EP 3 852 261 A1 relates to a coupled inductors inverted topology.
Brief outline of the case
The application was refused and the applicant appealed.
The case was remitted to the ED with the order to grant a patent on the basis of claims 1 to 14 filed in electronic form on 07.10.2024 and figures 1/15 to 15/15 as originally filed, and a description to be adapted thereto, where necessary.
The following points are interesting
The front page of the A1 document mentions the following priorities:
15.01.2020 US 202062961377 P
13.01.2021 US 202117148322
Paragraph [0001] of the description states:
This application is a non-provisional of and claims priority to U.S. Provisional Patent Application No. 62/961,377, filed January 15, 2020, which is hereby incorporated by reference in its entirety.
Paragraph [0174] of the description states:
Those skilled in the art will readily appreciate that various modifications and changes can be applied to the examples as hereinbefore described without departing from the scope, defined in and by the appended claims, of the disclosure. Further, various modifications should be readily appreciated from the following paragraphs describing various combinations of features set forth in numbered clauses.
Appended to the actual description, there are no less than 26 CLC.
Originally, 15 claims were filed.
The board ordered grant with 14 claims.
Comments
It will be interesting to see what the ED will do with:
- the discrepancy in matters of priorities claimed on the front page of the A1 publication and § [0001] of the description
- the fact that the U.S. Provisional Patent Application No. 62/961,377 is incorporated by reference in its entirety.
- the CLC
I did not check whether the clauses stem from the claimed U.S. Provisional Patent Application No. 62/961,377 which is incorporated by reference in its entirety.
In any case, do not tell me that the CLC clarify the definition of the matter for which protection is sought and that the description does not have to be adapted in spite of what has been said in T 56/21 about CLC in reasons 78, 87 and 105, or in T 438/22, commented in the present blog.
The Guidelines F-IV, 4.4 are fully justified.
It is to be hoped that G 1/25 will put an end on the mess created by CLC and enshrines the alignment between claims and description.
Comments
4 replies on “T 0835/25-14 claims held allowable after appeal-Description with 26 claim-like-clauses ”
A debate about CLC’s is helpful, I think, in the context of G1/25. I’m thinking about the tension between a disclosure of something technical versus a definition of subject matter (for which protection is sought). Classically, the description and drawings disclose point values and ranges within an envelope, that envelope being defined by the claim.
A claim can also make a disclosure whereas a disclosure isn’t a claim, isn’t an envelope.
But what about a description that includes 36 CLC’s? Personally, I do not object to striking them out as a condition of grant because they blur the distinction between i) disclosure and ii) what “defines” the protection sought.
Often, the word “embodiment” appears, in the text that introduces the CLC’s. But CLC’s are not “embodiments” right?
As to description and drawings of an apparatus or method that is not an embodiment within the strict wording of claim 1, I agree that they should not be declared to be embodiments of the claimed invention. But, because of Art 69 EPC, it is not fair, that they be declared to be NOT the invention. Instead, they should be announced as additional disclosures of further methods and apparatuses, neither saying they are the claimed invention, nor that they are not. As to the rest, the courts will manage.
Max Drei,
The present post can actually be seen as a reply to BJ on a different thread. I invited BJ to look at it as he found CLC were fully acceptable and a very convenient way of defining subject matter not yet claimed….
Whether you call CLC clauses, aspects or embodiments is irrelevant. They have nothing to do in a granted patent.
If you announce additional disclosures of further methods and apparatuses, neither saying they are the claimed invention, nor that they are not, you could well be confronted with a non-unity objection, or an objection under Art 84 as the definition of the matter for which protection is sought becomes fuzzy. That courts can manage is not a reason for the EPO to say nothing.
Since the Board ordered grant on the basis of a description adapted to the claims, I would expect the ED to delete all the claim-like clauses in view of the Guidelines, F-IV, 4.4 and F-IV, 4.3.
I deliberately abstain from participating in the debate about the adaptation of the description to the claims. Not because I don’t care either way: I will be honest and say that I find adapting the description to be an unexciting task, to say the least, so I would rather not have to do it. Rather, it’s because I feel everything that could have been said has been said, and now I just want to have the Enlarged Board’s decision and move on.
As to the reference to the US provisional application, normally I would expect an ED to delete the incorporation by reference language in view of the Guidelines, F-III, 8. As to adding the reference to the other priority, I would not necessarily expect that: if the application claims priority from P1 and P2, a statement that the application claims priority from P1 is not literally wrong, and I’d even argue it’s not misleading provided that P1 is the oldest priority application, which it is here.
But neither of those changes are about adapting the description to the claims, so I would not be surprised if the ED simply left the paragraph alone in this specific case.
@ Extraneous Attorney,
My comments on the amendments of the description were certainly of the kind “tongue in cheek”.
It will necessitate the ED to consult the description before issuing the communication under R 71(3), which is to me a direct consequence of G 1/24.
In my opinion the description must be consulted before the search, before examination and before issuing the communication under R 71(3). This does not correspond to the practice established, at least during my active time at the EPO, in certain directorates in which oral instructions were given orally to ignore the description in order to gain time and increase production, as Art 84 is not a ground of opposition.
The aim of the post was to give a clear example of a situation in which CLC can be held abusive.
For the rest we have to wait the OP and the decision of the EBA.
The preceding post was just a summary of the situations in which adaptation of the description might be necessary.