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T 2178/17 – Art 84-Adaptation of the description is not an amendment to a party’s case in appeal – Art 13(2) RPBA20 does not apply – The description ought to be adapted to the claims

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Brief outline of the case

The patent relates to a handle portion of a hand-held electric tool, whereby the battery pack has a triangular cross-sectional configuration.

Dependent claim 2 as granted was dependent on claim 1 as granted and claim 3 on claim 2.

During OP before the Board, the proprietor submitted an amended description paragraph [0014] in order to bring the description into conformity with the claim according to auxiliary request IV. In particular, the references to the no longer existing claims 2 and 3 were deleted.

Both opponents objected to the admittance of the amended paragraph, which they considered to be an amendment of the proprietor’s appeal case. In the absence of any exceptional circumstances justified by cogent reasons, the opponents argued that the Board should not admit the amendment under Art 13(2) RPBA20.

Common practice when adapting the description

The board held that it is rather common practice, if not specifically ordered otherwise, that a proprietor or applicant postpones the submission of an adapted description until one of its requests, in the form of a set of claims defining the matter for which protection is sought, is found admissible and allowable by the competent administrative department or by the Board of Appeal.

Only when an allowable set of claims is available, is the adaptation of the description and its examination on the requirements of the EPC carried out in a subsequent final stage.

Although this final step is far from being a formal matter and may give rise to various objections, it is always conditional upon the existence of an allowable set of claims.

Remittal in order to adapt the description

In addition, it is not only permissible under Article 111(1) EPC, but under certain circumstances even necessary, that a Board exercises its discretion to remit the case to the correspondent department with the order to adapt the description to an allowable set of claims

An adapted description is not an amendment the applicant’s or proprietor’s case

In view of this, the Board found that it would be rather illogical and contradictory that the filing of a description adapted to an allowable set of claims could amount to an amendment of an applicant’s or patent proprietor’s appeal case, when at the same time it is permissible to provide such an adapted description after appeal proceedings have terminated and the case has been remitted to the administrative department.

The Board concluded that the filing of a description adapted to a set of claims found by a Board of Appeal to meet the requirements of the EPC does not generally constitute an amendment to a party’s appeal case, let alone when, as in the case at hand, such an amended description consists solely of the deletion of the references to no longer existing claims.

Consequently, the opponents’ requests to not admit this amended description paragraph under Art 13(2) RPBA20 cannot be allowed and the amended description paragraph according to auxiliary request IV is admitted into the proceedings.

Opponent 2, supported by opponent 1, argued that the description paragraph as amended by the patent proprietor during oral proceedings according to auxiliary request IV amounted to a lack of clarity in the sense of Art 84, because paragraph [0014] described subject-matter which did not support the claim of auxiliary request IV.

Regarding the alleged linguistic inconsistencies of the amended description paragraph, the Board noted that the only requirement imposed by Art 84 on the description is that it has to support the claims, so that even if a linguistic inconsistency was present in amended paragraph [0014] according to auxiliary request V, this would not automatically amount to a lack of clarity in the sense of Art 84, as long as the claim is supported by the description.

In this respect, the Board noted that the battery pack described in paragraph [0014] as granted made reference to the embodiments of granted claims 2 and 3, which are no longer present in auxiliary request IV.

It can be agreed that the battery packs described in paragraph [0014] contain features that are not present in the hand-held tool with a battery pack according to the claim of auxiliary request IV. However, these features present in paragraph [0014] are compatible with and not in contradiction to the claimed hand-held tool comprising a battery pack according to auxiliary request IV.

The Board was convinced that the skilled reader would not understand the claim of auxiliary request IV differently nor would they be confronted with new doubts on the matter for which protection is sought in light of the content of paragraph [0014] according to auxiliary request IV.

Comments

Adaptation of the description to the claims either allowing grant or allowing maintenance in amended form during opposition is necessary. See also T 1024/18 and not T 1989/18.

It is understandable that the opponents wanted to get read of the patent even in amended form, and the objection under Art 13(2) RPBA20 was a clever move. The board did however rightly decide that the description ought to be adapted to the new claims in order for the patent to be granted or maintained in amended form. 

The board made it clear that a pedantic adaptation is by no way needed. Provided the amendment is compatible and not in contradiction with the claimed device, even in case of a linguistic inconsistency, support would be given.

This does however not mean that in the description it is allowable to keep statements which imply that the claims cover something different to what is claimed.

Other recent decisions on the adaptation of the description

In T 1941/18, the requested amendments in paragraphs [0006], [0007] and [0027] of the patent specification constitute a usual and necessary adaptation of the description to the amended claim 1 according to the main request.

The example disclosed in paragraph [0006] does not contradict the subject-matter of claim 1 and deletion of the passage of the description in question is therefore neither appropriate nor necessary.

The deletion in paragraph [0007] of “Preferably……”, is also allowable as in amended claim 1, the feature is no longer optional

The deletion of a sentence in paragraph [0027] is appropriate and necessary since it relates to a different embodiment of the invention from that claimed by claim 1

In T 1399/17, the description was not properly adapted, so that it cast doubts on the scope of the claim. The patent was revoked.

Reminder

In the absence of a complete set of documents and in the absence of the applicant/proprietor, either

  • the application is refused   T 893/01, T 109/02
  • the patent is revoked          T 725/00, T 986/00, T 1024/18

There are some decisions to the contrary in which the board remitted in spite of the absence of the applicant/proprietor in order to adapted the description

  • T 256/10         in examination
  • T 484/12         in opposition

https://www.epo.org/law-practice/case-law-appeals/recent/t172178eu1.html

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5 replies on “T 2178/17 – Art 84-Adaptation of the description is not an amendment to a party’s case in appeal – Art 13(2) RPBA20 does not apply – The description ought to be adapted to the claims”

Roy Marshsays:

Hello Daniel. Glad to have found you here. We differ on the EPO’s established practice to insist on strict conformity and I will set out here my position in the hope that it will provoke a lively thread of comments.

An amendment to the description, even one as very simple as the one proposed in this case, to delete reference to claims 2 and 3 in two paragraphs, opens the way for objection to the amendment at least under Art 84 and Art 123(2) EPC. That the Board here, in a hurry to dispose of the case, brushed aside all quibbles, is no indication that an ED would do the same thing.

What is problematic for me is that more or less any amendment to the description after the PCT filing date opens up the way for Opponents to make mischief, render opposition proceedings expensive and complicated for the patentee, and leave the patent owner, their investors and their EPO representatives fearful of loss of the patent on what many would see as a “technicality”. In general, patent proceedings should not be over-simplified but neither should they be made any more complex than absolutely necessary. The Holy Grail of 100% “conformity” is not in the interests of good and efficient administration of justice at proportionate cost.

You will respond, I have no doubt, that conformity is essential for legal certainty. Without it, judges cannot decide on infringement and lawyers cannot confidently render FTO opinions. I disagree. I think the task is easier when the court knows for sure that the materials for consideration are i) the granted claims and ii) the supporting disclosure as it was on the PCT filing date. We patent attorneys are accustomed to writing FTO opinions on the basis of the WO publication and the originally filed claims. We have to factor in what claims the Applicant could get to issue in a succession of divisional applications. What we do as attorneys, judges can also do in infringement litigation, and strict conformity to my mind brings little if any gain in legal certainty.

As a practical matter, conforming the description before an EPO Examining Division (or TBA on ex Parte appeal) is not infrequently a nightmare because the strict requirements of Art 123(2) and Art 84 EPC are irreconcilable. Worse, because of the imperative of protecting the patent application against Art 100(c) attacks after grant, the objective of achieving clarity takes second place. In this way, there is more, not less, clarity for judges when they know for sure that the claims are those allowed while the description is what Applicant filed originally.

So, there we are. What will others think. I am curious.

Daniel X. Thomassays:

Dear Roy,

You will not be surprised that I cannot really agree with your point of view.

I have taken due note that you base an FTO on the basis of the application as filed and not from the patent as granted. As nowadays patents are rapidly granted, why not use the whole of the patent granted as basis for a FTO?
If the patent is hampering a present or a future production, then it is time for an opposition, or if the 9 months have lapsed for a nullity action.

I can only repeat what I said before. The day Art 84 will be expunged of the notion of support by the description, then I will completely agree with you that the description should be left untouched. But there is a price to pay: the behaviour of the applicant during examination will have to be taken into account.
That is exactly what is happening in the US.
I said this in IPKat and I repeat here, you cannot have your cake and eat it.

Anything which would allow a different interpretation of a claim should be deleted or made clear that it is not covered by the claims.
With Art 84 as it stands, it is a duty of the EPO to put all applicants on a par, independently of the way national courts apply their DoE.
What is the difference between leaving some unspecified statements in the description and the requests of some opponents to have a given interpretation of the claims in the minutes of the OP? The minutes of an OP and the description are not there to allow the applicant/proprietor to get more than what his contribution to the art is and which could be possibly useful in national litigation.
Once the patent is granted, there is a cut-off point as far as clarity is concerned.
This also is the raison d’être of G 3/14.

I cannot remember seeing a patent being revoked in opposition or in national nullity proceedings due to a problem in the amended description!
If you know some cases, I will be happy to look at them.
If it appears that there is a general problem, then it should be examined and a cure found.
I cannot refrain the impression that for lots of representatives adapting the description is a chore, which on top costs money for the client, so it would be best to get read of it. I understand this point of view, but it is not what the EPC provides in the present wording of Art 84.

When there is a problem of added matter, be it under Art 76(1) or Art 123(2), the problem is in the claims, and in most of the cases the proprietor sits in an inescapable trap.

You might argue that the views of the EPO in matters of added matter is way too strict, but this is not the present topic. At least the BA of the EPO and the EBA have managed to set a system which is coherent and in which everybody knows where he stands.

Case law is abundantly clear in matters of adaptation of the description, and it will not be a single decision by a BA which will change it.

Roy Marshsays:

Daniel, you make good points. I’m almost persuaded. But not quite.

Art 84 EPC declares that the claims “shall be supported” by the description and you say that for as long as that is the case the description intended for grant must “conform” fully with the allowed claims, otherwise the application must be refused. I’m not convinced that “support” necessarily requires “conformity”.
All other jurisdictions have a “support” requirement. Clearly, the patent bargain between inventor and public is not satisfied when exclusive rights are grantted on a claim for which there is no corresponding enabling disclosure. As US law has it, there must be a “writen description” of the claimed subject matter in the application as filed.

Let us think about the issues of conception of an inventive concept (say, telephone, aeroplane, balloon angioplasty of CRISPR-cas9). A patent attorney grasps that concept and writes a specification and claims, and files. The specification tells a story, sells an idea, and has a coherence and an integrity which is liable to be lost when it gets mangled into “conformity” with the allowed claims.

Now suppose that, as often happens, another inventor on the other side of the world has invented the same concept and another patent attorney, using very different terminology to describe the same invention, files at much the same time. A priority contest ensues. Each inventor must crimp her (or his) claims down to that on which they were first to file. Distinguishing the respective claims is a total nightmare but has to be done so everybody knows who owns what. In particular, the respective claims must be very clear (think Art 84) about what would infringe each such allowed claim.

Now you say that although it is a chore for the respective parties to conform their respective specifications, that process of conforming will never prejudice their legitimate legal rights. You challenge me to cite a case where it did. I’m sorry that I can’t from memory pull up such a case but the day to day experience of trying to conform a specification leaves me convinced that every time I do it, and there follows an opposition, my amendments to the description will be challenged.

There was a reason why the writers of the EPC excluded non-compliance with Art 84 as a ground of revocation. I suspect that it is this absence which drives the EPO to impose on itself the task of insisting upon 100% conformity between description and claims, resistant to any post-grant complaint that the EPO allowed the grant of a patent that fails to meet the provisions of Art 84, EPC. I think it is misguided of the EPO to impose this task on itself. It is not helpful to Applicants, nor to the courts.

As to your point about the “price to pay” I don’t accept it. Courts decide for themselves how much attention they will pay to the Patent Office file, ranging from England’s “more or less nothing” to the USA’s “everything” and I think that is independent of whether Applicant conforms or not. Conforming will do nothing to lessen the degree of attention that a court is willing to give to the wrapper. If the USPTO were to insist on conformity, that would not reduce at all the degree to which parties invoke the PTO wrapper.

The rogue case T1989/18 has the same view as me, what the writers of the EPC meant when they drafted its Article 84. I still see this as the commonsense view of “support”.

Does anybody else out there have a contribution, I wonder. Hope so.

Roy Marshsays:

Daniel, here an afterthought which, I suspect, brings us closer together. It concerns Rule 42 of the Imp. Regs, discussed in that rogue case T 1989/18.

I am not against making a c-i-t, 2-part form of claim the default (so long as it is not insisted upon by the over-zealous ED’s, willy-nilly). I am in favour of having the description being amended during prosecution to satisfy Rule 42 by mentioning those prior publications against which patentability was assessed.

Which means I have to retract from my absolute position, of having the WO text go through to issue, always unchanged during prosecution. As I understand it, you too want all the amendment necessary to comply with Rule 42. What remains for discussion is how much more amendment Art 84 demands, over and above that needed to meet the provisions of Rule 42.

In my comment of earlier today I forgot to mention the 1966 US Supreme Court decision of USA v. Adams, in which the court wrote: “While the claims of a patent limit the invention, and specifications cannot be utilized to expand the patent monopoly, it is fundamental that claims are to be construed in the light of the specification and both are to be read with a view to ascertaining the invention”. I like that way of expressing the relationship between the description and the claims and I imagine you do too.

Daniel X. Thomassays:

Dear Roy,
Whether you are in favour or not with indicating the prior art revealed during examination, it is simply mandatory!
Having to indicate the prior art relevant for the granted or amended claims is by no means a recent requirement.
It goes back to T 11/82 in examination and T 51/87 in opposition. In those times, I had the pleasure to witness, applicants refused to incorporate in the description the closer prior art revealed l by the search as it would infringe Art 123(2). Those decisions brought this discussion to an end.
What is at stake here is the next step which is to insure the conformity of the description with the claims.
Up to T 1989/18 I never heard such a general outcry about this point.
I agree with the comment of the USSC. I would however add that we disagree with the next step: adapting the description so that it supports the claims as granted/amended.
My point of view, and I think that of the EPO, without wanting to look pretentious, is that any statement which would allow to give the claims a different meaning from what the actual contribution to the art should be revised.
As it leaves national jurisdictions to decide which and how a DoE can be applied, it puts all applicants/proprietors on a par.
I do not think this is asking too much!
That avoids what has happened in the famous pemetrexed case. There the contribution to the art was disodium and nothing else.
It is only later that the applicant/proprietor realised that other salts could do the job.
Thanks to a wishi washy introductory part of the description that later the proprietor claimed much more than its actual contribution.
This is not acceptable to me.

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