EP 2 741 400 B1 relates to a motor rotor and a motor having same.
Brief outline of the case
The opponent withdrew its opposition before the decision of the OD
The OD revoked the patent and the proprietor appealed.
The board set aside the OD’s decision and remitted for further prosecution.
When remitting, the board noted that the OD will first have to decide under R 84(2) whether it should still continue the opposition proceedings of its own motion.
The problem in this case lies in an amendment suggested by the ED in the communication under R 71(3).
The ED’s amendment
The amendment from “axis” to “d-axis” has been proposed by the ED in the text intended for grant annexed to the communication under R 71(3).
Moreover, as indicated in that communication, this amendment had been done to “better define the axis and to avoid confusion with the rotating axis of the rotor”.
The OD’s decision
In view of the amendment carried out, the OD concluded that claim 1 as granted infringed Art 123(2) and that claim 1 according to each of AR I to XVII contravened Art 123(3).
The OD held that a correction under R 139 was not allowable, because it was not obvious for a person skilled in the art that an error had occurred in granted claim 1 in the amendment “perpendicular to the d-axis of the rotor”.
In the contested decision, the opposition division concluded that replacing the term “d-axis” by the term “axis” contravened Art 123(3).
The proprietor’s requests
The proprietor requested that the correction of “d-axis” in claim 1 of the patent as granted to “axis” in claim 1 of the new MR be allowed as a correction of an obvious error under R 139, or, if that was not possible, that the amendment be admitted under R 80.
The board’s decision
Correction under R 139
The board held that, although the reasons given by the OD for its conclusion are not correct, the board has reached the same conclusion, namely that the amendment made in the present main request cannot be allowed as a correction of an obvious error under R 139.
The proprietors’ request, relying on R 139, seeks in principle to reverse an erroneous correction made by the ED in the “text intended for grant” annexed to the communication under R 71(3), which was subsequently approved by the applicants/proprietors.
R 139, however, may not be used to correct the content of the decision to grant, thereby circumventing the restrictions under R 140, cf. G 1/10, Reasons 9 to 11.
Furthermore, as found by the board in T 0506/16, cf. Reasons 5, R 139 is only applicable to documents filed with the EPO and does not extend to documents issued by it, e.g. the decision to grant.
This is clear from the wording of R 139 -English: “filed with”; French: “produit[-] auprès”; German: “bei[-]… eingereicht”-.
When applied to opposition proceedings, this means that R 139 only applies to documents filed during opposition proceedings, see Guidelines H-VI, 2.1.1.
Amendment under R 80
As found by the EBA in G 1/10, Reasons 13, during opposition proceedings, it is always open to a proprietor to seek to amend his patent and such an amendment could remove a perceived error.
Accordingly, Art 123(1) states that the European patent application or European patent may be amended in proceedings before the EPO.
Furthermore, according to R 80, the description, claims and drawings may be amended, provided that the amendments are occasioned by a ground for opposition under Art 100, even if that ground has not been invoked by the opponent.
The amendment made in claim 1 of the MR is clearly occasioned by a ground for opposition, namely the ground for opposition under Art 100(c).
Admissibility of the amendment – Art 123(2)
The amendment in claim 1 according to the MR from “d-axis” to “axis” restores the wording to what was originally disclosed, inter alia, in originally filed claims 1, 6 and 9 and paragraph [0035], lines 35 to 38.
Consequently, the amendment meets the requirement of Art 123(2).
No extension of the protection conferred by the amendment – Art 123(3).
Claim 1 as granted includes the wording “perpendicular to the d-axis of the rotor”.
The skilled person in the field of motor rotors is familiar with the terminology and context of both mechanical and electrical/magnetic components in motor construction. In particular, the skilled person is well aware that a rotational axis of an electric machine is not normally referred to as “d-axis”, as correctly argued by the appellants.
According to the common general knowledge of the skilled person, the term “d-axis” defines the direction of magnetic flux in an electric machine. That means, the “d-axis” refers to the magnetic system of the electric machine rather than to the mechanical system of an electric machine.
In the board’s view there can be no doubt, however, that the skilled person would have recognised the purely mechanical nature of claim 1.
For the board, it was clear from the overall context of claim 1 that it refers to the physical structure of the motor rotor and that claim 1 in no way refers to the electrical or magnetic properties of the rotor.
Therefore, although the term “d-axis” normally refers to a magnetic property of the rotor, the skilled person would have readily recognised that the wording “perpendicular to the d-axis of the rotor” does not refer to an axis in the magnetic system of the rotor, since this would be in complete contradiction with the overall wording of the claim and, in particular, because the rotor simply does not have a “d-axis” in the mechanical sense, as was rightly argued by the proprietors. In this context, it should also be noted that the claim itself does not contain any definition of the “d-axis” of the rotor.
This understanding of claim 1 is fully consistent with the description and drawings of the patent, which are to be used to determine the scope of protection in accordance with Article 69 EPC and the Protocol on its interpretation.
Comments
Amendments in the communication under R 71(3)
The present case illustrates once more that amendments accepted by the applicant/proprietor in the communication under R 71(3) can give raise to big problems, and even become a trap in opposition.
It is irrelevant whether the amendment has been suggested by the ED. By accepting it, the applicant/proprietor is bound by the text in which the patent was granted.
It is well known that EDs hope by announcing the grant of a patent, the applicant will be minded to admit such amendments. It is actually a form of inacceptable arm-twisting by EDs and cannot be excused by the pressure on EDs to increase production.
In principle any amendment of a claim in a communication under R 71(3) is not a minor amendment of typographical nature. EDs should refrain from carrying out such amendments and should inform the representative before issuing the communication under R 71(3).
In order to put a stop to these abuses, amendments in the claims in the communication under R 71(3) should be systematically refused by applicants.
In the present case, re-establishing the original wording was allowable, as it was in accordance with Art 69(1) and the Protocol on interpretation.
There are however other cases in which the proprietor sits in an inescapable trap, cf. G 1/93.
Correction under R 139
It was an interesting attempt by the proprietor to seek a correction under R 139, but this attempt was doomed to fail. R 139 rule is not there to amend the text of a granted patent as provided for in G 1/10.
A useless amendment
In view of the board’s decision, and especially in view of the argumentation under Art 123(3), it can even be argued that the amendment of claim 1 before grant was unnecessary.
Comments
10 replies on “T 190/21 – On the consequences of an amendment carried out by the ED in the communication under R 71(3)”
An interesting case.
My recollection is that, according to established case law, determining compliance with Article 123(3) EPC permits the EPO to depart from their general practice of not relying upon Article 69 EPC (and its Protocol) to interpret the claims. The reference to Article 69 EPC in the decision is thus perfectly understandable in this context.
What is interesting, however, is how the Board moves seamlessly from discussing an “understanding” of claim 1 (ie an INTERPRETATION of that claim) to discussing how Article 69 and its Protocol support that understanding. This illustrates for me the fact that interpreting a claim and determining its extent of protection are two sides of the same coin. That is, they are activities that are inextricably linked to one another, with the consequence that it makes no logical sense to apply certain rules to one activity but not to the other.
@ Doubting Thomas
I can follow your argumentation to a certain extent.
There is however one fundamental difference with a national patent system in which the granting authority and the bodies deciding on litigation/infringement are part of a single unified national system and the EPO, in which grant is separated from litigation/infringement.
This is due to historical reasons. Otherwise we most probably still be without EPs as we know them. The problem of interpretation of the claims during prosecution before the EPO and before national courts is is one of the difficulties resulting from the conditions under which the EPC was negotiated, signed and ratified. It took more than 40 years to come up with a “unified” (?) litigation/infringement system following the grant of a EP.
Opposition is an exception in the post-grant life of a granted EP. After grant, the EPO loses competence over the fate of a EP. It only regains competence through an opposition procedure.
It was thus necessary to insure, after opposition, that third parties would not be confronted with a broader patent than the one granted. This is the reason d’être of Art 123(2). If the patent is maintained as granted, the situation does not change for third parties. If the patent is maintained in amended form, this can only be with a reduced scope of protection. If the patent is revoked, it is bingo for third parties.
In opposition, it is for instance possible to go from a product claim to the use of the product or a process for the manufacture of a product, but the opposite way is not allowable as it would increase the scope of protection.
Examining the scope of protection in opposition cannot, in my opinion, be compared with defining the scope of protection when it comes to litigation/infringement after grant.
This is also the reason why there is a protocol on interpretation on Art 69. A balance should be found between the old strict or literal interpretation valid in the UK, and the more lenient interpretation valid in Germany. Just think of Improver/Epilady.
This is one of the difficulties which will have to be resolved by the EBA in G 1/24.
Well, at least we can agree on a few points, if not the most important ones.
I honestly struggle to understand where you believe there is legal basis for your view that (certain) rules for determining the extent of protection should not be applied during prosecution.
This is not just because claim interpretation and extent of protection two sides of the same coin. It is because the former is the essential precursor to the latter. That is, one cannot determine the extent of protection without first understanding the meaning of the terms used in the claims to define the subject matter of the invention. Indeed, at least the second sentence of Article 69(1) EPC is wholly dedicated to stipulating how the claims should be INTERPRETED.
Regarding the TP for Article 69 EPC, it is interesting to note that these discuss alternative versions of that provision which would have broadly aligned with the EPO’s current practice (ie permitting the description and claims to be consulted only when the wording of the claims is not entirely clear). The trouble is, however, that those alternative versions of Article 69 EPC were explicitly REJECTED by the legislator, in favour of the current wording, which stipulates that “the description and drawings SHALL be used to interpret the claims”.
For this reason, I view the TP to Art. 69 EPC as being far more supportive of my position than yours. However, I would be interested to lean whether you have spotted anything in the TP which may have escaped my attention.
@ Doubting Thomas,
We are actually back in a situation like when it came to the adaptation of the description.
If you struggle to understand my position, there are two possibilities. Either you really do not understand and I am deeply sorry for you, or you are not willing to understand, which is equally bothersome. I leave an answer on those two possibilities open.
The intention of the legislator was clear: the claims ought to be interpreted with the help of the description. If the situation would have been as clear as you make out, there would not have been necessary to add a protocol on interpretation of Art 69 in order to decide in case of litigation/infringement.
I invite you to look again at the TP leading to Art 69, to see which organisations have pleaded for a protocol of interpretation as well as the reasons therefore. The problem was not the interpretation of the claims during prosecution but in the following national phase in case of litigation/infringement. You have not given one thought to the history having led to the EPO and the actual cut-off point between the issue of the IP title and its use vis-à-vis third parties..
You think that your interpretation is the only correct one and should be accepted. I cannot agree on such an apodictic position.
I have given my reasons, and there is no need to repeat them here. That the boards have for instance decided that, if a claim as such is clear, there is no need to look at the description to interpret the claims is in line with the considerations having emerged in the TP. Art 69 was a compromise and as all compromises it has it pros and cons.
In opposition, in view of Art 123(3) it is important to check that there is no extension of scope, and here a reference to Art 69 is necessary. In my opinion the boards in doing so are acting in the spirit of all the considerations which emerged during the discussions leading to Art 69.
It is in my opinion, a new generation of legal members of the boards, mainly coming from one member state in which any decision on a claim is necessarily preceded by an interpretation of the claim which want to impose this national view at the EPO. According to those LM, even the application of Art 123(2) should be preceded by an extensive interpretation of the claims according to Art 69.
This would mean for instance, that in the Improver/Epilady case, the applicant should have been allowed to add an embodiment with a rubber rod having slits, or in the Eli Lily case that a general claim to pemetrexed should have been allowed as suggested in the UKSC decision. This goes way to far during prosecution, but is acceptable in litigation. If this line would be followed all the EBA decisions relying on what is directly and unambiguously derivable should be binned.
This s why it was necessary to have the referral G 1/24.
Like in the case of the adaptation of the description, I have said what I have to say and I do not intend to continue a fruitless, not to say useless, discussion. I will leave you to your convictions, but I will not have those imposed upon me.
There is a third possibility: I understand what you are saying but struggle to understand how the legal standards that you set forth can possibly be derived from the EPC.
However, unless there is a typo in your comment, there is a chance that I may now understand your position. This is because you appear to agree with me that “the claims ought to be interpreted with the help of the description”. In essence, that means systematic application of at least the second sentence of Art. 69(1) EPC. I think that would be a reasonable compromise position for the EPO to adopt, as I agree that assessing equivalence only makes sense in the context of infringement (ie when there is an allegedly “immaterial variant” of the claimed invention that can be assessed under national tests for infringement by equivalence).
On the other hand, if you are still keen to keep consideration of even Art. 69(1) EPC out of (almost all) claim interpretation exercises during first instance proceedings, then we will have to agree to differ. This is because I simply do not see anything in the EPC (or the TP to that Convention) that could possibly justify applying the MANDATORY rule of the second sentence of Art. 69(1) only to a few, selected proceedings.
Thank you, Mr Thomas, for highlighting this interesting decision. I can only agree that arm-twisting is unacceptable. It is good to see the board take a pragmatic approach in this case but future applicant’s might not be so lucky. With J 01/24 providing a mechanism to appeal grant decisions, amendments made by the examiner in the R.71(3) might become a regular theme for appeals, further to how they are used for R.71(6).
Thanks for drawing the attention to J 1/24. We should also not forget that R 71a defines when examination is over. In combination with R 71(3) and 71(6), applicants can react to undue amendments carried out by EDs.
One thing should be clear: any amendment to the claims in the communication under R 71(3) is taboo, unless the applicant has been informed in advance, or at least provisionally agreed.
Even if it makes life easier for EDs, It is neither their duty nor their competence to define the wording of the claims, but this exclusively applicant’s duty and competence, cf. Art 113(2). The job of an ED is simply to decide whether the text submitted by the applicant is conform to the EPC.
Suggesting, during examination, patentable subject-matter can certainly bring matters forward, but it might not necessarily correspond to the applicant’s requirements and necessities. EDs should thus not be surprised if an applicant does not follow such a suggestion.
I appreciate Mr Thomas’ positions regarding amendments entered by the ED for the adaptation of the description to the claims at the R 71(3) stage.
The EPO appears to have recently changed tack on this issue, in a direction which is good news for applicants. This seems clear from convergent developments :
The SQAP 2023 report (Annex of the EPO Quality Report 2023) based on the audits of granted patents by mixed panels each including 2 EPO examiners and 2 external assessors, contains critical comments on the issue. I quote a relevant excerpt of this report :
“ Consensus on opportunities for improvement
Lack of harmonisation concerning the adaptation of the description.
Objections relating to adaptation of description can sometimes be vague and unsubstantiated, making it hard for applicants to understand the issues.
Sometimes objections relating to adaptation of description are raised late, with communication under Rule 71(3) EPC.
Amendments are often proposed with the communication under Rule 71(3) EPC without consulting the applicant. “
The 2024 revision of Guideline F-IV, 4,3 now states that “any inconsistency between the description and the claims must be avoided if it throws doubt (instead of “if it could cast doubt” in the 2022 version) on the subject matter for which protection is sought”. The revision substitutes the present tense for the conditional.
According to the feedback of a colleague very active in EPO prosecution, there has been a spectacular drop of EDs’ amendments at the 71(3) stage since April or May 2024.
It is also of note that the EPO management has convened a meeting of the SACEPO Working Group on Quality in November dedicated to clarity. I guess the issue of description adaptation will be on the agenda.
Another recent development of interest relates to T 56/21 in which the BOA indicated on 21 July 2023 its possible intention to refer the issue of description adaptation to the EBA. A third party observation submitted on 24 June 2024, noting that the appeal (filed in November 2020) is 45-month old and that BOA has not confirmed the referral 11 months after its communication, inquires about the BOA’s intention.
Mr Hagel,
You seem to have misread my post. What I queried and do not find acceptable at all is that EDs bring in amendments to the claims in the communication under R 71(3).
That EDs bring in other amendments, like adapting the description was not the topic of the blog. I can just agree that those can also be a nuisance and examiners should be very careful when doing so.
I would still claim that if the subject-matter of a dependent claim is introduced in an independent claim, an ED is entitled to delete the term “optional” or the like by which dependent claims are presented in the description. The discussion is more delicate when it some original embodiments are not any longer patentable.
If applicants have noted an improvement when it comes to amendments of the description, I am pleased for them. This does however not mean that the description need not be adapted. The tightening of the Guidelines in this matter was due to the DQA’s findings that there was a lack of consistency in the adaptation of the description. The pendulum might thus swing back, but it is not certain that it will stop in the middle.
As far as the referral in EP 3 094 648 (Appeal pending under T 56/21) is concerned, there is not only one new anonymous TPO but a second anonymous TPO.
The first TPO of 20.06.24. indeed noted that the file is now idling at the board for 45 months, well above the timelines objective of the 30 months, and 11 months have passed since the board announced a possible referral.
The second TPO of 27.06.24, referred to EP 2 566 904 in which the OD has revoked the patent for lack of adaptation of the description over AR1 deemed allowable by the OD. In EP 2 566 904, the proprietor has filed a notice of appeal on 02.09.24.
There are numerous decisions of the boards requiring adaptation of the description in opposition, some of them commented in this blog. As examples see T 1695/21, T 447/22, T 673/22 or T 1997/22.
The second TPO has been sent to the applicant on 01.07.24.
In view of the referral G 1/24 on interpretation of claims, I doubt that the board in T 56/21 will send a referral to the EBA before the decision in G 1/24 is issued.
A referral under T 56/21, would more or less imply a production stop, not only for the boards, but also for the first instance divisions. In view of the president’s decision with reference to G 1/24, it is doubtful that a stay will be ordered in case of a referral in T 56/21.
@ Doubting Thomas-Reply to the comment of 04.09.24
There is no third possibility and there is no typo in my comment.
My position is quite simple: if a claim is clear for the skilled reader, there is, as such, no need to interpret the claims on the basis of the description according to Art 69(1), and even less according to the protocol on interpretation.
If the description gives a more restricted definition than that the skilled person gains directly and unambiguously when reading the claim, then this restricted definition cannot be read into the claim in spite of what Art 69(1) might say. The same applies in the other direction, if the description allows a broader interpretation of the claim.
If there is a discrepancy between the description and the claims, there are mechanisms provided to establish correspondence between what is claimed and what is stated in the description, e.g. Art 123(2) or Art 84.
For instance, if the disclosure says pemetrexed disodium, then a claim to pemetrexed as such offends Art 123(2), contrary to the opinion of the UKSC and of Sir Robin Jacob.
If the claim speaks about a ventilator, and the applicant/proprietor defines in the description a ventilator as a device exclusively blowing hot air, this limitation has to be included in the claim. It cannot be left to third parties to have to look at the description to know that the definition of a ventilator given by the applicant/proprietor in the claim differs from that in the description. It could even happen that such a claim lacks N over a piece of prior art.
If checking the claims against the description, and insuring their mutual coherence, is not interpreting the claim in the light of the description as required by Art 69(1), what is it then? What else is there to interpret?
Besides checking the correspondence between claims and description, I am not in favour of a systematic application of Art 69 in procedures before the EPO, but mainly in opposition when it comes to assessing the scope of protection in view of Art 123(3).
You seem to willingly forget that the EPC has instituted the supremacy of the claims, contrary to national “integrated” systems. This is best to been seen in the light of the obligation to file a translation of the claims in the two other official languages of the EPO in order to obtain the grant of a patent or its maintenance in amended form.
In the examples given above Art 69(1) has been applied, even if was indirectly. Trying to conjecture what else could fall under the scope of the claim is not part of the duty and the competence and the EPO.
Furthermore, the whole line of case law established over the years when it comes to what is “directly and unambiguously derivable” from the original disclosure would, in my opinion, be jeopardised should Art 69(1) be systematically applied in all procedures before the EPO.
We are thus plainly of a different opinion, and that’s it. We already came to this conclusion when dealing with Art 84, support.
By the way, just a reminder: the topic of the blog was and still is ex-officio amendments by an ED in the communication under R 71(3) and not the application of Art 69(1) in the procedures before the EPO. We should at least stop this discussion in the present forum.