The patent relates to a method of printing ink and in particular to a method of printing UV-curable ink.
Brief outline of the case
Contrary to the OD, the board considered that the new MR filed during opposition was not unduly extended.
It has further decided that the MR was patentable over all documents cited by the opponent.
The proprietor requested that the case be remitted to the opposition division for adaptation of the description. The opponent was against remittal.
The board decided remittal to the OD in order to adapt the description.
The board’s reasoning
The board held that Art 11 RPBA20 only applies to cases that are remitted “for further prosecution“.
The board added that Art 11 RPBA20 does not apply to cases that are remitted with an order by the board to grant a patent or to maintain a patent in amended form, be it with or without adaptation of the description. The board referred to document CA/3/19, section VI, explanatory remarks on Art 11 RPBA20, second paragraph; as well as Supplementary publication 1, OJ EPO 2022, Annex 2, explanatory remarks on Art 11 RPBA20.
Based on established case law, the board held that, in order to meet the requirement of Art 84 that the claims be supported by the description, any disclosure in the description and/or drawings inconsistent with the amended subject-matter should normally be excised and referred specially to T 977/94, point 6 of the Reasons, and T 1808/06, point 2 of the Reasons.
The opponent argued that the examination of whether the description and/or drawings of the patent are consistent with the current amended claims of the main request, i.e. whether the requirement of Art 84 is met, is not straightforward in the case at hand, even considering the amendments made on description pages 3, 5 and 6.
The board considered that the adaptation of the description to the amended claims must be done carefully to avoid inconsistencies between the claims and the description and/or drawings which might render the claims unclear or unsupported. At the same time, care must be taken not to make more amendments to the description than necessary. Amendments to the granted patent directly affect the version in which the patent is to be maintained as amended, and therefore concern – as a rule – the core issue of the opposition or opposition appeal proceedings.
It follows that the adaptation of the description and/or drawings of the patent in suit requires due care and may require a considerable amount of time for evaluating and arguing by the opponent and the opponent and the EPO. The opponent must be given sufficient time to formulate any objections and the proprietor must have sufficient opportunity to respond to such objections.
The board considered it appropriate to remit the case to the department of first instance only for adaptation of the description in accordance with Art 111(1), second sentence.
The board explained in a detailed manner why it considered necessary to remit to the OD in order to adapt the description.
The board acknowledged that remittal in order to adapt the description does not correspond to the explanatory notes on Art 11 RPBA20 in which the following is stated that
In particular, Art 11 RPBA20 does not apply to cases that are remitted with an order by the Board to grant a patent or to maintain a patent in amended form, with or without the description to be adapted. In principle it only applies in case of “further prosecution”.
T 977/94 is interesting. In T 977/94 the board considered that although Art 111(1) permits remittal to the first instance department in order to adapt the description, for reasons of procedural economy it is advisable to avoid as far as possible referring the case back to the first instance to adapt the description to the amended claims.
The board added that indeed, the Board of Appeal which has found the invention defined in the claims to be patentable is a priori in a better position than the OD to check the adaptation of the description in order to set out the same invention.
T 977/94 is in line with the explanatory notes on Art 11 RPBA20, although it goes back to December 1997, i.e. 25 years ago!
The notion of procedural economy has evolved with time as the RPBA20 tell us.
Reduction of the backlog of the BA was a prime aim of the RPBA20 although it was never said directly and unambiguously.
5 replies on “T 1968/18 – Remittal in order to adapt the description – Yes or No?”
Frankly, Daniel, the “detailed reasoning” of this Board, in this Decision, why the case has to be remitted to the Examiners to oversee the process of conforming the description with the allowable claims, leaves me thinking that the members of the Board have been following the current debates, on the blogs, about the unavoidable delicacy and difficulty of amending the description to achieve the level of conformity demanded by the established case law of the Boards of Appeal.
That, or they are familiar with the text of successive issues of The Guidelines and this has left them thinking, OK, if the Examiners are the ones pushing to degrees of conformity even higher than demanded by TBA jurisprudence, then it is only right that they (and not the appeal instance) should be visited by the consequences of their actions, and accordingly be awarded the job of overseeing and umpiring the frustrating, time-consuming and exhausting process of conforming the description.
Another step, perhaps, in the march towards a referral to the EBA of the issue of “conforming” the description?
It is not only notions of “procedural economy” that evolve with time, in multi-jurisdictional Europe. Courts learn from each other, even on issues of substantive law, and their case law evolves accordingly.
Dear Max Drei,
Following the case law in matters of remittal in order to adapt the description, the practice of the boards has not changed for many years and certainly not under Art 11 RPBA20.
For a very long time, going back to the early days of the EPO, the boards have systematically remitted to the ODs in order to adapt the description.
The interpretation of Art 111 by the boards is we “pick out” what we want, and what we do not want to be bothered with, we simply remit as Art 111 allows us to do.
According to Art 11 RPBA20, remittal should in principle be avoided in order to reduce the likelihood of a “ping-pong” effect between the Boards and the departments of first instance, unless special reasons present themselves for doing so.
One example of special reasons is a substantial procedural violation. Another reason, is that when a board considers that when there is N, sufficiency, clarity or no added-matter, then the case is remitted for further prosecution that is examination of IS in the first case and examination of N and IS in all the other cases.
In such a situation ping-pong cannot be avoided.
The present board has had a look at the explanatory notice of Art 11 RPBA20 and has realised that “further prosecution” does not apply when there is remittal with an order by the board to grant a patent or to maintain a patent in amended form, with or without the description to be adapted.
The reason is much less complicated as you might think. I would go as far as to say that the reasons are much simpler and rather very prosaic.
The boards are very much aware that adaptation of the description can be a frustrating, time-consuming and exhausting process.
I explained to you in IPKat that I have witnessed impressive battles on the adaptation of the description after remittal which went on for nearly a whole day.
If the boards would have adapted the description all this hassle in first instance would not have been necessary.
I allow myself to claim that the boards simply do not want to be bothered with the adaptation of the description.
If they would decide through, the registrars of the boards would have to carry out all the formalities up to grant or maintenance in amended form.
This is as such not complicated, but also takes time and manpower.
So it is much simpler to remit to departments of first instance in order to carry out those ancillary tasks.
I call this another form of “procedural economy”.
The whole RPBA20 are about “procedural economy” for the boards.
If there is “procedural economy” for the office as a whole is secondary to the boards.
They can reduce their backlog and that’s it.
It is worth noting that the case is not remitted when the refusal is confirmed or the patent revoked as those ancillary tasks are simple and do not cost much time to the registrars.
Your motives for remitting are very grand and honourable, but they do not resist reality.
As far as a march towards a referral is considered, I explained many times that a referral is not to be expected from the president. What is done corresponds to the Guidelines.
A referral can thus only come from a board. Will a board be as daring as to act against the will of the upper management?
Even if one dared, a proper composition of the EBA could confirm the office policy.
We have seen that in G 3/19, with the referral by the president, and in G 1/21 with a referral from a board.
In my opinion, the EPO is not prepared to change its position on the adaptation of the description in spite of what may happen in multi-jurisdictional Europe.
Thank you, Daniel, for a very persuasive reply. The Boards made the law on conforming the description, but can (and do) delegate to the Divisions the burden of implementing it.
The puzzle that remains, for me, is this. If the President wants to maximise the profitability of the Office, he should get his managers to reduce to a minimum the amount of time each Examiner has to spend on each patent application. Doesn’t Presidential insistence on strict conformity conflict with the Presidential drive to reduce costs to the bare bone?
Why is strict conformity so important to the EPO President? Why doesn’t the President instruct his upper management to draft a referral to the EBA that teaches the EBA the way to go, to deliver what its employer expects of it? As for the external members of the EBA, will they block a move to sweep away the requirement for strict conformity? I very much doubt it.
Dear Max Drei,
It was abundantly clear at the end of 2018 that the RPBA to come would render the whole procedure front loaded and put much more pressure on first instance departments.
The aim at the time was to reduce the backlog of the boards and to me the price to pay was to load the first instance department.
It is a question of taking and giving. By giving in at one place, you can get a return on investment at another place.
Your idea is a good one, but it would think that with a proper choice of the internal EBA members any desired result might be obtainable. I already referred to G 3/19 and G 1/21.
The external members are at best two. With 5 internal members, they will not tip the balance, they can make the discussions within the EBA longer but not much more.
I am therefore of the opinion, that a referral to the EBA, will not sweep away the requirement of strict conformity. At a pinch, I imagine that it could signify that the Guidelines were wrong.
I cannot imagine such an acknowledgment at least in the near or medium future.
We have arrived in the sphere of politics and what you or I might think is irrelevant.
As you say, Daniel. We have reached a position where:
“….with a proper choice of the internal EBA members any desired result might be obtainable”.
Exactly: My thinking was that if the President wants to get rid of that EPO anomaly called “conforming the description” and thereby prune back further the number of skilled employees at the EPO, all he has to do is pack the EBA with stooges willing to do his bidding, and instruct them to discover the necessary legal reasoning. The two external members won’t put up any resistance.