Gathered” can be considered clear, but “gathered” got a broader definition in the description, which led to a lack of N of granted claim 1. That all the other decisions applying G 1/24 do not agree with this stance goes without saying.
Any difference, between claims and description, in the definition of the matter for which protection is sought leads invariably to an inconsistency.
It is thus not correct to consider that the ordinary meaning of the words does not support a requirement to bring the description into agreement with claims intended for grant by deleting or disclaiming subject-matter in the description which is not claimed.
Art 84 as legal basis for adapting the description
In the interest of legal certainty, the public cannot be left in any doubt as to which subject-matter is covered by a particular claim and which is not. The description cannot contain any statement giving a different definition of the matter for which protection is sought, be it broader or more limiting, than that derivable from the plain wording in the claim.
A claim can be perfectly clear as such, i.e. correctly define the matter for which protection is thought, but the description should not at the same time introduce a different definition of the same matter.
In requiring the consultation of the description before deciding on the patentability under Art 52-57, the EBA has opened the way to discover the potential existence of another definition of the matter for which protection is thought.
Not only does Art 84 require the claim to define the matter for which protection is sought, it also requires the claims to be supported by the description. If there exists an inconsistency between description and claims, it is difficult to consider claims to be supported by the description.
It should also be reminded that in order to obtain the grant of the patent or its maintenance in amended form, only the claims have to be translated in the two other official languages of the EPO, other than the language of the proceedings. Full translation of the description under Art 65 is governed by national law or the London Agreement on Translations.
G 3/14 and G 1/25
According to G 3/14, Reasons 55, to the extent that granted claims do not comply with the requirements of Art 84, they “must be lived with“.
This means that the deciding bodies in opposition must construe unclear or contradictory claims to give them a technically sensible meaning in order to be able to assess any ground for opposition. If the opposition is rejected, there is nothing which can be done.
A contrario, it means that if the claims are amended in opposition, and in the interest of legal certainty, even under G 3/14, any inconsistency between claims and description has to be resolved before maintenance in amended form.
With respect of pre-existing inconsistencies, I refer to T 447/22, commented in my blog. This problem has to be resolved by the EBA.
As far as it is necessary to adapt the description in opposition, I refer to T 1695/21, Reasons 3.2, also commented in my blog. It is interesting to note that in this decision, the board held that the non-adaptation of the description was in breach of Art 84, support of the claims by the description.
In T 866/24, also commented in the present blog, the board complained about the tendency of EDs not to examine dependent claims as to their clarity in relation to the independent claim, they depend upon. At the time, I considered that G 3/14 should be revised.
How courts interpret the claims under Art 69 is out of reach of the EPO
What courts, national or supranational, do with the description as amended when it comes to the interpretation of the claims under Art 69 is not within the reach of the EPO and its boards, and this is what G 1/24 has clearly stated.
National or supranational judicial bodies, are entitled to ignore what the amended description says, especially when some embodiments are not any longer falling under the definition of the matter for which protection is sought.
In this respect, it is certainly preferable not delete embodiments not any longer covered by the claims. They can remain in the description, but their status be clarified accordingly.
Whether a national court or the UPC disregards said clarification is its good right, cf. CFI-LD Paris, UPC_CFI_358/2023, Reasons 41.
In the Agfa/Gucci case, the CFI-LD Hamburg was not fooled by the not adapted description, and held that the claim was limited to “achromatic”.
The EPO can notice those views, but cannot change the way courts act when interpreting claims.
It is certainly not a reason to sit back and do nothing in matters of adaptation of the description.
The EPO cannot be compared to any national granting authority
The duty of the EPO is to deliver a title in which there can be no discussion about the definition of the matter for which protection is sought. It is as simple as this and, following G 1/24, G 1/25 should be the way to establish a bidirectional link between description and claims. All the rest appears irrelevant.
The EPO has a different position than any national granting authority in which a subsequent court can, in subsequent procedures, iron out any inconsistencies between claims and description left at grant.
For historical reasons, and due to the will of the legislator, the EPO stops with granting or maintaining a patent opposed. It also has, contrary to any other national granting authority, boards of appeal within the EPO structure,
The boards of appeal have, within the EPO, the task to judicially review decisions of EDs and ODs. This is a characteristic which makes the EPO unique among other granting authorities.
The way the patent is used or interpreted in subsequent procedures is beyond the EPO’s reach.
It is certainly not a reason to sit back and do nothing.
Comments
15 replies on “Summary of situations in which an adaptation of the description appears to be necessary”
In an ideal world, we would enjoy “legal certainty”. But, in the EPC, uncertainty (thanks to Art 69) is a built-in feature, not a bug. We have to live with it, however much we might abhor it.
In an ideal world, the subject matter for which protection is sought would be identical with the “scope of protection” and “the invention”. Imagine the inventor’s inventive concept as a balloon (A) and each illustrated embodiment within the specification as a point value within the balloon. Now think of allowable claim 1, that is, the definition of “the subject matter” not only “sought” but also delivered to the reader of the patent by granted claim 1. That’s Balloon B. Normally it’s distinctly smaller than Balloon A and concentric with Balloon A. So, one or other point value might lie in the space between Balloon A and Balloon B.
And then think of the “scope of protection” as yet another balloon, Balloon C. Where it is in relation to A and B we don’t know until the court examines the patent under Art 69 EPC. It will (usually) be larger than B, likely the same or smaller than Balloon A but fixed after mulling over what was the inventor’s true “contribution to the art”.
Now look again at each one of those point values again. Are there any that are within Balloon A but outside Balloon C? Are there any that lie outside the “scope of protection”? I don’t know. Nor does anybody. For this reason, I baulk at amending my patent application to declare that all embodiments found in the space between Balloon A and B are NOT the invention. It strikes me as bizarre to declare that an embodiment within the “scope of protection” is nevertheless NOT an illustration of the subject invention.
Because legal certainty is impossible to achieve, I say that the EPO has to manage the nature and degree of (inevitable) uncertainty faced by the UPC, as best it can. Where the degree of uncertainty can be reduced, then reduce it but where uncertainty is not reduced, refrain from demanding yet another text amendment, because every text amendment is a litigation multiplier.
Obviously, if the description declares that “in this document the word “circular” means “oval” and the claim recites “circular” then the claim or the description, or both, must be amended before the case can proceed to grant. But labelling as NOT the invention all embodiments found between A and B is, for me NOT going to increase the UPC’s level of legal certainty. Indeed, I see it as increasing the degree of difficulty which the EPO sets the UPC in i) its task of defining the location of Balloon C and ii) deciding whether the prosecution amendments comply with Art 123 EPC. If I were a UPC judge tasked with deciding on both infringement and validity, I think I would prefer to have in front of me the A publication, and as little amended as possible.
Hence, Daniel, we agree to an extent but disagree to an extent. I’m curious, what others think.
Max Drei,
I can agree with you that Art 69 does not induce “legal certainty”, especially since there can be direct/indirect infringement, or even infringement by equivalent. Art 69 is beyond the reach of the EPO, besides when it comes to the application of Art 123(3).
What is at stake here is legal certainty about the matter for which protection is sought, and not legal certainty that a third party might or not infringe a patent.
This is nothing for the EPO to give certainty about.
If there is no legal certainty about the matter for which protection is sought, then we can forget filing any claims and remain with the French system valid from 1844 until 1968. There were no claims, and the proprietor discovered its patent on the day of the potential infringement.
In the real world, the subject matter for which protection is sought is by no means identical with the “scope of protection” and “the invention”, see above here.
Indeed we do not know where balloon C is in relation to A and B until a court examines the patent under Art 69 EPC.
I have never said that an embodiment is or is not to be considered within the “scope of protection”. The EPO is not there to define the boundaries of the scope of protection as ascertained in G 1/24.
I have only said that what is important, is to determine is whether some embodiments fall under the definition of the matter for which protection is sought or not.
If the balloon C lies somewhere between Balloon A and B it prima facie falls under the definition of the matter for which protection is sought with balloons A and B. Where is the problem?
For the surplus, the day Art 84 is amended so as not requiring support of the claims by the description, then I will agree with you that we can stay with the A publication, and rely on file history to ascertain the scope of protection under Art 69.
Art 84 does not only work in the direction claims-description, but also in the reverse direction. Otherwise in your example in which “circular” means “oval” and the claim recites “circular”, then the claim or the description, or both, would not have to be amended before the case can proceed to grant.
I do however agree with you that when it comes to added matter, the reference is the originally filed application.
This is however not a reason sufficient to stick with the A publication when claims have been limited during examination.
Daniel thank you for your valient efforts to answer my comment. For me now to reply would add more words but no further clarity for those following this thread. You see, I simply don’t know how to make my original point any clearer. So I will wait and see if anybody else joins in, to stimulate my thinking, and yours. I do hope someone does
Max Drei,
I can agree that what had to be said has been said, and it would not help to have a further round. We will now have to wait for the OP and the decision of the EBA. It will certainly be one of the most awaited decisions of the EBA.
Let’s just hope that the decision will be based on sound legal grounds and not be merely political to please some people or parties. G 3/19 with its dynamic interpretation of the EPC, or G 1/21 with its limitation to OP before the boards, in spite of Art 116, have not left an overwhelming souvenir.
Yes indeed, Daniel. Sound legal grounds, EBA please. Stick to the EPC. No need to mess with it. Don’t succumb to the power of the lobby industry. I agree with all of that.
BTW, I have now mailed you the cartoon, of the judge enjoying himself milking the intractable cow. I hope it gives you a wry smile and perhaps a chuckle too.
My take on your cases:
Case 1, 2 and 3: I agree it would be better if an amendment was made. But, considering that we have Art 69 nobody can reasonably ignore the description anyway in determining the scope of protection, so there is no NEED for amendments. Your cases 1, 2 and 3 (well, also 4 and 5 actually) represent, in my view, sub-optimal compliance with the EPC, but not non-compliance.
You are right of course that attempts by the proprietor to misuse the the description to overrule explicit claim language should be nipped in the bud, but the courts are fully competent to do such bud-nipping.
Case 4: There is no requirement at all in the EPC to mark embodiments as, yes or no, according to the invention. The applicant is perfectly free to describe a number of examples or embodiments without flagging them as according to the invention or not. (As long as R42(1)(e) is complied with, of course)
If there is no requirement to use a flag at all, it is difficult to see why a ‘correct’ flag must be compulsory.
Also important, IMHO, is that the determination of whether an embodiment is, or is not, according to the granted claims, is an OBJECTIVE evaluation. The opinion of the applicant is just that, an opinion, without any higher status than the opinion of somebody else, so that it is irrelevant whether the applicant considers an embodiment to be according to the invention or not. If the applicant was, in retrospect, wrong in flagging an embodiment as ‘according to the invention’, well, then that’s just a mistake without any effect on the claims.
Case 5)
When you say that you do not see any legal basis for claim-like clauses in the EPC, I would like to bring forward the general principle that the applicant is free to present his application any way he likes, and that it is up to the EPO to decide whether it meets the requirements as specified in the EPC. The absence of the notion ‘CLC’ in the EPC is therefore not relevant.
If something is unmentioned in the EPC, it is not, in general, considered to be a reason to state that this something is NOT allowed according to EPC. Why should this be different for CLCs?
CLCs are not a way of saving claims fees, simply because they are not claims. They are (at least this is how I use them) merely pre-emptive defenses against potential future Art 123(2) problems, eg in case a divisional application may be desired in the future, or in order to solve a disputed ‘grey-zone’ clarity issue.
I refer to the statement made in the TPO of FICPI, which states the matter perfectly: ‘the requirement of deleting claim-like clauses is unjustified, since features or embodiments included in the description cannot be confused with the claims, irrespective of the form in which these features/embodiments are presented in the description, provided that there is no explicit reference to the claims.’
Important here is in particular the phrase ‘features or embodiments included in the description CANNOT BE CONFUSED with the claims’. It is unrealistic that CLCs can be confused with granted claims, precisely because there is a separate section called ‘claims’ in a patent, and CLCs therefore have a different status.
We can not base a requirement to amend the description on a purely hypothetical situation that a judge is incompetent to distinguish CLCs from claims.
Of course, CLCs can usually be deleted without big consequences, precisely because they are not claims. But then I refer by analogy to what I said in relation to cases 1, 2 and 3: CLCs remaining at grant are certainly sub-optimal but nowhere near severe enough to cause a non-complicance with the EPC. They are ballast, but inconsequential ballast, in other words.
@ BJ
I first refer to my reply to Max Drei.
Second, I fundamentally disagree with you that because of Art 69 we should leave the description as filed unamended. You make a sweeping statement, but you ignore the fact that even the UPC considers necessary to expunge from the description features which are not any longer falling under the claims.
That the UPC can ignore such amendments is also an acquired fact. That courts are fully competent to do bud-nipping is not at stake. But will all courts in the member states and the UPC competent to discuss the fate of a granted or maintained patent carry-out such bud nipping or disregarding embodiments not any longer falling under the definition of the matter for which protection is sought? This is not at all guaranteed. The EPO cannot rely on what courts might do or not.
I would like to know where you put the line between sub-optimal compliance with the EPC and non-compliance with the EPC. This is a statement which manifestly lacks clarity. I doubt the EBA would buy such an argument.
I merely repeat that this is certainly not a reason to sit back and do nothing.
As far as CLCs are concerned, it is not because some TPO or FICPI consider that CLC should be maintained that the EPO should adopt this position.
If there is at filling, subject-matter contained in CLCs but not in the actual description, I see no reason why it could not be integrated in the actual description during prosecution. I also invite you to look at the comments of the president of the EPO in points 83 to 88. There are ample reasons for not accepting CLCs, which I do not want to repeat here. Point 88 is particularly eloquent in this respect.
If you want your point of view to be considered seriously you should avoid any statement of the kind “sub-optimal compliance with the EPC but not non-compliance with the EPC”.
You wrote: ‘I fundamentally disagree with you that because of Art 69 we should leave the description as filed unamended’
I don’t think that’s what I said. Because of Art 69, nobody can ignore the description when determining the scope of protection. Therefore it shouldn’t make a difference whether a definition of a word from the claims is left in the description or is moved to the claims. The scope of protection is still the same.
I am not saying we SHOULD leave the description as filed unamended, just that in most cases it doesn’t matter whether we amend it or not. And because it is expensive work, and because there is always a risk that inadvertently some scope of protection is lost that is rightfully the patentee’s or a risk of a 123(2) problem, my default position is: no amendments are preferable to amendments, amendments only if their is a real hard contradiction.
You also wrote ‘that the UPC can ignore such amendments is also an acquired fact. That courts are fully competent to do bud-nipping is not at stake. But will all courts in the member states and the UPC competent to discuss the fate of a granted or maintained patent carry-out such bud nipping or disregarding embodiments not any longer falling under the definition of the matter for which protection is sought? This is not at all guaranteed. The EPO cannot rely on what courts might do or not.’
Are you saying that you doubt that the courts will always carry out their work properly? If that is the case, it is not the EPO’s problem.
The EPO can not take on the burden that others in the chain fail to do their duty, that would be wholly unreasonable.
You also wrote ‘I would like to know where you put the line between sub-optimal compliance with the EPC and non-compliance with the EPC. ‘
There is no hard line. Like we have the theoretical concept of a skilled person, we can also have the theoretical concept of the reasonable and competent judge. If the theoretical reasonable and competent judge would interpret the claims correctly without amendment to the description, there is no need to amend.
For instance, in case a ‘discrepancy’ can be easily explained based on prosecution history (claims at filing vs granted claims) there is in my view compliance with the EPC, but indeed sub-optimal compliance. But a hard boundary I can’t define.
You also wrote: ‘If there is at filling, subject-matter contained in CLCs but not in the actual description, I see no reason why it could not be integrated in the actual description during prosecution. I also invite you to look at the comments of the president of the EPO in points 83 to 88. There are ample reasons for not accepting CLCs, which I do not want to repeat here. Point 88 is particularly eloquent in this respect.’
The comment of the president make perfect sense, and are indeed eloquent, but ONLY under the assumption that CLCs are intended to be disguised claims.
IMHO they are clearly not. They are simply the most economical and clear way of defining additional subject matter that is not at present claimed, at the same time avoiding any risk of art 123(2) problems if it needs to be claimed in the future. CLCs are therefore simply a very conventient way of defining subject matter, not yet claimed.
Of course we can usually delete them or integrate them in the description, and then there is no harm done. But make it obligatory? For me that is a step too far, I see no requirement in the EPC to do so. As long as they can’t be reasonably confused for claims (and ‘CLCs follow the same format as claims’ is in itself insufficent to cause confusion IMHO), CLCs are within the discretion of the applicant, and may end up in the granted patent without harm.
Of course, if you start from the premise: ‘CLCs can cause confusion’, then they need to go.
@ BJ,
We are in presence of two requirements which each have their own purpose. I fear that you confuse the two.
Art 69 is to determine the scope of protection in post grant proceedings and Art 84 is to define the matter for which protection is sought before grant. Hence, Art 84 applies before grant, Art 69 after grant.
Therefore it makes a hell of a difference whether a definition of a word from the claims is left in the description or is moved to the claims. The scope of protection is NOT the same, as the definition of the matter for which protection is sought is then different or can be interpreted differently.
In presence of an inconsistency/discrepancy between claims and description, the proprietor can choose the definition which is best for him depending on the circumstances, validity or infringement. You seem also to have forgotten that only claims have to be present in the three official languages at grant or when the patent is mintained. The description does not have to be translated. It is thus of utmost importance that claims and description are aligned on each other. It is a question of legal certainty.
What I said is that the way the courts interpret the claims under Art 69 is beyond he reach of the EPO. I have never raised any doubt about the proper working of the courts in post grant proceedings. They can indeed iron out discrepancies between claims and description left at grant, but this is not necessary if the EPO does its job properly. The EPO cannot be compared to a national granting authority acting in relation with a national court.
As far as CLC are concerned, by looking at decisions I found a case, T 0835/25, which shows the best why CLC are a nuisance. I have published a post which I invite you to look at.
CLCs are NOT a very convenient way of defining subject matter, not yet claimed. In T 0835/25, claims as filed were limited to 15, but there were 26 clauses in the description! This shows that CLC are also used to save on claim fees.
The case I found confirms my reservations: ‘CLCs can cause confusion’.
What is important here is that you seem to confuse some pragmatism with rule of law. What matters is not what can be convenient and/or easy and cheap to realise, but what the legal rules require. I can only repeat that your argumentation is by no mean compelling and cannot be taken seriously. It is much too fuzzy.
Max Drei, 28.04.26
I did indeed got the cartoon. I apologise not answering earlier.
The contrast between the ragged litigants and the well fed judge and the lawyer milking the cow is striking.
It is for me a perfect illustration of what is going on at the UPC, even if the UPC was still far away when the cartoon was published.
When one looks looks at the procedural costs and the costs of representation before the UPC it makes you feel dizzy- The costs are even higher in view of the RoP UPC which brought an urgency which was not at all necessary.
It should not be forgotten thtat the RoP were concocted by a group of self-coopted lawyers helped by very compliant judges now sitting at the UPC. The RoP were decided after the UPCA was signed and ratified by a number of countries. I do not wonder why.
re “Claim-like-clauses” (CLC):
Daniel, I’m genuinely interested in your definition of what constitutes “CLC”. Unfortunately, the Guidelines are not very helpful in this regard. They state:
“‘Claim-like’ clauses are clauses present in the description which, despite not being identified as a claim, appear as such and usually comprise an independent clause followed by a number of clauses referring to previous clauses. These claim-like clauses are usually found at the end of the description and/or in the form of numbered paragraphs, particularly in divisional or Euro-PCT applications where the original set of claims from the parent or PCT application is appended to the description.”
Reading this very carefully, the Guidelines define CLC as “clauses present in the description which, despite not being identified as a claim, appear as such”. When does a part of the description appear as a claim even though it’s not identified as such? It can’t be tied to the structure of independent clauses followed by dependent clauses, or by the use of numbers, nor by the clause being at the end of the description – all these characteristicts are referred to as “usually” present, implying that CLC exist which do not fulfill them. In other words, these characteristics can’t be constitutive for CLC. What then is? I don’t know.
The Guidelines seem to be drafted in a way that pretty much anything an Examiner wants deleted from the description could be identified as a CLC, and the need for deletion justified by the Guidelines. It might not happen often, but I’ve had cases in which the ED argued that description in the “SUMMARY” which paraphrased the claim, as is common practice, consituted CLC and therefore demanded deletion thereof. That’s one of the many reasons I don’t agree with the Guidelines in this respect.
First, quite why a new commenter has chosen max vier as their name is beyond me. I disassociate myself from them. I don’t like M4’s question to DXT. I see it as mischief-making, unhelpful and insincere. Everybody having a mind willing to understand can recognise a CLC when they see one, and can understand what the GL’s are saying. I would encourage DXT to ignore the question M4 puts to him.
The real point is that in the eyes of an over-zealous EPO Examiner at the moment, pretty much any text they don’t like can be labelled as an “inconsistency” and any inconsistency can be argued to render the claim unclear and can in that way be asserted to be an offence against the provisions of Art 84, EPC. I call upon the EBA in its G1/25 decision to rein in any such over-keen Examiners and tell us with reason and provision the point at which an inconsistency invalidates an otherwise clear claim.
I assure you that my question is sincere and that I would appreciate Daniel’s insights on the matter. I disagree with him on many things, but his answers are always helpful in understanding his line of thought which seems representative of the opinion of many currently active examiners. Being able to at least follow the examiner’s thoughts, even if not sharing their assumptions or conclusions, is crucial in our line of work.
I’m also sincere when I say that, based on the guidelines, I don’t know what defines a CLC. If the definition provided in the guidelines was a claim, we’d rightfully expect an objection for a lack of clarity because it doesn’t allow to clearly distinguish between what is and what isn’t a CLC. Maybe Daniel has a clearer definition he works with, and if so, I’d appreciate to hear from him on the subject.
@ Max Vier
That my views are not shared by quite a few people does not worry me in the slightest. I have reasons for my view, but I would not pretend that I know the “truth”. Some positions are however such that I cannot not take position.
My line of thought results from my active time at the EPO and my experience, especially in looking at lots of decisions of the boards and training people for the (old) EQE. I am certainly interested is patent law as such, but procedural aspects are also very important to me.
Whether my statements represent the opinion of many currently active examiners is a different matter. I have left the EPO 14 years ago and a lot of things have certainly changed there, foremost the push for production of the examiners, be it in examination or opposition.
I would say that the Guidelines have changed in view of the case law of the BA, and more of the EBA, but the fundamentals, are still valid. I might have had the advantage to have been in Munich from the beginning of examination, and know why certain things went in the Guidelines in the early days. Devising the Guidelines was a Herculean task, but in my opinion those present at the time had a real vision on how the EPC could be interpreted in the absence of any case law. A great performance!
My answer on the CLC might look oversimplifying, but with some experience it is not difficult to spot them.
In any case if an ED or OD raises an objection, it has to fully justified. Anything else is not good enough.
Max Drei,
I was also surprised with the new pseudo “Max Vier”. I can reassure you, it corresponds to a real person being also a representative before the EPO. I checked and the pseudo was therefore acceptable for me. It was in accordance with the criteria I gave in one reply to F. Hagel. For you it is not the same, what I fully understand..
I had thus no reason to delete the comment and decided to reply, although I confess, that CLCs are not difficult to detect.
If an ED considers paraphrasing the independent claim a CLC, then something went wrong during its training or it is pure pedantry. I nevertheless say that the paraphrasing has to be such that it does not alter the definition of the matter for which protection is sought derivable from the claim.
I do agree with you that it is important for the EBA to come up with rules as clear as possible. However, I maintain that with a bit of common sense and a mind willing to understand, lots of problems can be solved to the satisfaction of most of the parties involved.