EP 3 435 769 B1 relates to a process for the tailoring of the taste of bread or pastry products
Briel outline of the case
The Od decided that claim 1 as granted lacked IS over the over the PPU “Mélange Léopard”. The same applied to AR1. The patent was maintained according to AR2.
The proprietor appealed.
The board held that claim 1 as granted and of AR1 lacked IS over D1=EP 0 937 402.
in order to maintain the patent in amended form, the board required a proper adaptation of the description.
The proprietor’s point of view on the adaptation of the description
The proprietor took the view that an adaptation of the description was not necessary.
In his view, it is extremely common for a patent description to contain statements corresponding to subject-matter other than what is claimed.
The board’s decision on the adaptation of the description
The board was aware that questions in this regard have been referred to the Enlarged Board of Appeal by the referral decision in case T 697/22 (G 1/25).
However, the parties have not requested a stay of the appeal proceedings pending the EBA’s decision. The board also noted that such a stay is a matter for the board’s own discretion.
There is no legal basis requiring boards other than the one that made the referral to stay proceedings until the decision is issued, see T 1867/22, Reasons 11.2, and T 2116/22, Reasons 2.5.
In the present case, the board considered that the description must be adapted, as the description in its granted version is inconsistent with the claims of AR2.
In particular, it does not reflect the fact that the embodiment in which the flavouring composition may be a liquid composition is no longer claimed.
In this context, the board also noted that it follows the line of case law discussed in point 14.3.1 of the referral decision T 697/22, according to which the legal basis requiring the adaptation of the description to amendments made to the claims is Art 84.
The patent proprietor has proposed an adapted version of the description corresponding to the version titled “Annex 2” in the contested decision.
Specifically, in paragraphs [0010], [0011], [0013], and [0014], the embodiment in which the flavouring composition may be a liquid composition is indicated as being “an unclaimed aspect of the description“.
According to the OD’s decision, the language used was ambiguous and implied that this embodiment “still forms part of the invention, without being claimed”.
The board found that these paragraphs, when read in the context of the other adapted passages and the claims of AR 2, unambiguously indicate that the liquid composition is not claimed.
During the OP before the board, the opponent confirmed that it had no objection to this adapted version of the description.
There is therefore no ambiguity or inconsistency between the claims and the description, and this version of the description can thus serve as the basis for maintaining the patent as amended according to AR2.
Consequently, the description adapted in this way meets the requirement of Art 84.
Comments
The present decision confirms the fact that staying the procedure in view of a pending referral to the EBA is a discretionary decision of the board. Only the referring bord should stay the procedure should it come accross a similar case as that of the referral.
In the present case, neither the proprietor, nor the opponent have requested a stay in view of G 1/25. As the decision to stay is within the discretion of the board, the position of the parties appears prima facie irrelevant.
Whether the opponent has no objection to the adapted description appears as well irrelevant. The maintained patent is not just there for the opponent sake, but for all third parties.
The necessity of adapting the description to the valid claims has, once again, been amply demonstrated. The description should not contain any statement at odds with the definition of the matter for which protection is sought resulting from the plain wording of the claim.
I refer here as well to the decision of the CFI LD Hamburg, UPC_CFI_278/2023, commented in the present blog.
It is to be hoped that G 1/25 will confirm the necessity of adapting the description.
On the procedure
EP 3 435 769 B1 bears the classification units A21D 13/00 and A21D 6/00. The international search has been carried out by the EPO in classes A21D and A23L
EP 0 937 402 A1 bears the classification units A21D 13/00, A21D 13/08, A23L 1/01 and A23L 1/227. The European search has been carried out in classes A21D and A23L.
It is thus surprising that EP 0 937 402 A1 has not been found during the search for EP 3 435 769 B1.
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