The patent relates to a “Method for obtaining improved mechanical properties in recycled aluminium castings free of platelet-shaped beta-phases”.
Brief outline of the case
In an earlier decision T 1051/17, the board remitted the case to the OD with the order to maintain the patent in amended form on the basis of the sole request filed as auxiliary request III on 15.10.2019 and a description to be adapted.
Opponent 1 appealed the OD’s subsequent interlocutory decision that the patent could be maintained on the basis of the above-mentioned request and the description and figures of the patent as granted, except for paragraphs [0001], [0013], [0015], [0016], [0018], [0024] and [0025] which were filed on 10.12.2020.
In reply to the appeal, the proprietor filed a MR corresponding to the form as maintained by the OD, and a AR with a description further amended.
The board dismissed the MR but considered the AR allowable.
The board thus ordered maintenance according to the AR with a very specific set of amendments to the description.
The opponent’s point of view
In its statement of grounds of appeal, the opponent raised two objections under Art 84.
In his first objection, the opponent considered that the claims were not supported by the description as amended. During the first opposition appeal procedure, the claims were limited to a casting and did not any longer relate to an alloy (as granted). This change was not reflected in the amended description accepted by the OD.
The opponent’s second objection concerned paragraph [0030]. In its opinion, the amendment including “as defined in claim 1” did not remove the doubt as to whether additional elements may be added, outside the closed composition in claim 1. There was thus a further contradiction.
The proprietor’s point of view
The proprietors defended the patent as maintained by the OD and, as an AR, filed a description in which paragraphs [0017], [0022] and [0030] had also been amended.
The board’s decision
Main request
The board held that it follows from the requirements of Art 84 that the claims define the matter for which protection is sought and that they are supported by the description. In addition, the description should be consistent with the claims and should not cast doubt on the intended scope of protection.
Claim 1 was amended during the opposition appeal proceedings to specifically relate to a process for the preparation of an iron containing aluminium alloy casting.
The independent claims thus relate to a process for producing the iron containing aluminium alloy casting, an aluminium alloy casting, the use of the aluminium alloy casting and a component made from the aluminium alloy casting.
The description in paragraphs [0017] and [0022], however, refers to “the iron-containing aluminium alloy of the invention” and “the process for the preparation of the aluminium alloy of the invention“, respectively, suggesting that the invention is an alloy as such and the preparation of an alloy as such.
An alloy as such is a broader technical concept than an aluminium alloy casting. The indicated parts of the description are therefore inconsistent with the claims.
Furthermore, there is no reason why the term “casting” was inserted in paragraphs [0015] and [0016] but not [0017], and why it was inserted in paragraph [0018] but not [0022].
For the board, the requirements of Art 84 were not met.
Auxiliary request
Paragraphs [0017] and [0022] now refer to “castings“, thus removing the inconsistency present in the MR.
For the board the second objection was dismissed, as no contradiction was present.
Paragraph [0030] states that “besides the additions of Mn, Cr and V other elements as defined in claim 1 may be added for other purposes”. It is thus clear that it refers to those elements which are specified in claim 1.
The wording that elements are “added” does not lead to a different conclusion, but parallels the use of the word “additions” for Mn, Cr and V, which are also specified in claim 1.
Comments
Further to T 438/22, commented in this blog, we have a further decision in which the board exemplified once more what has to be understood under support by the description pursuant Art 84.
T 438/22 related to the adaptation of the description after amendment of the claims during examination and before grant.
The present decision, T 1997/22, relates to the adaptation of the description after amendment of the claims during opposition and before maintenance in amended form.
Art 84 comprises two different aspects, clarity as such and support by the description.
In order for a patent to be granted, or to be maintained in amended form, both requirements have to be fulfilled.
The present decision comforts the long line of case law exemplified in T 438/22.
In view of the comments about T 438/22 in my blog, I doubt that the discussion on adaptaton of the description will end with the present one.
Should a referral on the adaptation of the description ever reach the EBA, I take bets that the EBA will endorse the long lasting line case law. What will be interesting will be the argumentation.
I do however maintain that a referral on the application or not of Art 69(1) and the Protocol in all procedures before the EPO and not only in opposition when it comes to the requirement of Art 123(3), would be more useful.
https://www.epo.org/en/boards-of-appeal/decisions/t221997eu1
Comments
12 replies on “T 1997/22 – Adaptation of the description – No contradiction between amended claims and description”
Looking at Reasons 2.1, there is nothing in T 1997/22 for those looking to understand the reasoning underpinning the Board’s interpretation of Article 84 EPC:
“In addition, the description should be consistent with the claims and should not cast doubt on the intended scope of protection. This was not contested.”
Let’s see if there is any Board who can improve upon the noteworthy (but, in my view, ultimately unpersuasive) effort made by the Board in T 438/22.
@ Doubting Thomas alias Proof of the pudding,
Please refer to my replies to your comments in the publication about T 438/22.
There is no more to say.
For me, this Decision is troubling. I can see why the EPO is at pains to refuse an application when the description contradicts the claims but have difficulty to accept excessively strict notions of what it takes for a decription to be “consistent” with the claims. As here. When the claim is directed to a casting made of an aluminium alloy and the description refers to the alloy of the invention, how is that “inconsistent”? In the invention there is an alloy. So, the invention involves an alloy. So how can it be objectionable to refer in the description to the alloy of the invention? To my mind, it is going too far to derive from the phrase “alloy of the invention” a teaching, an announcement, that the invention is an alloy “as such”, to argue that nothing else is derivable but that the invention is an alloy as such and then abuse their authority by stating, Sorry, but now that I have made this assertion, Applicant has the burden to prove that it is not well-founded.
But, hey, I’m just an English native speaker, and that it not the language of the proceedings. The three languages at the EPO are German, French and Globish. English native speakers, in the interests of their clients, must learn to express themselves in language that will be correctly understood by Patent Offices and courts in which English is understood as a foreign language. Learn a bit of humility and pragmatism, English native speakers, I say.
Well, according to Article 64(2) EPC, the protection conferred by the process claims DID extend to the alloy as such (when obtained directly by the inventive process). I see no evidence that the Board considered this point.
@ Doubting Thomas,
As we are in the presence of a process, the finality/purpose of the process is a limiting feature of the claim.
A process for obtaining an alloy is different from a process for obtaining a casting, even if it is with this alloy.
The product directly resulting from the process is thus different.
In view of the different end product, your considerations relating to Art 64(2) are not convincing.
Fair comment. Nevertheless, I am still mystified why it was necessary to eliminate the offending reference to “the iron-containing aluminium alloy of the invention”. As you point out, there is a clear distinction between an alloy and an alloy CASTING. The skilled person would not mistake one for the other … meaning that the offending description text cannot possibly cast doubt upon the scope of the claims. With this in mind, it seems excessively nit-picking for the Board to insist upon amendment of the description solely based upon the “support” limb of Article 84 EPC.
Whether the skilled person would be mystified or not is not the criteria to apply.
The only valid criteria is what is said in Art 84, second half of the second sentence.
Art 84 does not refer to the skilled person, only Art 56 and 83 do so.
Whether it boils down to nit-picking or not is thus irrelevant.
I would further like to draw your attention to T 2038/20 in which the board held that it is for the board to interpret the claim and it is not relevant whether skilled person has knowledge of patent language. What else needs to be said?
Dear Max Drei,
When looking at the file, both oppositions were first rejected. In appeal, in the communication under Art 15(1), the board considered that none of the requests then on file, the claims of which related to a process for the preparation of an iron containing aluminium alloy, were allowable for lack of IS.
Three days before the OP, the proprietor filed a new request AR III, which was admitted, and which led to maintenance in amended form, cf. T 1051/17. All other requests were withdrawn. The independent claims did not relate any longer to a process for the preparation of an iron containing aluminium alloy, but related to a process for the preparation of an iron containing aluminium alloy casting.
As we are in the presence of a process, the finality of the process is a limiting feature of the claim. A process for obtaining an alloy is different from a process for obtaining a casting.
It is thus manifest that the subject-matter of the claims was not any longer a process for preparing an alloy, but to a process for preparing a casting with this alloy. In the invention there might be an alloy, but the invention was not any longer about an alloy.
I have thus full understanding when the board considered that the subject-matter of the patent could not any longer be presented as relating to a process for obtaining an alloy but instead related to a process for obtaining a casting. The wording in the description was “alloy of the invention” was thus misleading.
The proprietor is a Spanish company. Opponent 1 is a German company represented by a German representative using German. Opponent 2 was a US company represented by a German representative using English. The language of proceedings was English, and I doubt that English was at all a problem during the whole procedure.
It is interesting to note that opponent 2, the US company, did not say anything when it came to the second appeal about the adaptation of the description. As in the US, the description cannot be amended, this attitude is understandable.
Daniel, this case is useful, I think, for revealing a difference between the understanding of those with English as a first language and those for whom English is a foreign language.
You write that because the claim is directed to a process of casting a specific alloy precisely defined within that claim, the claimed invention is no longer “about an alloy” and so, for as long as the description recites “alloy of the invention” that alone will inevitably mislead the notional reader and so, under Art 84 EPC, that recitation must be expunged from the description.
That set me wondering, what amendment to “alloy of the invention” would cure the inconsistency which you (and the TBA) is perceiving and so protect the reader from being misled and confused about what actually is the invention that is being claimed.
How about “alloy of the casting invention”? Or “alloy used in the invention”? Or “alloy required by the invention”? Or alloy cast by in the process of the invention”? Would any of these wording tweaks allow the phrase to remain? All of them, perhaps? One or other but not all? At what point does your “about an alloy” objection fall away? Can you comment?
For me, what is misleading is to state that a claim which seeks to protect the act of casting a precisely defined alloy is “not about” that very alloy. The EPO routinely objects to “about” when it appears in a claim because it is too vague to be allowed to remain. Applicants are required by the EPO to write with greater precision than is achievable with the word “about”. Presumably, you would agree.
I wonder whether those whose first language is French (or German) suffer the same frustrations when observing how their native language is understood at the EPO. I wonder, perhaps it is a frustration unique to English native speakers?
With my tongue in my cheek, I finish with the thought that EPO representatives with English as their first language should be grateful to the EPO for reminding them that if ever the patent the EPO grants gets litigated on the European mainland, the court will be using EFL (or Globish) as the language of the proceedings, and not English as it is used by the courts in countries where English is the language of the law. That means that these EPO representatives must be constantly on guard, to leave as little room as possible for the court on the mainland to understand the English language of the patent differently from a court sitting somewhere offshore.
Dear Max Drei,
I am of the opinion that none of your proposals would be admitted. Leaving for a moment any possible linguistic problems aside, there is certainly an alloy at stake, but the process claimed is not any longer to obtain an alloy as such but to obtain a cast using a certain alloy. Any reference only to the alloy does thus not correspond to what is claimed.
The invention is clearly not “about” an alloy but about a casting obtained with a specific alloy. I guess that the invention lies in the fact that a cast can be produced with the specific alloy, but the alloy as such does not appear patentable any longer. What is protected is not an act of casting as such, but the fact that this alloy allows casting as this is not the form in which new aluminium is normally produced.
It is clear that the language notions of a native speaker are different and better than for a non-native speaker. There are also in every language what is called in French false friends. Eventually is one the English words which is often misused by foreigners. Eventually means in English that an event or something will happen for sure, but in French or German that it might happen!
Daniel, I do understand that the claim to the alloy perse was untenable so Applicant felt compelled to fall back on claims to a method of casting the alloy and a casting of that alloy (obtainable by that method). I suspect that your objection to text in the description of the B publication, carried over from the WO publication, that the invention is “about” an alloy, is prompted by fears that the patent owner will use it to bamboozle a naive court into a false understanding of the patent, that despite what the claims recite, what it really does is to protect the (unpatentable) alloy per se.
My experience is with courts in England but I cannot imagine a court (irrespective of whether or not it takes into account the EPO file history) setting aside the primacy of the claim to allow itself to be so gullibly led astray by such residual wording in the description. Could any competent patent court ever enforce protection for Molecule X per se when the only claims in the asserted patent are directed to a second medical use of X? I find it hard to imagine a skilled reader of the patent being misled into thinking that the protected subject matter is Molecule X per se just because the description of the asserted patent announces that the patent is “about” molecule X?
I support the maxim that “What can go wrong will go wrong” but I don’t support the notion that only the EPO sees patent law with clarity and that courts will always get the law wrong unless the EPO steps in to ensure that they are deprived of any opportunity to stray from the line determined by the EPO.
One more thing: do you think that the allowed 2-part form of claim is correctly divided? It strikes me that there are several features in the characterizing part that belong in the pre-characterizing part. In pre-grant prosecution, ED’s are incresingly strict on this issue. Is it no longer of any importance, after grant?
On a lighter note, I enjoyed your mention of “eventually”. From German, I could cite “Die sensible Dame mit dem braven Hund” (with which you are probably very familiar). Despite what English readers might guess, it tells us absolutely nothing about whether the lady is or is not sensible, and whether her dog is or is not brave.
Dear Max Drei,
In reply to your comment of 21.01.24, it would like to bring in the following:
I do not claim that the patent owner will try to “bamboozle a naive court” into a false understanding of the patent, that despite what the claims recite, what it really does is to protect the (unpatentable) alloy per se. Courts are not as naïve. You gave the example of British courts, which is actually applicable to most courts being specialised in IP. Courts are not naïve.
However, it appears important that any attempt of this kind should be nipped in the bud. This is the reason d’être of the second half of the second sentence of Art 84, and this cannot discharge the applicant/proprietor not to abide by it.
It is not within the role of the EPO to deprive courts of any opportunity to stray from the line determined by the EPO. They are free to do so, but the EPO will have done the job the EPC requires it to do. Furthermore, what is at stake here is not clarity as such, but support of the claims by the description.
Amending the two-part form of the claim is not a ground of opposition and it appears difficult to force the proprietor to amend it in order to be correct if there is no ground of opposition against the patent as granted. A wrong position of the “characterised in that” does not necessarily render the claim unclear, and a request in which only the position, in a granted independent claim, of the “characterised in that” is moved is not allowable in opposition under R 80. It does not change the scope of protection and does not overcome a ground of opposition under Art 100.
What should be done in such a situation, i.e. when the delimitation of the claim in two-part form is incorrect is to delete it. This does however imply that the acknowledgment of the closest prior art is different.
With a two-part form claim (F-IV, 2.2), the acknowledgment is very simple: e.g. the CPA = the preamble, is represented by document XXX.
In case of a one part form claim, the acknowledgement must be such that the features known from CPA are listed separately (F-IV, 4.3) in the form “Document XXX, representing the CPA discloses features A, B, …. I remind you that the CPA is automatically part of the opposition procedure, e.g. T 536/88, T 541/98, T 454/02, T 86/03. The list is not exhaustive.
I know by experience that US applicants do not like two-part form claims, but are also reluctant to state which document is the CPA and what it discloses, for fear of the US file wrapper estoppel. There is however no way out of those two possibilities. Acknowledgement of a new CPA when the claim has been limited, be t in examination or in opposition is mandatory and part of the adaptation of the description.
Sensible and brave are also false friends as they have a totally different meaning in English than on the continent.