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T 1426/21 – Claim-like clauses in the description

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Generally speaking the application relates to injection pens to be used by diabetic patients without requiring the help of medically qualified persons.

Claims 1-11 as granted relate to an assembly for drug delivery and claim 12 as granted relates to a drug delivery device comprising the assembly of at least one of the previous claims. There is no more definition of the drug delivery device in the claims.

Brief outline of the procedure

In the description as filed, the passage bridging pages 10 and 11 read as follows:

The “aspects” actually related to details of the drug delivery device which was only very broadly defined in claim 12.

In the communication under R 71(3) the ED deleted the claim-like clauses in the text intended for grant.

For the ED, those claim-like clauses were not allowable under Guidelines F-IV, 4.4

Moreover such clauses do not comply with R 42, given that they do not belong in the description, as explained in decision T 490/90 points 5 and 6.

The applicant did not agree with the text proposed for grant as it was of utmost importance for it to keep the claim-like clauses for post grant national procedures.

The application was refused under Art 84, since “the MR and the AR1 and 2 comprise claim-like clauses on pages 10a to 12, which are different from the set of claims.

The applicant appealed the refusal.

In appeal AR4 was made the MR and the board found this request allowable.

Since the request was considered allowable, OP were cancelled, and the decision taken in written proceedings.

The board’s position on claim-like clauses

In its communication pursuant Art 15(1) RPBA20, the board indicated that the claim-like clauses in the description of the MR, and AR1 to 3 were not consistent with the claims which led to the claims being not supported by the description pursuant to Art 84, second sentence.

The original MR when entering appeal read as follows:

AR1 when entering appeal reads as follows:

AR2 when entering appeal reads as follows:

AR3 when entering appeal reads as follows:

AR4 when entering appeal, later the MR reads as follows:

The board held that pages 11 and 12 of the description of the new MR refer to “aspects” to which “the present disclosure may further relate“. In the application as filed (see pages 11 and 12), the “aspects” are numbered 1 to 7.

As compared to the application as filed, pages 11 and 12 are amended such as to include the features of aspects 2 and 3 (option i), and of aspect 4 (option ii)) to aspect 1.

The remaining “aspects” 5 to 7 have been merely renumbered as aspects 2 to 4.

This request was deemed allowable by the board.


It is actually possible to consider that claim 12 as granted lacks clarity as the drug delivery device can have any form provided it contains the claimed assembly. It should thus not have been granted.

The board made clear that claim-like clauses, like in the MR and AR1, were not consistent with the claims.

There is nothing much to say but to approve.

It is abundantly clear that the claim-like clauses in the MR and AR 1-3 are not allowable. They are as such unclear and cannot be said to support the claims.

When thinking about the reason why the applicant in the present case was keen to add claim-like clauses in the description, one possibility which comes to mind is that he actually wanted to save claims fees. The thrust of the claims 1-11 was in the assembly and not in the drug delivery device which was barely defined in claim 12 as explained above.

It is manifest that selling a drug delivery device, i.e. a pen with or without insulin, brings more money than just an assembly for an insulin pen. It was thus clear why the applicant wanted to be able to possibly claim some protection for the pen as such. Adding proper claims to the pen after claiming the assembly for the pen would have been the better solution.

It is another interesting use of claim-like clauses, which I never came across even when this type of devices were dealt with in a previous directorate of mine.

In my opinion it could have been possible to still refuse the application under Art 84, second sentence, support of the claims. After all, the applicant wants protection for something he is not prepared to cover with claims and rather “hides” some “aspects” in the description.

Should this use of claim-like clauses for saving on claim fees increases, I am not sure that the EPO will remain silent. After all, those claim-like clauses create more work without proper retribution. This was actually the reason d’être for introducing claims fees.

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43 replies on “T 1426/21 – Claim-like clauses in the description”

Max Dreisays:

Daniel, again, thanks. What an interesting case.

English is my native language and, usually, I have no problem with the English in a TBA decision and certainly no problem either with your write-ups and comments. But this time, I have to say that, at least on first reading, I am having difficulty with both. As has often been pointed out, when a written document is not entirely clear, the reason might be that the writer’s thoughts are not crystal clear. I wonder if that is the case here.

I have difficulty with the word “aspect”. Aspect of what, I ask myself. Answer: of the invention. So when the claim-like clause survives, under the rubric “aspect”, I am surprised that a Board sees no inconsistency, no offence against Art 84, EPC.

Conversely with “disclosure”. For me, that word is neutral. The choice of feature combination that will go forward to grant in claim 1 does not affect the “disclosure” of the A-publication. In my opinion, such disclosure can remain in the B publication without obfuscation of the meaning, the scope, the ambit of allowed claim 1. The accusation that it results in an “inconsistency” between the description and claim 1 is, in my opinion, not justified or fair to the inventor or in the interests of justice in post-issue proceedings under Art 56, EPC, where the totality of the disclosure of the application as filed is decisive to the enquiry into technical effects, and so to the outcome of the patentability enquiry.

Wasn’t it Proof of Pudding, in conversation with you about what Art 84 means, who flagged up the difference between i) disclosing what is claimed and ii) claiming what is disclosed. If there is in the description of the B publication something “disclosed” but not within the strict literal meaning of the words of claim 1, is that a reason to refuse the application for failure to comply with Art 84, EPC? The way I read this Decision (bearing in mind that I don’t understand it) this Board would answer the question in the nagative. What do you say?

Avatar photoDaniel X. Thomassays:

Dear Max Drei,

My reply to your question at the end is that the board would most probably answer the question by the negative (I do however refuse to speak for the board).

In the case at stake, what was in the MR and in AR 1-3 had clearly no relation with the claims as granted, hence it was not allowable.

I do agree with you that the decision does not show a convincing, and even less, a compelling argumentation.
When reading the decision, I was also surprised that the board saw no inconsistency and no offence against Art 84, second sentence. An objection under Art 84, second sentence, could have been justified.

I would allow myself to say that, as far as procedural efficiency is concerned, the board weeded out what was manifestly inconsistent, and decided to accept what could not be manifestly considered inconsistent. Refusing as well AR4 would have meant to draft a lengthy decision. The board avoided the extra work.

A similar attitude of the same board is perceivable in T 1371/20. Strictly speaking, the amendment of the name of the appellant was way too late and the board should have dealt with a request in restitutio. As the appeal would not have been successful anyway, the board saved a lot of energy and argumentation to turn a blind eye to the non- respect of the time limit, and to dispose quickly of the file.

I beg to differ with you that the totality of the disclosure of the application as filed is decisive when it comes to an amended claim under IS. Under added matter yes. When it comes to added matter it is standard practice to look at the A publication, or better at the originally filed documents. Why should it be different for IS?

I can agree on one point: the choice of feature combination that will go forward to grant in claim 1 does not affect the “disclosure” of the A-publication. Where I differ is that such disclosure cannot remain in the B publication. It obfuscates the meaning, the scope, the ambit of allowed claim 1. This is basically the function of Art 84, second sentence. Nothing withholds the national judge to look at, or the proprietor to submit the A publication.

This can be the case in the example with Fig. 6 you have given in IPKat. If what is in Fig. 6 really equivalent to what is claimed, why was it not claimed as such? There is nothing to withhold an applicant/proprietor to do so, but some claim fees. I neither said it was simple or baldly asserted that is “what is not claimed is disclaimed. What I have tried to bring over, is that there has to be a coherence between what is claimed and disclosed in the B publication. To insure this coherence, we have Art 84, second sentence.

I do not see how it could be unfair or unjustified to the inventor or in the interests of justice in post-issue proceedings under Art 56 to make clear that what was originally optional is not any longer optional once the prior art, which can be different from that of inventor, has led to a limitation of the claim.

If there is in the description of the B publication something “disclosed” but not within the strict literal meaning of the words of claim 1, it is a reason to refuse the application for failure to comply with Art 84, second sentence. This was manifestly the case with the MR and AR 1-3. In order to allow readers to see what was actually disclosed in the MR and AR 1-3, it took the bother to show how strange the various formulations chosen have been.

I can agree on a lot with you, but on the question of Art 84, second sentence, I am not a position to agree with you. I regret it, but I cannot change it.

As far as Proof of the pudding is concerned, I have said what I have to say. Basing a refusal of adapting the description on rather exceptional circumstances is neither convincing nor compelling.

Max Dreisays:

Hey Ho, Daniel. Off we go with another round of correspondence. I like to think that it is not all futile and that with each successive exchange we gain something.

Instead of pemetrexed, let’s think about the depilator case (but in the light of the later pemetexed case and what it shows about drafting patent applications in the area of intermediate generalisations).

Suppose the original claim was for any motor-driven rotary hair puller, the drawing showed the U-shaped spiral spring and the description included “disclosure” that i) the spring works through the opening and closing of hair-receiving gaps, and that ii) hair-pulling element need not be steel but could be of other materials, even rubber. It turns out that there is close prior art and the only claim that can get allowed is the “spiral spring” claim. The ED deletes the disclosure of other materials and the pragmatic Applicant hesitates and then reluctantly accepts it.

After grant comes the infringement with the U-shaped slitted solid rubber rod. The court must decide whether it is an infringement by equivalent.

What preoccupies me is that the outcome in any such future case might depend on how fiercely the EPO insisted on strict “conformity” as a condition of grant.

Of course, as you say, the inventor need only draft optimally, and react optimally to whatever the ED demands by way of conformity (like: rubber is NOT the invention). But I would prefer that the EPO jurisprudence recognises that in the real world optimal drafting and prosecution is not normal, unfair always to expect as a given. What should be normal is a recognition in the EPO that the legislator wants that equivalents be found to infringe and so requires that the EPO grant patents which enable courts (or those giving their clients freedom to moperate opinions) to decide cleanly what is an equivalent. I think that it is the description as filed which is the best starting point for the enquiry into what is “equivalent”.

Obsessive efforts to achieve perfect “conformity” can be (in my opinion) “Too much of a good thing”, somerhing that ends up doing more harm than good. As the age-old saying goes “moderation in all things”.

Avatar photoDaniel X. Thomassays:

Dear Max Drei,

It is always difficult to discuss hypothetical cases and you know that I am reluctant to do so. I will nevertheless try to reply. You are thinking of the famous “Improver” or “Epilady” case.

Should in view of the prior art, the only patentable embodiment be the metal spring, then my conclusion is the following: since the claim had to be limited to a spring another material for the hair puller is, in principle, not any longer open to patentability by equivalence. In this situation, leaving rubber as material might not any longer be an option left for the applicant to maintain in the description.

A good drafter would have set up a rather broad functional independent claim 1 with as claim 2/1 the first embodiment=the spring and as claim 3/1 the second embodiment=the rubber roll. If the only way to obtain a patent is to limit the claim to the spring, then the spring is not any longer optional. It then really depends on the prior art whether the rubber can be maintained or not.

The likelihood that, in view of the prior art, rubber has to be deleted, as not falling under the claim, is for me rather high. It would however not hinder the applicant to file a divisional with rubber.

As I do not have the faintest idea of what the prior discloses, I cannot say more.

The real situation was that rubber was never disclosed, but only the spring. In most jurisdictions the rubber was considered an infringement by equivalent means. In the UK it was not considered infringing, which for me was difficult to understand.

But this is not the starting situation in your example, hence the difficulty to deal with it. As I said in my precedent reply, nothing hinders the proprietor to submit the A publication to the national judge. If there was a question of added matter he would have no other possibility. Why should it then be different for IS?

Whatever the national judge might decide in matters of equivalent is beyond the reach of the EPO and its boards of appeal.

You claim that the EPO jurisprudence should recognise that in the real world optimal drafting and prosecution is not normal, unfair always to expect as a given. I first do think that the boards are very much aware of this, and not giving them the credit it to take into account is also unfair. Secondly, as I have said to Proof of the pudding, you cannot base a general rule on exceptions.

I agree that moderation is best, but moderation is here confronted with Art 84, second sentence. The day it will be removed, then I will fully agree with you.

francis hagelsays:

Dear Mr Thomas,

I take the freedom to comment on your answer to Max Drei. I cannot understand that you keep referring to the removal of the 2nd sentence of article 84. Nobody requests such a thing.

Max Dreisays:

Dear fellow correspondents. Can it be that in its French text, the second sentence of Art 84 EPC means something slightly different from the English text. The English word “support” is ambiguous. It can mean “substantiate” but it can also mean “corroborate”. I am taking the first meaning but I suspect that M. Thomas is taking the second meaning. Is that because he is basing himself on the French text? Is that why he mistakenly supposes that Max and F. Hagel are lobbying for the second sentence of Art 84 EPC to be re-written?

francis hagelsays:

Dear MaxDrei,

« Too much of a good thing » : the equivalent saying in French is « le mieux est l’ennemi du bien » (literally translated : the best is the enemy of the good). This perfectly applies to the over-emphasis of the EPO on adaptation of the description. The harm is real :
– poison pill if the amendment is inadmissible new matter
– legal uncertainty as to which « description » must be relied upon in applying Art 69 and the equivalents : the original description or the amended description ?
– opportunity for the abusive arm-twisting practice by the EDs of making amendments at the Rule 71(3) stage
– need for third parties to compare the original and the amended descriptions
– additional costs, delays and uncertainties.

I do agree with you that in Art 69, the interpretation of the claims should take into account the description of the original application, not the amended description, even though a literal reading of Art 69 could support selecting the latter. I think only the choice of the original description is consistent with the fact that the assessment of validity is based on the prior art and common knowledge of the skilled person at the filing date.

francis hagelsays:

I have strong doubts that claim-like clauses inconsistent with the claims can help a patentee in infringement proceedings. Since claim-like clauses tend to be devoid of technical teaching, they cannot likely be used to influence the assessment by a judge of how the skilled person could understand the claims.

In addition, subject matter which is disclosed in the original description but not covered by the claims of the granted patent should be presumed to have been given by the patent owner to the public domain. After all, this is the patent owner’s own decision. And the patent owner has a benefit in terms of freedom-to-operate from the public disclosure of this subject matter.

If the patent owner had the opportunity to recapture the subject matter disclosed but not claimed in the granted patent in infringement proceedings, at any time until the patent expiry, this could be equated to giving the patent owner the benefit of a grace period for the entire life span of the patent.

Avatar photoDaniel X. Thomassays:

Dear Mr Hagel,

I have taken due note that you commented my reply to Max Drei.

If the description should not be amended in order for the claims to be supported by the description, it boils down to ignore Art 84, 2d sentence. In French CQFD!

What else is there to say?


To MaxDrei: your comment piqued my interest, so I had a look at the French version of Art. 84. Here it is:

Les revendications définissent l’objet de la protection demandée. Elles doivent être claires et concises et se fonder sur la description.

To me, the second sentence there does not seem to have a markedly different meaning from the English wording. “se fonder sur” seems to approximate to “rely on” or “be based on” – with the disclaimer that I am not a native speaker of French. There is perhaps a slight difference in nuance compared to the English “be supported by,” but not one that I can see would justify such a marked difference in opinion as to what it actually demands of the relationship between description and claims.

francis hagelsays:


I agree with your approach, the comparison between the English and the French wording sheds light on nuances in meaning.
The French « se fonder sur la description » can be translated as « be based on the description » as you suggest, but I would prefer the slightly more concrete wording « has basis in the description ».

If I apply this to a claim reciting integers A, B, C, there is support in the description pursuant to Art 84 2nd sentence as long as the combination A,B,C is disclosed in the description. Should this conclusion be considered affected or compromised if the description also discloses a combination of A,B and D which is covered by the claim ? I see no convincing reason for that, insofar as the disclosure of A,B,D and its phrasing do not compromise compliance of the claim with the clarity requirement of Art 84, i.e. do not make the terms unclear.

There is doubt if in the disclosure of A,B,D, there is a statement which clearly contradicts the claim, or makes the meaning of its terms ambiguous. In such cases, the clarity requirement of Art 84 is not met.

This is in essence the line of section 5.29 of the PCT ISPE Guidelines, and I think it is sensible. If an inconsistency between the description and the claims is such that it « might » cause doubt (hypothetical), it can be overlooked. It has to be cured only if it causes doubt (present tense). This is sensible because the hassle of description adaptation (for the applicant and the EPO) is limited to cases where the adaptation is warranted

francis hagelsays:

Sorry, there is a typo in this comment. “Should this conclusion be considered affected or compromised if the description also discloses a combination of A,B and D which is covered by the claim ?” must read “Should this conclusion be considered affected or compromised if the description also discloses a combination of A,B and D which is not (underlined) covered by the claim ?

Avatar photoDaniel X. Thomassays:

Dear correspondents,

I am not an English native speaker so I will not argue whether “support” is ambiguous or not. The French text uses terminology “se fonder sur la description”. I do not see a difference between this wording and the German one “sich auf die Beschreibung stützen”. translation offered “to be supported by the description”.

I would not consider “supported”, “se fonder” or “gestützt” as being ambiguous. To me it means there has to be a correspondence between what is claimed and what is stated in the description. In other words there has to be consistency between what is claimed and what the description says.

How can claims be supported by the description, or how can there be consistency between the claims and the description, if the description says something which does not correspond to what is claimed or even in contradiction with it? To take Max Drei’s wording I would chose “corroborate” and not merely “substantiate”. ABC and ABCD are all “substantiated” as theyy can be found in the original description, and yet when it comes to the two independent claims ABC and ABCD, d cannot be left optional after amendment. As said above, Art 84 requires consistency between what is claimed and what is stated in the description.

Once D has been added into the original independent claim ABC so that it becomes ABCD, leaving D as being optional in the description has nothing to do with clarity as such (A, B , C and D and the combinations ABC and ABCD may be clear on their own or in combination). I maintain that the claim ABCD is not supported by the description as the description says something different than what is claimed.

If the claim is only ABC, there is no objection against D in the description as being a possible further development of ABC. My question is then: why not claim D as dependent claim? In opposition filing a dependent claim for D will infringe R 80. If in opposition, the claim ABC is limited by D, the description has to be adapted to the new claim as it would have to be done before grant.

I would like here to refer to T 3097/19 which was commented on this blog and on IPKat.
On both posts, the number of comments was inordinate.
The various positions are since then abundantly clear.
I have nothing to add, but to say that we are turning in circles and that I agree with T 3097/19.

Anon Y Mousesays:

Mr Thomas

With all the talk of ABC and ABCD I get the feeling that the two sides in this debate are sometimes talking past one another.

If I understand your point of view correctly, you are thinking of a description which originally discloses “ABC” and says “optionally, ABC may include D”. The original claims reflect that, e.g. with original claim 1 to ABC and dependent claim 2 specifying the presence of D. During prosecution claims 1 and 2 are combined to give ABCD. Your view is that the description should therefore be adapted accordingly, otherwise there is a discrepancy, and that discrepancy leads to an objection under Article 84.

I feel like the debate is running out of road on that scenario: clearly, reasonable minds differ (and the Boards too!) on whether or not that discrepancy leads to a lack of support in the sense of Article 84.

I’d like to move on and consider another scenario which seems to be overlooked in all of this debate, which might help to better elucidate the positions from both sides.

Let’s imagine a patent application which initially discloses two separate embodiments “A” and “X”. These are independent of one another; X is not a preferred feature of A, and A is not a preferred feature of X. If it helps, think of A and X as alternative solutions to the technical problem.

Let’s say that the claims that are granted are directed *only* to embodiment A. (It probably doesn’t matter why, but for the sake of argument let’s say that any claims to X were dropped upon entry into the European phase and were never subject to substantive examination.)

If the description retains aspects relating to embodiment X, does that cause a support problem under Article 84 in your view?

If the answer in your view is “yes”, why?

From the side of those such as MaxDrei and Francis Hagel, I imagine that their argument might go along the following lines: “This is not a situation where “A+X” was ever an (optional) possibility, unlike the hypothetical “ABC+D” scenario that has generated so much heat and so little light. The presence of embodiment X in the original description could never have been confused by the skilled person with the presence of embodiment A. Both A and X were (independently) supported by the original text and that has not been changed by the fact that only one is now claimed. The presence of X in the description does not introduce any confusion as to the scope of the claims directed to A, so where is the harm in retaining it? Given that A and X represented alternative solutions to the same problem, should the skilled person be entitled to retain disclosure of X, to allow them to argue post-grant that X is an equivalent to A under Article 69 and its Protocol?” (@MaxDrei, @Francis Hagel, please feel free to weigh in if I have misunderstood your position.)

However, I find it harder to imagine what your argument might be in this scenario, and would welcome your views.

Avatar photoDaniel X. Thomassays:

Dear Anon Y Mouse,

You understood my point of view correctly. Once the claim ABC is limited to ABCD the description has be adapted accordingly, and D cannot remain optional in the description. In the contrary there is a discrepancy, and that discrepancy leads to an objection under Article 84, second sentence, for lack of support.

It is manifest that you, Max Drei, F. Hagel and many other, like Proof of the pudding, do not agree and so did three boards of appeal. I am of a different opinion, based on my long practice of examination and opposition and of the vast majority of the boards..

When it comes to the second situation as defined in your comment, A and X being disclosed and only A is claimed, the situation is not fundamentally different from that with ABC+D.

Let’s look at the situation of A and X “represent alternative solutions to the same problem”.

If the applicant is not in a position to show that there is a technical relationship among those embodiments A and X involving one or more of the same or corresponding special technical features which define a contribution which each of the embodiments considered as a whole makes over the prior art, then there is a problem of lack of unity, cf. Art 82 or R 44. In one and the same application, he will only be able to pursue one of the embodiments. The other embodiment will even have to be deleted, but can be pursued in a divisional application.

If in opposition a claim covering both embodiments is not allowable for lack of N or IS, then both embodiments A and X can remain in the same patent and can be subject-matter of two separate independent claims. If only one of the embodiments is claimed, then the situation is not different from that of two embodiments disclosed whereby only one is claimed.

If an applicant has disclosed two different embodiments A and X and if for the sake of argumentation unity is given, and only one them is claimed, then the applicant/proprietor has made a choice. He is then bound by his choice.

If, as suggested, claims to X were dropped upon entry into the European phase and were never subject to substantive examination, then it is certainly not acceptable that embodiment X remains as a possible embodiment of the invention as it is actually claimed. The situation is not different if embodiment X is disclosed but not claimed. What has not been examined cannot be subject-matter of claims and vice-versa, what is not claimed will not be examined.

Hence leaving the non-examined embodiment in the description without any comment is not acceptable. By wanting to keep a non-examined embodiment in the description, third parties are at a loss to decide, in view of the description, what has been claimed or not.

As said, having made a choice, the applicant is bound by it. It might not be absolutely necessary to delete the non-claimed embodiment, but the non-claimed embodiment cannot be said that it corresponds to what is claimed. Some mention has to be added that the non-claimed embodiments is not “supported” by the claims or does not correspond to what is claimed. If the applicant/proprietor deletes the non-claimed embodiment, nothing withholds the applicant/proprietor to show the national judge what was in the originally filed specification or in the patent as granted. Leaving it without any comment is not in.

As far as I am concerned, the situation is clear. After prosecution at the EPO, be it in examination or in opposition, it should be clear for third parties what is actually claimed. Any attempt to leave some doubts about what is actually claimed is not acceptable. This does not withhold a national court to decide what can be deemed equivalent to what is claimed. This decision is of no concern to the EPO.

The EPO and its boards of appeal have the duty to clarify what is granted or maintained, also in matter of support of the claims by the description.

Anon Y Mousesays:

I am finding your logic very hard to understand, as you seem to start from the assumption that the mere presence of X in the description will lead to confusion.

What I want to know is, why is that the case?

If the description as originally filed says A is A, and X is X; and the original claims are directed to A and to X; there is no risk of confusion.

If *all I do* is to delete the claims to X, while leaving the description unchanged, nothing has fundamentally altered – the description describes A, and I claim A. The description also describes X, which is not claimed – but X is described in such a way that it could never be confused with A.

Why does the skilled person suddenly lose the ability to distinguish between X and A based on the original description?

As with the other commenters, I am also finding it difficult to reconcile your position that the claims and description MUST be brought into strict conformity, to avoid confusion after grant, with your position that the EPO has no concern as to what happens at national courts. If the courts are at liberty to interpret the text how they like – and are not at risk of confusion based on what is in the description – then how, exactly, does the risk of confusion arise, which allegedly justifies such interference with the description?

Avatar photoDaniel X. Thomassays:

Dear Anon Y Mouse,

You appear to have overlooked an important aspect in my reply: if you delete the claims for X, X will never have been examined.

What has not been examined cannot be said as falling under the granted claims or supporting them. Whether it might be equivalent to what is claimed has also not been examined.

In other words, you actually want to be able later to claim protection for something which has not been examined.

In an patenting system with substantive examination this is not possible.

I thought this is quite logical and should not be too difficult to understand.

Max Dreisays:

I disagree, Daniel. I think there is more to say.

You support T3097/19. See its para 32 and the words “described to be the invention”. That description must not contradict what the claim defines as “the invention”. OK, fair enough.

But in a typical description there is much description of stuff that is not “the invention”. I don’t have to flag up the description of what is in the closest prior art references, for example, as being NOT the invention. I am still not convinced that the EPO is entitled to demand of Applicants as a condition of allowance that everything in the description which is not within the strict literal meaning of the wording of the claim has to be labelled in explicit terms “NOT the invention”.

Anon Y. Mouse might also like to comment.

Avatar photoDaniel X. Thomassays:

Dear Max Drei,

There is no need to flag up in the description that what is in the closest prior art references, as being NOT the invention. For a start the prior art is to be found in the introductory part of the description and can by no means be confused with the disclosure of the actual invention on which the claims will be based.

The only difference for the CPA (=document X) is whether the independent claim is in the one-form or the two part-form. If the claim is in the two-part form, a reference to the preamble to the claim is enough. It could look lik: the preamble of claim 1 is disclosed or known form document X. If the claim is in one-part form then the acknowledgement of the CPA has to be more detailed: for instance, features A-D are disclosed or known from document X. You cannot have a one-part form claim without stating clearly what is disclosed in the CPA.

You might not be convinced that the EPO is not entitled to demand of applicants as a condition of allowance that everything in the description which is not within the strict literal meaning of the wording of the claim has to be labelled in explicit terms “NOT the invention”, but this is not how it works.

If for instance the original claim and dependent claims relating to embodiments 1-3 are not allowable and only embodiment 4 is allowable, you cannot leave in the description a statement that embodiments 1-3 are still covered by the claims.

It might not be necessary to delete those embodiments, but it will have to be made clear that the embodiments 1-3 are not any longer embodiments of the invention as claimed. This is the same as when the optional feature D is limiting the independent claim, it cannot be left optional in the description.

This way of doing is what I have practised during all the years I was at the EPO, and corresponds to a long line of case law, but for three decisions to the contrary.

Max Dreisays:

Daniel, this is proving quite hard to get across to you. What I am trying to communicate is that i) the description as filed discloses Figures 1 to 4, each showing a different design of widget ii) the allowable claim reads on to Fig 4 but not Figs 1, 2 or 3, iii) the description I want allowed states that each of Figs 1 to 3 discloses a design of widget, and iv) only for Fig 4 does the description state that its widget is an embodiment of the invention.

This is different from a) deleting Figs 1 to 3 or b) inserting in the description wording that Figs 1 to 3 are NOT the invention.

There is nothing in my description that contradicts the claims, nothing that is inconsistent with the claims. Tell me why it offends Art 84, EPC.

Anon Y Mousesays:

Max, your situation is not so dissimilar to mine. I am struggling to understand why, if the description says “A is A, and X is X”, with no possibility of confusion between A and X, there is suddenly an Article 84 problem when I delete claims to X.

Looked at another way, if the skilled person could confuse A and X, wouldn’t that confusion also have been present when both claims were there?

Your situation with respect to (distinct, non-confusable) figures seems to be broadly analogous.

DX Thomas’ answer, that this has somehow to do with preventing applicants from “claiming protection for something which has not been examined”, says to me that the real rationale here is to prevent courts from awarding applicants the “wrong” scope of protection under Article 69. I cannot be alone in finding this position impossible to square with Mr Thomas’ repeated insistence that adaptation of the description cannot hinder the courts from applying the doctrine of equivalents how they see fit. Nor with the large number of Board decisions that say that Article 69 is of no concern in proceedings before the EPO.

Francis hagelsays:

Since the EPO has invited public comments on the 2023 GL, I have submitted a proposal. In GL F-IV 4.3, change “inconsistencies… which could cause doubts” to “which cause doubts”. In this Wayne, the onus would be on the ED to prove that an inconsistency makes the claim unclear. This would bring In line the GL with those of the PCT.

Mike Snodinsays:

Francis, I support your proposal. I struggle to understand why applicants should be forced to address HYPOTHETICAL concerns (“could cause doubts”), especially in situations where no doubts would arise in the mind of the skilled person.

The EPO’s approach to claim-like clauses illustrates this point perfectly.

I have yet to meet anyone who is familiar with the structure of patents who would ever confuse clauses in the description with the claims proper. The latter always appear between the description and the drawings and, helpfully, are labelled with the heading “Claims”. In pdf documents produced by the EPO, there is also a helpful bookmark labelled “Claims” that will clear up any confusion even for those completely unfamiliar with the structure of patents.

So who exactly is it that the EPO believes might be confused by the presence of claim-like clauses in the description? And why is it that the EPO expects applicants to agree to amend the description merely because the ED speculates that some unspecified person, for reasons that are not explained (and certainly not justified), could theoretically get a little bit confused?

The EPO expects applicants to support their position with more than just unsubstantiated and purely theoretical allegations. Applicants can therefore rightfully expect the EPO to do the same.

Mike Snodinsays:

Point 2.3 of the reasons in T 1426/21 makes for interesting reading:
“According to Article 84 EPC, the claims define the matter for which protection is sought. They shall be clear and concise and be supported by the description. This means that any inconsistencies between the claims and those parts of the description disclosing ways to carry out the invention need to be removed. This understanding of Article 84 EPC is in line with the standard of claim interpretation for national proceedings enshrined in Article 69(1) EPC, which requires that the description also be taken into account when interpreting the claims”.

This directly connects the EPO’s preferred interpretation of Art 84 EPC to claim interpretation in NATIONAL proceedings (by application of Art 69(1) EPC).

Does anyone else find it curious that matters that are primarily (or, with regard to Art 2 of the Protocol to Art 69 EPC, solely) the concern of national courts should be used by the Boards to justify the EPO’s preferred interpretation of Art 84 EPC?

Also, if, during examination proceedings, the EPO never determines the scope of protection afforded to the claims, how can it possibly determine (with a high degree of confidence) which parts of the description are “inconsistent” with the claims?

I know that it is a controversial position to take, but I am pretty certain that it is impossible to square the circle on this last point. That is, unless the scope of protection afforded by the claims has been determined under Art 69 EPC, it is pretty clear that the EPO cannot possibly know for sure which parts of the description are “inconsistent” with the claims.

Anon Y Mousesays:

Mike, I fully agree. It is only possibly to square the circle if the scope of protection corresponds to what is *literally* in the claims – which, of course, runs contrary to the Protocol on Article 69.

I also note that the Board’s reliance in this case on Article 69 to justify its stance, seemingly runs contrary to a large body of case law holding that Article 69 is of no relevance in proceedings before the EPO. Now, the EPO case law is not entirely consistent on this – there are decisions holding to the contrary, such as (very recently) T 1473/19 (cited in the Case Law supplement 2022, no less!) as well as numerous older ones – but they seem to be in the minority.

Mr Thomas is very fond of taking the position that a “very long line of case law” which weighs heavily in one direction should be regarded as persuasive. However, as several of us have observed, the “very long line” on adaptation of the description is internally inconsistent in its interpretation of exactly *why* Article 84 justifies or requires such adaptation; and here we have a case which, in its conclusions, may be broadly consistent with that “very long line”, but in its reasoning, runs contrary to another “very long line” concerning Article 69.

The inconsistency of the Boards on these topics adds to my opinion that (a) the direction of travel suggests that there is political pressure, be it from within the office or outside it, to arrive at the “correct” practice – namely, a severe approach to adapting the description; and that the end is being placed above the (inconsistent) means used to attain it; and that (b) in view of this, it is high time for a wide-ranging referral to the Enlarged Board on claim interpretation, taking into account not only the applicability of Article 69 in proceedings before the EPO, but also the proper interpretation of Article 84 and the relationship between the claims and description.

Mr Thomas, how do you propose to reconcile these numerous contradictions in the case law?

Mike Snodinsays:

Anon Y Mouse, there is indeed a notable divergence of views between different Boards regarding adaption of the description. Some believe that it is not required, some cite “support” under Art 84 EPC, some cite “clarity” under Art 84 EPC and others cite Rule 42 EPC. Also, whilst “support” under Art 84 EPC is the most commonly cited provision, there is even a divergence of views on precisely WHY this requires complete consistency between the claims and the description.

Objections based upon Rule 42 EPC 2000 (Rule 23 EPC 1973) seem to me to be based upon a very different rationale to objections based upon Art 84 EPC. For example, in T 490/90 it seems that the objection was to the presence of an “addendum” to the description, which suggests that the underlying problem was the LOCATION of the claim-like clauses (i.e. contravention of the manner and order of presentation specified in Rule 23(2) EPC 1973) and not their content. Nevertheless, it seems that such subtleties are not reflected in the current Guidelines, which seem to impose some sort of blanket ban on the presence of claim-like clauses in ANY part of the description, and regardless of whether those clauses precisely match the invention described in the claims.

As to objections based upon the “support” requirement, I think those are based upon a highly questionable interpretation of Art 84 EPC, 2nd sentence. This is because, whichever method of interpretation (under the VCLT) I apply to that provision, I always end up concluding that “support” simply means that the subject matter that is claimed should also be disclosed in the description (and not that the description may not disclose any different subject matter). For example, looking at the travaux for Art 84 EPC, I cannot help but feel that replacement of “fully supported” by “supported” during the legislative process has to have changed the meaning, with the result that there is no requirement for “full” support (whatever that means). Martin Wilming has more to say about this particular point:

It would help me immensely if a Board of Appeal could provide a clear, careful, comprehensive and well-reasoned (i.e. logical) analysis of the meaning of Art 84 EPC under all methods of interpretation permissible under the VCLT. The best effort so far in this regard was made by the Board in T 1989/18 … which reached the same conclusion as me regarding the meaning of Art 84 EPC. I do not rule out the possibility that a different meaning could emerge from a more thorough analysis. However, a notable feature of the case law upon which the EPO’s current practice is based is the absence of a detailed and comprehensive analysis of the results from the various methods of interpretation.

It is an open question whether a referral to the EBA would deliver the clear, careful, comprehensive and well-reasoned analysis that I am seeking. I had hoped for that kind of analysis in G 3/19. However, what the EBA delivered was instead a highly questionable result that strained credulity. I would not wish for the same to happen here.

francis hagelsays:

Mike, thanks you for your support and for the helpful reference to T 1426/21. A key issue is that the burden of proof should be on the ED to show that an inconsistency makes the claim unclear, instead of the sweeping requirement to remove inconsistencies without any need for justification. This was stated in T 2194/19 reported on this blog in November 2022. It makes sense to apply the support requirement of Art 84 not in isolation but in connection to the clarity requirement. After all, the « doubts » referred to in GL F-IV 4.3 refer to the need for clarity. It would also make sense to require the adaptation of the description only when it is warranted, just from a costs-benefits viewpoint, since it does entail costs and there is provable benefit only when the inconsistency creates ambiguity of the claimed subject matter.

The deadline for submitting observations about the draft GL was set to expire on April 4, but the submission form also mentioned that comments are welcome at any time.

Avatar photoDaniel X. Thomassays:

Dear correspondents,

Thanks for all your messages. They have come across without any difficulty.

My reply is as follows: if from the 4 widgets disclosed in the original application only the fourth one, or from A and X being disclosed, only A or X, is subject-matter of an independent claim, it means that the three first widgets and either A or X will not have been examined as they have not been claimed.

In all logic, it cannot be suggested that they fall under the item which has been claimed and examined. The situation is thus not fundamentally different from the situation in which three embodiments are not patentable and only the fourth is patentable. The claim resulting from the claimed item cannot be said to “support” the items not claimed or not patentable.

Deletion is not absolutely necessary, clarification is. The only clarification possible is that the non-patentable or non-claimed items cannot “support” the invention as claimed. It is really hair splitting to see a big difference in degree between “supported” and “fully supported”. If you know how some provisions of the EPC have come into it during the original drafting and during the conference of 1963, you would not give such a weight to this difference.

There is no intention whatsoever to prevent courts from awarding applicants the “wrong” scope of protection under Article 69. The national courts can give the scope of protection they deem fit, but it cannot be expected from the EPO to consider a disclosure “supported” by the claims that has been deemed not patentable or has not been claimed.

Here, it seems important to me to refer to Mr Hagel’s own statement of April 2d:

“…. subject matter which is disclosed in the original description but not covered by the claims of the granted patent should be presumed to have been given by the patent owner to the public domain. After all, this is the patent owner’s own decision. And the patent owner has a benefit in terms of freedom-to-operate from the public disclosure of this subject matter.

If the patent owner had the opportunity to recapture the subject matter disclosed but not claimed in the granted patent in infringement proceedings, at any time until the patent expiry, this could be equated to giving the patent owner the benefit of a grace period for the entire life span of the patent”.

What else is there to say? What has “been given by the patent owner to the public domain” or what is not any longer patentable belongs to the public domain. How can it help to “support” what is claimed and is patentable?

Furthermore, there is nothing withholding the proprietor to file in front of a national court the application as originally filed should he think it might help its cause.

As far as application of Art 69 during proceedings before the EPO is concerned, I agree with Mike Snodin that there is a divergence amongst the boards. Some claim that Art 69 is always applicable, other only in exceptional cases. This should be clarified urgently.

In the same comment of April 2d, Mr Hagel raised strong doubts about the usefulness of claim-like clauses. If they are at odds with the claims deemed allowable, they are indeed giving raise to strong doubts about what should be put under protection. They have manifestly to be deleted.

No promoter of claim-like clauses has ever given me a reason for keeping them in the patent to be granted. This is especially the case when they are repeating in form of clauses what has originally been claimed. On this point I have to disagree with Mike Snodin. They cannot be confused with claims as their denomination is different, but what reason does an applicant want to stick to them if it is not for later to be able to say that those clauses also fall under what is to be assessed under Art 69, but has not or cannot be claimed in view of the available prior art?

Max Dreisays:

We can either confine the debate strictly to “claim-like clauses” or we can open it out a bit. I appeciate that confining it keeps the debate focussed, but widening it helps to reveal the difference between me and Daniel Thomas.

I return to my hypothetical above. I file with a set of claims wide enough to cover all of the four embodiments of widget seen in Figs 1 to 4. The EPO search obliges me to narrow my claim. The Fig 1 embodiment is plainly within the literal scope of narrowed claim 1. The designs of Figs 2, 3 and 4 are not. So, I amend my description, to remove all text that identifies the Fig 2-4 designs as embodiments, examples, aspects, or whatever. Instead, the description simply states that Figs 2, 3 and 4 each show a design of widget. To my mind, that is clear, and does not contradict what the claim defines as the invention. I want Figs 2-4 to remain because they reveal designs that might in some way be “equivalent” to the Fig 1 design. I see no basis to assert that the provisions of Art 84, EPC are offended. I want my granted claim to cover (under Art 69, EPC) accused embodiments, widget designs that lie in the grey area between Fig1 and Figs 2-4. I fear that loss of Figs 2-4 from my description will hinder my legitimate efforts. Even more so, if those Figs are labelled “NOT” the invention.

But nevertheless, the ED adamantly insists that I either delete all trace of Figs 2, 3 and 4, or else state explicitly that they are NOT the invention. One or the other: no alternative. Sorry!

I resist, and it ends up before a TBA. What will the Board decide?

Answer: it depends which Board is seized by the case. That is not a good answer, is it?

Avatar photoDaniel X. Thomassays:

Dear Max Drei,

As far as I am concerned, whether we confine the debate strictly to “claim-like clauses” or we open it out, the result is not different.

If the EPO search obliges you to narrow your claim and only Fig 1 embodiment is plainly within the literal scope of narrowed claim 1 and the designs of Figs 2, 3 and 4 are not, the conclusion is manifest. You will have to remove all text that identifies the Fig 2-4 designs as embodiments, examples, aspects, or whatever. If they are not embodiments of what is claimed, they will have to be identified as such as not being part of the claimed invention. You cannot leave embodiments not claimed as belonging to the claimed invention.

Your apparent confusion seems to come from your postulate that Figs 2-4 might in “some way be equivalent” to the Fig 1 design. What is the proper meaning of being “in some way equivalent”? This statement lacks clarity in the ordinary meaning of Art 84. It can cover all or nothing and just makes a FTO evaluation extremely difficult. As a proprietor you might like it, as a third party you will certainly have a different, not to say contradictory, view.

If the widgets of Figs 2-4 are equivalent, then they are in principle covered by the claims as filed and are part of the invention. If they are just “in some way equivalent”, whatever this might mean, they cannot be part of the claimed invention.

Neither in the EPC nor in Art 69 and its Protocol will you find a definition of what is “equivalent” and even less “in some way equivalent”. This is why national courts are free to determine what DoE is fit for their purpose. The EPO and its BA have no say in the matter. Your definition or “in some way equivalent” is open to a large interpretation and you cannot request from the EPO just to think of what could possibly be considered “in some way equivalent”. If the application ends in a patent and as far as said patent is concerned, the EPO cannot leave doubts subsisting about what is plainly claimed.

In case of litigation nothing withholds you to show the national judge what you have originally disclosed in the A specification or that in your opinion, Figs 2-4 are nevertheless falling under the claims as granted as they are “in some way equivalent”. In the meantime the EPO has done its job and the national judge agrees with you or not.

I have not yet seen a national court being bound by what the EPO has decided and limited the understanding of the claims to what the EPO decided. The day you show me such a string of such statements of a national courts, I would revise my position. Art 69 and its protocol are exactly there to give national courts a great degree of freedom. You cannot require the same degree of freedom from the EPO

There are 28 TBA and 1 LBA. The number of TM is on average 5 and the number of LM is on average 3. Only with the TM and a chairperson you have a minimum of 7 possible combinations for each file per board. You have at least 200+ combinations of compositions of boards. Up to now we have 3 boards, actually 2,5, as in two boards we had the same legal member, which disagree with the majority of boards.

The likelihood that a BA will decide along the majority line of case law is thus rather high.

Mike Snodinsays:

Mr Thomas, I think that we shall have to agree to differ. To me, it appears that your position both illogical and internally inconsistent.

To illustrate:
– Why would you discuss the issue of what the EPO might view as “a disclosure “supported” by the claims”? My understanding of Art 84 EPC is that it requires the claims to be supported by the description and not vice versa.
– Your view seems to be that what is not claimed has been dedicated to the public. But what is the purpose of amending the description to reflect this position if, as you seem to claim, doing so will have no impact whatsoever on post-grant determinations of the scope of protection?
– You claim that the national courts will not pay any attention to decisions of the EPO (or its Boards). But you carefully avoid addressing the point that was put to you directly, namely that it is not decisions of the EPO that are at stake but instead amendments to the description made (or accepted) by the applicant. Is it not possible that the national courts will take those amendments into account when determining the scope of protection, especially if they appear to amount to a disclaimer (by the patent proprietor) of “non-claimed” embodiments?
– You agree that claim-like clauses cannot be confused with the claims proper. This presumably means that you agree that, if they correspond to the invention defined in the claims, those claim-like clauses provide “support” for the claims AND do not give rise to a lack of clarity. But you nevertheless believe that those clauses should be deleted from the description … despite the lack of any legal basis for requiring such deletion.

On the issue of claim-like clauses, the problem seems to be that you cannot envisage a legitimate reason for their presence. However, this is because you are overlooking the possibility that such clauses can be, and often are, used in the application as originally filed as a concise way of disclosing multiple embodiments of an invention. Indeed, it is perfectly possible that such clauses may end up providing the SOLE basis in the application for the subject matter of the claims to be granted.

Of course, it is senseless to require applicants to delete the sole disclosure in the application of the subject matter of their claims. Indeed, to do so would run contrary to Art 84 EPC, as it would result in the claims having no support in the description. So, is that reason enough to keep at least certain claim-like clauses in the patent to be granted?

Avatar photoDaniel X. Thomassays:

Dear Mr Snodin,

We can certainly agree that we disagree. As far as the logic and inconsistency of arguments are concerned, I can easily return the compliment.

My understanding of Art 84 EPC is that it requires the claims to be supported by the description and vice versa. What is claimed has to be supported by the description, but what is not claimed is not part of the invention. There has to be a one-to-one relationship between claims and description in both directions. Just look at the Guidelines F-IV, 4.3.

It is not my only position that was is not claimed belongs to the public. Just look what Mr Hagel has said and I have quoted in my reply of April 8th. What Mr Hagel has said looks logical and is perfectly clear. i have nothing to add.

As I have just replied to Max Drei, I have not yet seen a national court being bound by what the EPO has decided and limited the understanding of the claims to what the EPO decided. The day you show me such a string of such statements of a national courts, I would revise my position. Art 69 and its protocol are exactly there to give national courts a great degree of freedom. You cannot require the same degree of freedom from the EPO. The fear you express remind of the fear expressed by British representatives about reference signs in the claims in the early days of the EPO. T 237/84 has ended this fear.

Claim like clauses cannot be kept in a granted patent, even if they cannot be confused with the actual claims. It is a long established practice that if the subject-matter of the claims are not found in the original disclosure, the description can be adapted so that the teaching of the claims absent in the description can be transferred to the latter within the boundaries of Art 123(2). This is for instance not possible when the claims were filed after the description and the drawings. I might just add that according to T 758/13, a purely formal support by the description through repetition of the mention of a claimed feature does not meet the requirements of Art 84.

It would indeed be senseless to require applicants to delete the sole disclosure in the application of the subject matter of their claims. As I have just shown, there are other possibilities for the applicant to remedy the situation.

There is thus no need to keep claim-like clauses. It is your opinion to claim that there is a lack of any legal basis for requiring such deletion. I am of the contrary opinion as I have just explained.

Mike Snodinsays:

Mr Thomas, I fear that you have entirely missed the points that I was trying to make in my previous comments. Also, you have mischaracterised my position.

Regarding adaptation of the description, I was not discussing the pros and cons of the view expressed by you and Mr Hagel (regarding dedication to the public of “non-claimed” subject matter). Instead, I was pointing out what seems to me to be an inconsistency between:
– the RATIONALE for requiring amendments to the description that are based upon the assumption that everything that is not claimed is disclaimed; and
– your assertion that such amendments to the description will have no impact whatsoever upon the assessment of the extent of protection by the national courts.

That is, if it will have no effect whatsoever on post-grant proceedings, what is the point of forcing applicants to label each and every “non-claimed” embodiment as NOT being the invention according to the claims? Whilst I understand perfectly well that such amendments reflect your interpretation of the support requirement, can we at least agree that for post-grant proceedings those amendments either:
(a) have no effect, and hence are ARGUABLY pointless (for everyone except those within the EPO who believe that they are just doing their job when they insist upon interpreting the support requirement in the same way that you do); or
(b) have an effect, for example due to national courts viewing the amendments as being effective disclaimers of the “non-claimed” subject matter?

With regard to (b) above, PLEASE STOP mischaracterising my position. I am NOT, I repeat NOT discussing the effect upon national courts of what “the EPO has decided”. What I am discussing is instead the potential effects of amendments to the description. Can we therefore at least agree that those amendments COULD be taken into account by national courts (under Art 69 EPC and its Protocol)? On the other hand, if you cannot agree to this, please explain to me why the national courts would NEVER take such amendments into account.

Regarding claim-like clauses, the “other possibilities” you mention are, in fact, one possibility, namely incorporation into the description of the subject matter of the relevant claims. But this possibility only applies when the subject matter in question is present in the ORIGINAL claims of the application as filed. It is therefore irrelevant to the scenario that I was discussing, which is where the claims to be granted find basis SOLELY in the (original) claim-like clauses.

So your suggestion in fact boils down to a purported requirement in the EPC for:
– deletion of a claim-like clause providing the sole basis for a claim to be granted; and
– insertion of a “NON-claim-like” clause into the description, which finds basis solely in the original claim-like clause.

In other words, you interpret the EPC as requiring the REFORMATTING of all claim-like clauses. But where in the EPC is this reformatting requirement to be found? Remember, we are talking about ORIGINAL claim-like clauses that support the claims and that do not cast doubt upon their scope. You may see no need for those clauses. However, you have yet to point to any legal basis their removal (or reformatting).

Avatar photoDaniel X. Thomassays:

Mr Snodin,

I have neither entirely missed the points that you were trying to make in your previous comments, nor mischaracterised your position.

We have agreed that we would disagree. Why are you then coming back and insisting? You actually remind me of representatives repeating that the subject-matter of the claim is novel (or not) long after the corresponding decision was announced.

I will not follow your views and you will not follow mine. We could have left it at that.

As far as claim-like clauses are concerned, I would like to remind you of Art 78 (in combination with R 42, 43, 49 and 50), which provides that a European patent application shall contain inter alia:
(b) a description of the invention;
(c) one or more claims;
(d) any drawings referred to in the description or the claims;

I fail to find in this list any trace of “claim-like clauses”. What else is there to be said?

In accordance with T 490/90, I agree that those claim-like clauses are not claims in the meaning of Art 84 but can be part of the original disclosure. Within the boundaries of Art 123(2), the subject-matter of those claim-like clauses can be transferred into the actual description.

However as stated in T 490/90, it does not seem questionable that the present description of the patent application including the addendum (“clauses”) does not satisfy the requirements of R 27, now R 42. At this stage of the proceedings it is quite normal that the ED requires from the applicants that they put their application formally in order by cancelling the said addendum because the description with the addendum does not satisfy R 27, now R 42, is unclear and contains obviously unnecessary matter. At this stage, it should not be detrimental to the application to satisfy this requirement insofar as this is not an abandonment of the subject-matter contained in the clauses.

I am fully aware of T 1440/20 in which the Guidelines F-IV, 4.4.were criticised. This decision took indeed another position about claim-like clauses, but is at odds with the long lasting line of case law relating to the adaptation of the description and can therefore be ignored.

The present decision, T 1426/21 clearly disagreed with T 1440/20 as far as claim-like clauses are concerned. See above.

Not only the EPC, but also the case law requires re-formatting of claim-like clauses.

What is important for the EPO is that to clarify in the description what is the contribution to the art. The contribution to the art is what ends up in the granted claims. For the remainder, two possibilities: either, some features are not claimed as such or cannot represent the contribution to the art in view of the examination. By clarifying the situation at the moment of grant, or when maintaining in amended form, the EPO has done its job and a national court can decide how it sees fit. I have really nothing to add.

I do not intend to pursue any debate on the topic.

Mike Snodinsays:

Mr Thomas, thank you for your explanations.

There is no need to remind me of Art 78 EPC or the rules imposing requirements for the description. However, I see that there is a need for me to point out that claim-like clauses are, in fact, one way in which an invention (or embodiments thereof) can be described. They therefore fall under Art 78(1)(a) EPC and Rule 42(1)(c) EPC, and serve precisely the same function as other ways of describing the invention (such as “standard” consistory clauses, which you will note are also not listed in either Art 78 or Rule 42).

It is all very well referring to case law, but that is never going to be the end of the discussion if that case law (also) fails to provide a convincing rationale / legal basis for its conclusions. Looking to T 490/90 for support also seems somewhat of a stretch, as LOCATION of the “addendum” (containing claim-like clauses) seems to have been the basis for the Board’s view on why (the order of parts specified in) Rule 42 EPC was infringed.

It seems to me that a reason for our divergent views is that you are more persuaded than me by a long line of (majority) case law … and therefore less inclined to apply a critical assessment to the reasoning of that “majority” case law. If this is why you refuse to accept – or even to directly address – what appear to me to be logical conclusions (working from first principles), then so be it. There is indeed nothing more to be said.

francis hagelsays:

Dear MaxDrei,

In the case you describe, even if the description and drawings have not been « adapted » as required by the EPO, you would have trouble convincing a court in Europe that you can extend the protection to the embodiments of Fig 2-4 because of the prosecution estoppel. There appears to be consensus in European courts, as clear from the array of Pemetrexed decisions, to apply the estoppel only when the scope of claims has been restricted during examination to overcome a rejection based on prior art, as assumed in your case, and not to apply the estoppel when the restriction occurred for « formal » reasons such as Art 84 issues.

It is of note that this practice of national courts is in line with AIPPI resolution 5.c of Q175 (Lucerne Oct 2003) : « In contrast, an element shall not be regarded as equivalent to an element in a claim, if […] 5.c) the patentee expressly and unambiguously excluded it from the claim during prosecution of that patent to overcome a prior art objection.”

This deprives the EPO from any justification for its practice of requiring the adaptation under Art 84, since what matters for the courts is the wording of the claims once restricted (not amendments to the description), and the reason for the restriction (overcoming prior art objection or not).

In addition, the EPO has no business interfering with the application of Art 69 by the courts, as strongly asserted in the case law of the BOAs. Asserting the objective of « legal certainty » as the EPO has done to justify its practice is outside the EPO’s remit, since this relates to the context of infringement proceedings. It is thus an overreach for the EPO to require description amendments aimed at imposing on the applicant the equivalent of disclaimers.

Max Dreisays:

Daniel Thomas helpfully reminded me to read Guidelines F.IV.4.3. Quite right too. Only when one knows the GL’s inside out and backwards should one dare to comment here.

This I have now done. In the GL section, I found particularly helpful the paragraph that begins “As long as the resulting text….”.

In my hypothetical above, about an application to protect a widget device, the claim narrowing during prosecution leaves claim 1’s text reading literally onto only Fig 1 of the four original drawing figures (each of which showed a different design of widget). Must Figs 2-4 be deleted? Or can they remain, if I amend the description to remove text that labels them as embodiments of the invention but instead reports only that they show designs of widget. M.Thomas says no, that’s not good enough. If I want to retain Figs 2-4,then I must label them explicitly as NOT according to the invention.

But that is, I find, NOT what the Guidelines paragraph says.

Rather, the Guidelines paragraph says that I must i) remove the statement that they are according to the invention but that, after that, all I need to do is state in the description that they are included because they are “useful for understanding the invention”.

I am surprised that “useful for understanding the invention” makes the decisive difference. After all, isn’t that exactly what Fig 1 is doing, and continues to do, indeed what all four drawing figures were doing in the originally filed application and are still doing in the B publication?

Presumably, when those within the EPO who write the Guidelines read this, they will need to re-write the Guidelines paragraph I flag up here, to make it stricter than it is now.

I suspect that my point of view, based on device claims, is different from those who operate in the “unpredictable” chem/bio space. But whatever. I still think that, given Art 69 EPC, it is unconscionable of the EPO, during pre-issue ex parte proceedings, to impose on Applicants an obligation to label “NOT the invention” everything disclosed that lies outside the explicit text of Claim 1. A patent is to protect an invention, so the scope of protection is what protects “the invention”. The consequence is that “the invention” means something different from the strict literal wording of claim 1.

Daniel, Francis, Mike, help me. If I am still not “getting it” still going astray, what is it that I am not seeing?

Mike Snodinsays:

Max, you are not “getting it” because you have not travelled the path of enlightenment to reach the one true interpretation of Art 84 EPC.

To be honest, I have not travelled that path myself. This is because I keep doubting the teaching of the enlightened ones when they tell me that Art 84 EPC requires the description to be supported by the claims. I struggle with this not only because this is the precise opposite of the plain meaning of the wording of Art 84 EPC, but also because the very title of Art 84 EPC (“Claims”) makes me doubt that it can possibly include any requirements regarding the form or content of the description.

There also are other reasons why I struggle to take the path that leads to enlightenment. They all relate to nagging doubts that I have based upon logic, and upon the results of interpretation of Art 84 EPC using the various methods permissible under the VCLT.

For example, logic leads me to believe that, during the legislative process, amendments to the wording of a draft provision are made for a reason. It is conceivable that the reason is that the original and amended wording mean the same thing, and it is just that the amended wording is more concise. However, whist conceivable, that is not a probable reason. Far more likely is that the amended wording means something different. Thus, when interpreting a provision in the light of its travaux préparatoires, my understanding is that one starts with the rebuttable presumption that different wording has a different meaning (which is the converse of the rebuttable presumption that the same wording – in different parts of the same legislation – has the same meaning). Whilst I am told by enlightened ones that my presumption is wrong, they do not provide me with any facts or evidence to rebut that presumption.

I keep seeking to understand the deep truths that lead to enlightenment. However, all I have found so far is a fog of allegations, accusations and evasions … and nothing in the way of concrete evidence or logical analysis that might persuade me to believe.

Max Dreisays:

Mike, your post of today prompted me to go back to Daniel Thomas’ of yesterday and notice for the first time his “vice versa”, to the effect that Art 84 EPC requires the claims to support the description. I suspect that M. Thomas wanted only to say with his “vice versa” that if the claims and description contradict each other then Art 84 “support” is lacking.

The EPO is the only Patent Office without a court to tell it what is the law. Its success in developing the world’s best and clearest body of case law on patentability might have given rise to a degree of complacency, that “Mother always knows best”.

Mike Snodinsays:

Max, perhaps that is so. However, it remains the case that Art 84 EPC imposes requirements that relate solely to the claims. I therefore find it weird that the EPO should derive from Art 84 EPC alone a requirement for amendment of the description. Whilst I can follow the train of thought, it arrives at a strange destination, namely one in which the claims are viewed as “unsupported” by an original description but “supported” by a description that has been much reduced in content (by deletion of passages allegedly not relating to the invention according to a strict, literal reading of the wording of the claims).

Max Dreisays:

Mike I personally don’t find the “destination” as “strange” as you. When the application was filed, there was nothing in the description that contradicted the independent claim. But when the claim is narrowed during prosecution, it can happen that Examples of “the invention” become comparative Examples. To allow the description to remain unconformed is to go to grant with a description that contradicts the allowed claim.

As I mentioned in an earlier post, if you see “support” as meaning “corroborate” that would legitimate the EPO’s current strict line. But like you, I think that when Art 84 was drafted, it was not the intention to require the description to corroborate the claim. Description and claim perform two utterly different, albeit complementary, functions. To require one of them to “corroborate” the other therefore makes no sense and cannot be what the legislator intended.

Avatar photoDaniel X. Thomassays:

Dear Max Drei,

I am clearly at my wits end and the way the Guidelines are drafted and interpreted corresponds to my long lasting practice at the EPO. What else can I actually say?

I certainly do not wish to repeat once more what I have said.
We might not be on the same wavelength, but it is like it is, and I cannot change it.

One thing is however clear, the EPO is not telling a court what is the law.
Otherwise we would, for instance, not have had the pemetrexed decision of the UKSC.
I do however maintain that in the pemetrexed case the description should have been better adapted to the actual contribution to the art which was reflected in the granted claim.

I would be careful to claim that the EPO is the only Patent Office without a court. The members of the BA consider themselves members of a court. This is also reflected in Art 12(2) according to which “the primary object of the appeal proceedings to review the decision under appeal in a judicial manner”.

Although I do not agree with Sir Robin Jacob when he considered in the pemetrexed case the examiner was manifestly wrong, I would just report what he said in Lenzing AG’s European Appn. [1997] RPC 245: “The fact is that the members [of the boards of appeal] are independent in their judicial function and that independence is guaranteed by the EPC itself. They are judges in all but name – and it is rather a pity that they were not so-called by the Convention.”

One can have some reasonable doubts about the independence of the boards following the reform of 2016 and the odd decision of the EBA, e.g. G 3/19, but their status as judicial body cannot really be put into question.

Avatar photoDaniel X. Thomassays:

Mr Snodin,

I have nothing to add following my last reply of earlier today.

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