CASELAW-EPO - reviews of EPO Boards of Appeal decisions

Daniel, thanks for posting up this brand new Decision and for your comments. What attracts my particular interest is T944/15, Reasons, para 17 with its statement that the claim is not there to “define” the “invention” but only “the matter for which protection is sought”. I had thought there was no difference between “the invention” for which protection is sought (as in the question whether an earlier application is an application for protection of the “same” invention) and the “matter” for which protection is sought. However, it seems that I had always thought wrong. Can you say, does every EPO Board go along 100% with T944/15’s distinction between “matter” and “invention” or is there any other view within the community of Board members?

Meanwhile, the great confusion about the word “embodiment” is set to continue. I mean, embodiment of what? We ought to be clear on that, for the word “embodiment” stripped of context is meaningless. Is it an embodiment of the invention for which protection is sought, of the “matter” for which protection is sought, or of the “invention” which the inventor and drafter thought they were describing and defining in the specification of the patent application as filed.

The saga continues, you write. Good so. It needs to continue, for as long as there is still so much confusion over the meaning of terms used in the debate.

Daniel X. Thomas

Dear Max Drei,

I knew very well that by posting T 2194/19, the discussion over the adaptation of the description would be starting anew.

As far as T 944/15 is concerned, it is only cited in the present decision T 2194/19.
I am however not in a position to say whether every EPO Board go along 100% with T944/15’s distinction between “matter” and “invention”.

Personally, I always saw at least a semantic difference between the claims, which have the function to define the extent of protection, and the description which has the function of disclosing a technical teaching which is protected from undue appropriation by the claims.

When I was involved in training grandfathers in new east-European member states, I was made aware that in those states, before them joining the EPO, claims actually defined the invention. In this respect accessing the EPC made a change.

On the other hand, when you have a claim to an action, i.e. a process or a method claim, it is difficult to make a distinction between the technical teaching, which is to obtain a given result, and the subject-matter of the claim which is as well to obtain said given result.

It is a bit more complicated when the claim relates to an entity, i.e. a device, apparatus or system, as the technical teaching is not directly to be found in the claim but rather in the description.

In both cases, the description discloses the technical teaching and the result of said teaching in either a single embodiment or a series of embodiments. This teaching and its embodiments represents the contribution to the art that eventually warrants the monopoly given by a patent.

The EPC legislator made a distinction between the function of the claims and the function of the description, but in all honesty, I find it a bit artificial and certainly not allowing to consider that the description can disclose items which are not claimed.

For me, an “embodiment” of the invention, for which protection is sought in the claims, is no more than a “way of carrying out the invention claimed”, as defined in R 42(1,e), and hence embodying the technical teaching of the invention.

Depending on the prior art, a plurality of embodiments can be disclosed and kept together without infringing unity of invention. Should some of the embodiments be known or not inventive over the available prior art, then they have to be deleted from the description or they cannot be kept in the latter as being representative of the technical teaching having led to the granted patent.

For the same token, any statement which could lead to doubts about the interpretation of the claims under Art 69 and its Protocol of Interpretation cannot be left in the description. In this category I would classify clause-like sentences, which cannot, stricto sensu, be considered as claims, but which represent an attempt to obscure the boundaries of what is actually claimed.

To me the meaning of terms used in the debate is quite clear. Some people would however like to confuse the issues in order to potentially gain some advantages in case of a later litigation.

I said it before, the EPO has a duty to put all applicants/proprietors on a par and cannot allow misleading statements to be left in a granted or maintained patent.

Anonymous

https://www.cipa.org.uk/journal/october-2022/description-amendments-at-the-epo/

On the topic of description amendments, there is a detailed and (in my view) well-reasoned assessment of the current state of the EPO case law in this month’s CIPA Journal:

If this is inaccessible without CIPA membership, perhaps you can obtain a copy from the author or from a friendly UK patent attorney.

Daniel X. Thomas

I do not have access to CIPA Journal and I do not even know the author!
Can you help?

Robert Lambton

16 Nov. 2022

A slightly condensed version of the article appears to be published here:
https://www.reddie.co.uk/2022/10/18/description-amendments-a-comparison-of-recent-epo-case-law/

Max Drei

Daniel, thanks for that. But not only East of Munich: also west of Munich the function of the claim is to define the invention, The way I have always seen it, the invention IS the “subject matter for which protection is sought”. The interesting issue is how to manage the transition from the invention (contribution to the art) of that of the A publication to the narrower one of the B publication.

Is it your position then, that EPO search and examination never changes what “the invention” is? In that case, those “embodiments” of “the invention” described in detail in the description remain embodiments even after the prosecution amendments to the claim results in their being outside the literal wording of the claim allowed to proceed to grant. Or do you say that what is “the invention” can change during prosecution, when the claims get a lot narrower? In that case, some of the “embodiments” of the A publication might no longer be “embodiments” in the B publication, yes?

The task of the description is to disclose, to teach, how to make, use or run a process or an apparatus. The task of the claim is, as you say, to define the scope of protection that the patent is giving to the invention for which protection is sought. I think it unhelpful to draw a distinction between “the invention” and “the subject matter” protected by the patent. I think that the debate is still about how much uncertainty/unfairness/injustice occurs when the EPO insists implacably on prosecution amendment to remove from the description any words which could conceivably enable clever litigation lawyers to make a distinction between the invention described in the description and the one defined by the allowed claim.

You cling to your view that anything that is “misleading” must be ruthlessly excised from the description. I think we need more debate on when any given sentence in a description rises to the level of “misleading”. With emphasis on what amounts to “leading”. I am interested in who you think these people are, that are so easily led by such silver-tongued lawyers, unless the EPO steps in to protect them from their own gullibility. Patent judges, perhaps?

DXThomas

Dear Max Drei,

The distinction between the invention and the claims is not something I have invented. It is what is said in the EPC. That the “invention” is not foreign to the subject-matter of the “claims” is manifest, but there is a distinction made by the legislator. I can follow you when you “think it unhelpful to draw a distinction between “the invention” and “the subject matter” protected by the patent”, but the distinction is there.

It has been and still is my position to say “that “what is “the invention” can change during prosecution, when the claims get a lot narrower? In that case, some of the “embodiments” of the A publication might no longer be “embodiments” in the B publication, yes?” My answer is clearly yes.

I come back to my analogy with Russian dolls. At filing, the Russian doll might be quite voluminous, but through the examination process, appears a smaller doll which is nestled inside the larger original one.

This smaller doll is homothetic with the original larger doll, as just the proportion of the contribution to the art has become smaller than that originally thought by the applicant/inventor.

Should the patent be maintained in amended form after an opposition, the resulting doll is again smaller than the one obtained at grant, but still homothetic with the original one and that at grant. If the subject-matter of the claims lacks N or IS, then, there is no doll left altogether.

Added matter can easily be compared to a growth which has been added on the original doll. This growth can also be maintained by homothety. But such a doll has never been disclosed and it cannot remain on the shelf. A flabby doll lacks clarity as we do not know what it comprises and a doll with holes is not sufficiently disclosed.

I can also accept that you “think that the debate is still about how much uncertainty/unfairness/injustice occurs when the EPO insists implacably on prosecution amendment to remove from the description any words which could conceivably enable clever litigation lawyers to make a distinction between the invention described in the description and the one defined by the allowed claim”.

I would however say that the EPO is right in insisting, not implacably, “on prosecution amendment to remove from the description any words which could conceivably enable clever litigation lawyers to make a distinction between the invention described in the description and the one defined by the allowed claim”.

The resulting Russian doll at the end of prosecution should be such that no parts of the original doll remains. It has to be limited to the doll as it results from examination or opposition. Not to forget: the doll resulting from prosecution is actually the doll which should have been originally filed.

I do by no means claim “that anything that is “misleading” must be ruthlessly excised from the description”.
I simply say that the resulting smaller doll cannot be left with ties to the preceding ones.

The word misleading might be very strong, but I use it deliberately when I see how some representatives want to give the impression that the description gives much more away than what the claims actually cover.
The worse are clause-like sentences which more or less are a copy/paste of the original claims.
Such statements have nothing to do in a granted patent.

I agree with you that “we need more debate on when any given sentence in a description rises to the level of “misleading”. When seeing some decisions of national jurisdictions, it is clear to me that some judges are very easily (mis)lead by silver-tongue lawyers explaining that the claim gives away much more than it actually says. To this effect, some misleading statements are purposely left in the description.

Art 69 and its Protocol of Interpretation were badly needed when the EPC was drafted as a balance had to be found between a very extensive interpretation of the claims and a strict limitation to its wording.

But the possibility of interpretation should not be enhanced by statements left in the description trying to get out much more from the claims than what the real contribution to the art represents. I do not think it is unreasonable to request a clean description commensurate with the claims.

francis hagel

Thank you Mr Thomas for reporting this decision.
I think it defines a sensible approach.
The basic element in my view is that it somehow equates « inconsistency » and « contradiction » between the description and the claims. The implication is that it relies on the clarity requirement of Art 84 in combination with the support requirement. The requirement for removing « inconsistencies » from the description is then justified only if parts of the description make the language of the claims unclear. It is not justified when the language of the claims is clear in itself.
The second significant element of the decision is that the burden of proof is on the ED. The ED must justify that the inconsistency it requires the applicant to remove would make the language of the claims unclear. The fact that an embodiment or alternative option disclosed in the description is not covered by the claims would not be a sufficient motivation, absent a specific showing by the ED that it makes the language of the claims unclear.
These elements define an approach which comes close to Section 5.29 last sentence of the PCT ISPE Guidelines, which are applicable to the PCT phase of PCT applications, including those in which the EPO is the ISA. As a practitionner, I believe it would be an improvement if the EPO practice regarding applications after the entry into the EPO phase was in line with the PCT Guidelines.

DXThomas

Dear Mr Hagel,

Thanks for your comments.

It will not come as a surprise to you that I cannot fully endorse your position.

There is however one point on which I can agree: it is for the ED to demonstrate, with a proper argumentation and not by merely a sweeping statement, why some parts of the description have to be removed. Should however the ED give a good argumentation it will be difficult to dismiss it.

I cannot agree with two points in your comments.

Firstly, I cannot follow you when you say that the description can render the claims unclear.
In Art 84, clarity of the claims and support of the claims by the description are two clearly distinct requirements and they should not be confused.
I refer to T 2293/18 quoted by the board.

Established case law has made clear that the claims have to be clear without any recourse on the description. It is only in exceptional circumstances the description can be used to interpret the claims before the EPO. I refer here to T 1808/06 also quoted by the board.

Secondly, I consider your reference to Section 5.29, last sentence, of the PCT ISPE Guidelines not really helpful.
To my knowledge it is not the first time that you raise this point.

The reference to the PCT ISPE Guidelines is not helpful in that said Guidelines are the result of a compromise taken at WIPO level and hence taking into account views which are not necessary those of the EPC member states.

Applying the PCT Guidelines to Euro-direct applications is something which does not appear legally possible, unless those PCT Guidelines are taken over expressis verbis in the EPO Guidelines.

Furthermore, in case of amendments (or non-amendments) during the International Phase, the EPC remains fully applicable during the regional phase before the EPO. It has been made clear in T 735/03 that amendments filed during the international phase have to comply with the substantive requirements of the EPC, in this case Art 123(2).

It is clear for me that T 2194/19 will be welcomed by the fraction of representatives which do not want to amend the description.

In my humble opinion, this decision is, like T 1989/18 and T 1444/20, at odds with the established line of case law which requires that the description to be adapted to the claims.

There is one difference with T 1989/18 and T 1444/20: the argumentation is better, but still fails to convince.

Schtroumpf

M. Thomas –

Allow me to ask a possibly provocative question, but one that I think might generate some light on this debate.

Elsewhere you have stated that:

“the only binding decisions for first instance divisions and for the boards are decisions of the EBA. This is the case law which has to be followed imperatively”

and that:

“There is no obligation under the EPC for the EPO (or the boards) to follow any T or J decision.”

and that:

“To my understanding the only “established” case law at the EPO is that of the EBA. There might be long lines of case law by the boards, but it is still debatable whether one can speak about “established” case law if such a long line of case law is not confirmed by a decision of the EBA.”

(I refer to your comments on the IPKat blog here: https://ipkitten.blogspot.com/2022/08/contradictions-between-guidelines-and.html)

Given that logic (which seems sound), I am finding it hard to understand why in the case of description amendments – and apparently only in that case – you are so inclined to rely on a so-called “established line of case law” and to dismiss any decision that deviates from that line.

Why should the “established” line of case law be regarded as “established” in this case, in the absence of a decision of the EBA?

Why are the decisions which deviate from that line of case law to be disregarded, but the “established” line is apparently infallible?

I am not seeking to reopen the debate on whether description amendments are required or not. You clearly have your views on that. I am, rather, asking how this “appeal to authority” in the form of reliance on “established case law” can be reconciled with your views elsewhere on the existence (or nonexistence) of binding precedents at the EPO.

This seems to me to be at the heart of the debate: is the established case law in this one specific area sacrosanct, or can it be challenged and subject to evolution?

If the two camps can understand one another’s reasoning on this point more clearly, then progress might be made.

DXThomas

Dear Schtroumpf,

Your question is not provocative and I was actually expected one along those lines.

I still maintain that established case law is that which is based on decisions of the EBA. Decisions of the EBA are binding, also for the boards, and that’s it.

Should a board want to deviate from a decision of the EBA it has to refer a new question to the EBA, cf. Art 21 RPBA20.

By the way the EBA only once changed its case law. In a first decision, G 1/84, OJ 1985, 299, the EBA considered that a proprietor could oppose its patent. In a later decision, G 9/93, OJ 1994, 894, this possibility was negated as opposition proceedings were to be considered as contentious proceedings between parties. It shows that even an established line of case law can change if the EBA issues a different decision.

There are however long lines of case law which are not directly to be considered as established in the meaning above as they are not stemming directly from a decision of the EBA.

Such long lines of case law have however the merit to exist and cannot, in my opinion, be ignored. I would like to refer here to Art 20(1) RPBA20 which requires a board to explain why he considers it necessary to deviate from an interpretation or explanation of the Convention given in an earlier decision of any Board. In such a situation the President of the EPO has to be informed of the Board’s decision. In none of the three decisions T 1989/18, T 1444/20 and T 2194/19, this last condition has been fulfilled.

Be it for T 1989/18, T 1444/20 and T 2194/19 the argumentation is, in my opinion, not convincing. I take it that you, and a number of your colleagues, are convinced by the argumentation in those three decisions and would like to see that the description does not any longer have to be adapted, and that this view is to be applied immediately.

By the way, I never claimed that the long line of case law regarding to the adaptation of the description is apparently infallible. Simply the contrary argumentation in those three decisions is, in my opinion, not convincing. I simply put in the balance the large number of decisions requesting adaptation of the description against the three ones which are at odds with said large number.

According to this long line of case law, the description should not contain statements which can bring in doubt the scope of protection defined by the claims. There has to be a direct relationship between what is claimed and the description. That national judges can go further by applying Art 69 and its Protocol of Interpretation is not at stake here.

I can only repeat here what I said to Max Drei: the EPO is right in insisting, “on prosecution amendment to remove from the description any words which could conceivably enable clever litigation lawyers to make a distinction between the invention described in the description and the one defined by the allowed claim”.

I would also like to remind you that only T or J decisions quoted in the Guidelines are binding for EDs and ODs. As long as none of those three above decisions are quoted in the Guidelines, examiners are bound by the existing Guidelines and should not deviate from them. Examiners are free to ignore those. When requesting amendments EDs or ODs have to justify their requests and not be satisfied with a sweeping statement. But this is nothing new under the sun.

There are two examples, I mentioned previously, in which EDs and ODs do not follow existing case law as the corresponding decisions are not quoted in the Guidelines. One is the famous “three point test”, i.e. the former “essentiality test” (H-V, 3.1). The other one is that a request for OP is not considered as accomplishment of the omitted task when requesting further processing (C-V, 3).

You claim that you are “not seeking to reopen the debate on whether description amendments are required or not”, but this is exactly what you are, at least indirectly, doing.

Whether in the specific area of adaptation of the description to the claims, or any other area, a long existing line of case law is not sacrosanct. It has been challenged in three decisions by three different boards, but since the argumentation cannot be considered convincing, there is no reason to consider an evolution in the sense you manifestly wish.

I suspect you come from a common law country as you have quoted the IPKat blog.
I also said before that in a common law system a new decision becomes applicable immediately, even if it diverges from preceding ones.
There are as EPC member states only two countries in which common law applies: the UK and Ireland. I cannot see other countries on the continent going along this way in the near or distant future.

I think a great deal of the issue, and the problems here, is whether new decisions of boards, even if they go against existing case law should be followed immediately. The reality is that this is not the case at the EPO. Only decisions of the EBA apply immediately. Should on top of it, those decisions not found convincing and not in line with the general policy of the EPO, they will not be followed and introduced in the Guidelines.

I might have been quite long, but I found it necessary.

Max Drei

Gentlemen, I find encouraging in this T Decision the idea that the burden is on the ED to make a case why amendment of the description is necessary, for the application to meet the provisions of Art 84, EPC.

With Art 123(2) EPC, already the burden is on Applicant, to prove beyond doubt that an amendment adds no matter. In every normal case, claim 1 as first filed is too wide, and has to be amended/narrowed, to satisfy the provisions of Art 54 and 56, EPC. If Applicant is deemed to bear the burden of proof, not only that consequential amendment of the description under Art 84 is not needed but also that every such amendment of the description is not tainted by the presence of “new matter”, then a great many deserving inventions will fall into the EPO’s unique Bermuda Triangle and disappear behind a decision to refuse. A burden to “prove a negative” is bad enough, but a burden to prove a negative and then prove yet another negative is unreasonably burdensome and not in accord with the EPO’s mission statement to balance “fair” protection for inventors with “reasonable” legal certainty for the public..

A shoulder shrug and the throwaway remark from a person inside the EPO,that the loss of the patent application within this Bermuda triangle is all the fault of Applicant for failing to employ a competent patent drafter reveals how out of touch with reality that person is. So I suppose we should all be thankful for the small mercy of this T Decision, which puts on the ED the burden of explaining why amendment of the description is unavoidable.

That said, I am 100% with Daniel Thomas that invocation of G1/07 and G1/08 “fails to convince”. To make my point, I can borrow terminology from the Americans. Their Section 101 corresponds to our Art 52/53 and deals with what they call the “eligibility” of an invention for patenting. What is eligible is not set by the prior art. In that sense, it is timeless.These US and EPC statutory provisions define the position of the boundary ropes around the boxing ring within which inventors can make patentable contributions to the art. When we are fighting, within the boxing ring, about the patentability over the art of any given invention that is indisputably eligible, for the tribunal to start making statements about the placement of the boundary ropes is, I would say, not only irrelevant but also confusing.

Max Drei

Daniel, I have a request. Please try to tone down your remarks about what motives European patent attorneys have for resisting pressure from ED’s to amend descriptions. You are unremitting in your insinuations that when they do it, the thought in their mind is that, later, they can bamboozle judges and secure for their clients a greater scope of protection under the DoE than the scope that is a “fair” scope of protection. I have a different opinion on that. I think your opinion of the motives of prosecuting patent attorneys is unfair, unworthy of you (Oxford comma alert), and wrong.

When I’m prosecuting, I resist all but essential amendments because every one is another opportunity for a competitor/infringer to frustrate, under Art 123(2) EPC, my client’s legitimate interest in enforcing the patent against that infringer and, in the worst case scenario, get the valuable patent revoked, which but for an injudicious prosecution amendment would have seen off all attacks on its validity. EPO Examiners and Judges can’t get sued for negligence, but European patent attorneys can. You might be surprised how scary that prospect can be.

DXThomas

Dear Max Drei,

I will reply at once to your two last entries.

As far as the first entry is concerned, I find the shoulder shrug and the throwaway remark not appropriate. One reason for such an inappropriate behaviour might be that not all staff members of the EPO are aware of what a patent can represent for an applicant or proprietor in terms of assets, sometimes worth a lot of money. Seeing such an asset going down the drain for reasons which you and your colleagues find not correct can certainly be infuriating.

With the recruitment at EPO, centred mainly on younger people, this awareness might not be at its best. For the vast majority of examiners a patent is just a piece of paper. I personally regret this attitude.

On the other hand at the boards, the members are experienced people coming from inside or outside the EPO. I would thus consider that they are well aware of what a patent can represent and know that by confirming a refusal or deciding a revocation, or even maintaining a patent amended or as granted, it can have deer consequences for one of the parties. I would add that this is also the case for OD’s.

You come back to one of your favourite topics Art 123(2). That national jurisdictions in EPC contracting states, or even outside the EPC sphere, might be more lenient on added-matter is not at stake here. It is their good right to have a different position on this topic. I would however remind you that, as any jurisdiction, the BA and the EBA are independent and can decide how they interpret the EPC.

The position of the EPO in matters of extension of object is very strict. You find it regrettable. To a certain extent, I can follow you, but the EPO’s way of dealing with this requirement is the result of an established line of case law set up and confirmed in various decisions of the EBA. As equivalents are not considered under novelty, even if it would be obvious for the skilled person to think of different alternatives, it results in added subject-matter if those non-disclosed alternatives are claimed.

You are attempting to bring the necessity of adapting the description under Art 84 when claims have to be limited under Art 54 and/or 56 in relation with Art 123(2). I cannot follow you on this topic. If you have examples in which the adaptation of the description by deleting some parts has led to a refusal or a revocation under Art 123(2), I would be happy to see them.

The EPO’s mission statement to balance “fair” protection for inventors with “reasonable” legal certainty for the public is in my opinion correctly balanced in the way the EPO, the BA and the EBA interpret the EPC, insofar as the BA and EPA are at all bound by the EPO’s mission statement.

That an opponent will try to misuse Art 123(2) in order to try killing a patent is part of the game. One day the representative is working for an opponent, the other day for an applicant/proprietor.

that a request for adaptation the description should be properly argued by more than just a sweeping statement is quite normal. Talking

For the second comment you see me totally displeased with it. I do even consider it to be below the belt and I am surprised that you have let yourself go as far as that. I will not ask for an apology, but I am not far from it.

I am not insinuating anything. I am reflecting on what I have seen during my active time at the EPO and what I regularly see when I am consulted in some cases.

When the opponent’s representative wants to see in the decision or in the minutes a statement about a given interpretation of a feature in a claim, do not tell me that he is not trying to pre-empt further discussions in front of a national court.

The same applies to the representative of the applicant/proprietor which does blatantly refuse to delete or mark in the description that some parts are not representative of what is claimed. Even when the subject-matter of a dependent claim is incorporated in the independent claim, I have seen the representative refusing first to delete from the description the optional character of the subject-matter of the dependent claim. The same applies when the original claims are left in the description simply being renamed clauses. In such a situation he is certainly thinking of what he can get out of it in possible later infringement proceedings.

I agree with you that “Examiners and Judges can’t get sued for negligence, but European patent attorneys can”. I am not “surprised how scary that prospect can be” for a representative. I just remember the famous case of BASF against a well-known British firm of representatives.

You are free to consider that my “opinion of the motives of prosecuting patent attorneys is unfair, unworthy of you [me] (Oxford comma alert), and wrong”, but this does not allow you to adopt a derogatory tone as in your second comment. Requesting a minimum of respect is certainly not asking too much. It is part of life’s rich tapestry that we can disagree. But even in a disagreement a minimum of respect is due. I hope you will come back on a better path.

Max Drei

Daniel, I am very sorry that with my most recent comment in this thread I have offended you so badly. I apologize unreservedly. I have replied on that to you, off-blog.

Reverting to this T decision, I personally was never happy with a description which labels as an “embodiment” a design shown in a drawing which plainly lies outside the scope defined by the claim. So it comes as a surprise that this Board is OK with that situation. All those representatives who refuse to delete the word “embodiment” can now assert even more vehemently that they were justified all along in insisting that the word remains. I am not convinced by the reasoning underlying this Decision and, personally, prefer that of the ED in the decision appealed against.

What do other readers think, I wonder.

DXThomas

Dear Max Drei,

That in the heat of an oral debate sometimes people go beyond a line which should not be crossed is understandable.
But in a written statement it is a bit different as there is the possibility to re-read a statement before sending it away.
This is one reason why I had to say stop. It went simply too far for me.

I wholeheartedly accept your apologies and for me the matter is over and settled. No need to dwell on it.
I also know that I can myself be quite fiery. I will defend my point of view but I am also aware that there are limits to this.

That people can have different opinions is quite normal and nothing to be a priority offended as long as mutual respect is guaranteed.

I am far of wanting the EPO to force applicants/proprietors to delete or mark as not belonging to the invention which is actually claimed in a very strict and pedantic manner.

I have always been for the reasonable application of the rules of the game. Alas, experience has shown to me that some would like to stretch the rules of the game to an extent which is not reasonable as they clearly attempt to get an undue advantage.

That an ED or and OD cannot decide arbitrarily what it likes or dislikes and that any decision has to be correctly justified is something which goes without saying. And the decision is good in reminding this.

I am still convinced that with a bit of good will on both sides, we can come to a reasonable result even in the topic we have been discussing here.

I have said in many occasions since I retired, that during my active life, I never cared who could win or lose the case. I just wanted to issue a decision on the merits which I could defend. That a BA could have a different opinion was part of the game and I never had any difficulty in accepting it.

It is something that I would like continue doing in writing my blog. I am not a chicken of the year and one day I will retire for good. But before, I would like to share my experience. This is also a reason why I am holding a blog.

francis hagel

Dear Mr Thomas,
Thank you for your considered response to my comments.
I am quite pleased that we concur on the principle, laid out in the decision, that the burden of proof rests with the ED to justify a requirement to adapt the description so as to remove « inconsistencies » with the claims by showing that the « inconsistency » causes doubt as to the meaning of the claims. I also note MaxDrei’s warm approval.
I believe this is a crucial point, for a number of reasons.
If this principle enters the EPO practice, there will be the need to distinguish different categories of « inconsistencies » ( esp. claim-like points in the description, description of unclaimed embodiments or alternatives, « essential feature » statement, « spirit of the invention » statement, explicit disclaimers regarding certain implementation options) and to justify why the specific inconsistency causes doubt as to the meaning of the claims.
It will be also significant in order to provide the applicant a specific motivation for the requirement, enabling the applicant to rely on this motivation for challenging the ED’s requirement (is it not a prerequisite for the applicant’s « right to be heard » ?)
On this topic, I note an issue if the ED carries out adaptations of its own motion as part of the 71(3) communication with scant motivation, as this pre-grant stage, challenging the ED’s adaptations is generally not a realistic option for the applicant, since it would prolong proceedings and delay grant and involve additional expenses.
As to your disagreement regarding the reliance on the description, I think there is a misunderstanding. I fully agree with the case law of the BOAs : when the words of the claims are clear, there is no need to look at the description.
Regarding your argument referring to the established case law of the BOAs, I note that this decision relates to IT technology, a different field than that of T 1989/18 and T 1444/20 which both relate to pharma. This shows a broadening spectrum of the BOA decisions challenging the current practice.
All in all, I see the current practice as a lose-lose situation for the applicant and the EPO : additional efforts and expenses without any clear benefits, in addition description amendments may open up 123(2) issues in opposition proceedings or before national courts.

DXThomas

Dear Mr Hagel,

Thanks for your further comments.
Your further comments call for a reply.

That an ED or an OD cannot behave arbitrarily is not open to debate.
Any requirement of an ED or an OD has to have a legal basis in the EPC and has to be justified so that a BA can exercise its judicial review under Art 12(2) RPBA20.

I also agree with you that whatever an ED or an OD does (or does not), the right to be heard has to be respected. In this respect I note that the board disagreed with the sweeping statement of the OD and rightly requested some further reasons. There was thus no SPV but a certain lack of argumentation on the side of the ED.

I hope that discussions have taken place or will take place at the appropriate body/level, for instance at SACEPO.
If both sides are willing to find a solution all the present discussions should come to an end.

One thing which will however remain unless Art 84 is amended, is that the description will have to be supported by the description and that it cannot be left as originally filed should the original claims have to be limited in view of the prior art revealed by the search in examination or brought forward by an opponent.

It is correct to note that T 2194/19 stems from a BA (3.5.03) in a totally different technical area than T 1989/18 (3.3.04) and T 1444/20 (3.3.01). I would nevertheless remind that there are 28 TBAs. Three decisions taken by 3 TBAs, two being in the same technical area, do not weigh so much when compared to the few hundred decisions which do not go in the direction shown in those three decisions. Those three decisions are clearly going against a long existing line of case law.
All three decisions do however fail to convince.

That in communications under R 71(3), EDs indulge themselves in bringing, sometimes numerous, amendments is a well-known fact.
According to the Guidelines and the instructions only minor amendments, e.g. typo, can be carried out in the application documents at this stage of proceedings.
Any amendment going further than such minor ones should be agreed with the applicant before issuing the communication under R 71(3).
This agreement must be document at the appropriate place in said communication.
Amendments related to substantial changes in the description, e.g. deletions, or amendments of the claims, e.g. combinations of claims, are the type of amendments which cannot be carried out, unless an agreement has been reached.

I can understand that with the production pressure, which is constantly increased, EDs hope that the perspective of a grant make some amendments palatable to the applicant. But this is not correct. That applicants do not tolerate this is quite normal.
Here the danger is indeed high of introducing problems under Art 123(2) under the pretext of “clarification”.
Once accepted, the applicant/proprietor cannot discharge its responsibility on the ED.

I have already asked Max Drei to provide some examples in which Art 123(2) issues in opposition proceedings or before national courts, by adapting the description to the claims, have led to a revocation. I personally have never come across such situations. That an opponent will try to bring in Art 123(2) issues is to be expected, as it avoids a discussion on the substance, but such “pseudo Art 123(2) issues” can be dealt with quite easily by an OD or a BA.

I would not say that we are in a lose-lose situation when an ED or OD requires the adaptation of the description when claims have been limited.
It is required by the EPC and as long as Art 84 has not been amended, it will have to be carried out.

It should not lead to a pedantic approach on the side of a first instance division, but for the same token, to a radically negative attitude on the part of the applicant/proprietor. In such a situation both sides lose out, and this is regrettable.

To conclude, I would like to draw your attention that if the applicant or the proprietor merely files AR without an adapted description, and on top of it, does not turn up at the OP the consequence can be quite drastic.

In the absence of a complete set of documents, either
– the application is rejected T 893/01, T 109/02
– the patent is revoked T 725/00, T 986/00, T1024/18

There are however decisions in which the board remitted to the first instance in spite of the absence of the
– applicant T 256/10
– the proprietor T 484/12

If the boards would not consider it mandatory to adapt the description to the claims, those decisions would never have been taken.

Max Drei

For this particular Decision, perhaps a hypothetical can help the debate about “embodiment” and whether the EPO is reasonable when it dictates to applicants that “You have two choices only; either delete the text or write in explicit terms that it is not the invention”.

I apply for a patent on my improved layered skin patch which is a wound dressing. I report that I have identified a hitherto unrecognised and undiscussed problem, namely “squabbling” between the layers, which over time, in use, adversely affects performance of the dressing. I include drawings of ten embodiments. The EPO searches and disputes the novelty of all my claims, including claim 1 which (in typical US form) ends with the words “wherein the layered skin patch includes an anti-squabbling feature”. It seems that some prior constructions would have achieved a non-zero reduction of squabbling but nobody had noticed it.

We end up taking to grant claims supported by the Fig 1 embodiment, and file divisionals to each of the embodiments of Figs 2, 3 and 4. All four go to grant. I should say that the description includes an enabling clear disclosure of how to measure how much squabbling has taken place, with any given “embodiment” of the anti-squabbling inventive concept.

I really do not want to say that Figs 2 to 10 are “not in accordance with the invention”. As the description explains that one can “mix and match” various features from the illustrated embodiments to optimise squabbling resistance, I really do not want to delete Figs 2 to 10 and the associated text. I would hope that I can work together with the ED, under the Guidelines, to find a fair solution. Is that possible, I wonder.

Some may say that my hypothetical will, in real life, never occur. I differ. I think it happens all the time.

DXThomas

https://documents.epo.org/projects/babylon/eponot.nsf/0/52B55A1EDAD81854C12579BF00308C89/$File/C_EN_2012.pdf

Dear Max Drei,

Beside the “squabbling” your hypothetical application corresponds to a large extent to the patent subject-matter of paper C 2012 which was about a three-layered patch.

Assume we are not in opposition, but in examination. Claim 1 as filed was very broad and any three-layered patch would be N destroying. Dependent claims 2-5 related to specific uses of the three layered patch.
– 2/1 A multi-layered patch according to claim 1 for wound healing
– 3/1 A multi-layered patch according to claim 1 for alleviating pain
– 4/1 A multi-layered patch according to claim 1 for treating wrinkles
– 5/1 A multi-layered patch according to claim 1 for use as a deodorant

If claim 1 is novelty stricken, then the dependent claims become independent variants and we end up with a lack of unity.

I have used this paper C as a mock for OP by removing one of the documents in the C paper. In the end, only claims 1 and 2 can be kept. The patent can only be maintained if all the various embodiments relating claims 3-5 were deleted.

Whether the description would contain a “rubber” statement that the various embodiments could be “mixed and matched” would not change the conclusion.

Let’s suppose that claim 1 can be saved by adding some specific features. It is only if the specific features can be applied to the subject-matter of the original dependent claims 2-5 that unity is apparently restored. This depends on what has been originally disclosed.

If the feature rendering the claim allowable can only be added in claim 1 and has no effect on the subject-matter of the original dependent claims, then we still have a problem of non-unity and the only way for the applicant is to file divisional applications for the subject-matter of any of the dependent claims.

Let’s further assume that the newly added feature rendering the claim allowable can be applied to the subject-matter of claim 3. Then the new claim 1 and original claim 3 can be kept in the same original application. All the other variants can then be made subject-matter of divisional applications.

It is abundantly clear for me that the new independent claim 1 in the original application which is pursued and in every divisional will have to be limited to the specific variant and any reference to the other variants originally disclosed will have to be deleted or marked as not falling under the respective independent claim.

The “rubber” sentence that the features in the various embodiments can be “mixed and matched” is of no use, as no “mixed and matched” solution has actually been disclosed. It is therefore irrelevant that the description explains that one can “mix and match” various features from the illustrated embodiments. You cannot avoid deletion or specific marking of the other variants by simply adding such a “rubber” sentence.

The preceding considerations apply mutatis mutandis to your hypothetical case.

When in typical US form the claim ends with the words “wherein the layered skin patch includes an anti-squabbling feature”, it is possible to consider that this claim contains a functional feature. Such a claim is not excluded from patentability as the applicant has provided a series of embodiments. Such a claim can easily be lacking N and hence the various embodiments become autonomous.

We can indeed end up taking to grant claims supported by the Fig 1 embodiment, and file divisional applications to each of the embodiments of Figs 2, 3 and 4. All four go to grant. I would however not go as far as to say that the original description includes an enabling clear disclosure of how to measure how much squabbling has taken place, with any given “embodiment” of the anti-squabbling inventive concept.

That the description explains that one can “mix and match” various features from the illustrated embodiments to optimise squabbling resistance, is of no relevance as there is no actual disclosure of what can be “mixed and matched”. You will never be allowed to claim in any of the resulting embodiment which is “mixed and matched” on the basis of the original disclosure. If you were to do so you would immediately be faced with an objection under Art 123(2).

Whether you like it or not, you will have to delete Figs 2 to 10 and the corresponding text. If you do not want to delete the figures and the associated text you will have to mark those figures and the corresponding text as not falling under the claims in each of the applications you are pursuing.

In the situation just described, there is in my opinion no hope that you can work together with the ED, under the Guidelines, and the existing line of case law (not taking into account T 1998/18, T 1444/20t and T 2194/19) to find a solution.

It might be hard, but this is what is meant when the claims have to be supported by the description under Art 84. It is not because you have originally stated that you can “mix and match” the various embodiments that you can leave the description untouched.

On the contrary, your example allows to demonstrate that the solution proposed in said three decisions is not correct and is at odds with Art 84.

Max Drei

That’s an interesting reply, Daniel. My hypothetical is based on a case on my desk at the moment. I see it as different from your tutorial example. My vision of anti-squabbling features are features of surface topography on one of the layers. These topographical features include parallel ridges (Fig 1), lines of bumps (Fig 2), lines of recesses (Fig 3), a matrix of sticky spots (Fig 4), and a matrix of little hooks (Fig 5). These features are not mutually exclusive. Including more than one of these features in any given surface of one of the layers is not problematic. One can imagine that the most efficient way to put the anti-squabbling invention into a commercial production line might be to use two or more of these features of topography, in combination. Not just any ridges or bumps will do, of course. But once the skilled person knows what squabbling is, they can then appreciate how to arrange the bumps and ridges so as effectively to stop all the squabbling.

Interesting is your tutorial example in the context of EXXON, fuel additive. In my case, on the discovery of squabbling, I should perhaps be claiming something like “Use of surface topography to stop layer-squabbling” for then I could perhaps keep all my Figures because all are embodiments of that new and inventive concept. But such a claim, if introduced during prosecution, would doubtless add matter, no?

Thinking of my first attempt to get to grant, based on Fig 1, I don’t have a problem in removing from my description any statements that Fig 2 et seq are “embodiments” of the invention as now claimed. But I do have a problem amending the description explicitly to state that they are NOT the invention and I do have a problem if you insist then that I delete them entirely.

I must say, I wonder whether the Board in T2194/19 has had some experience with a case with facts like my anti-squabbling case, and this is why it baulks at the line set out with such strictness in The Guidelines.

It seems that running a hypothetical in the thread does have some use, in stimulating further discussion. I’m glad. I have not yet gone to your Link and read the tutorial example. Should I do that now, or can we continue without my doing that?

DXThomas

08 Nov. 2022

Dear Max Drei,

For the skilled person, it might not be problematic to include more than one of parallel ridges (Fig 1), lines of bumps (Fig 2), lines of recesses (Fig 3), a matrix of sticky spots (Fig 4), and a matrix of little hooks (Fig 5) in any given surface of one of the layers in order to reduce squabbling. That they are not mutually exclusive is not at stake here.

One can indeed imagine that the most efficient way to put the anti-squabbling invention into a commercial production line might be to use two or more of these features of topography, in combination. Not just any ridges or bumps will do, of course. But once the skilled person knows what squabbling is, they can then appreciate how to arrange the bumps and ridges so as effectively to stop all the squabbling.

It remains that even if the description explains at the end that one can “mix and match” various features from the illustrated embodiments to optimise squabbling resistance, it is of no relevance as long as there is no actual disclosure of what and how it can be “mixed and matched”.

The “rubber” sentence at the end of the description will not allow you to “mix and match” those various embodiments unless some examples of those “mixed and matched” features are actually disclosed. The mere fact that it can be envisaged by the skilled person does not mean that such embodiments are directly and unambiguously disclosed.

The problem here is far from the adaptation of the description, it is a mere problem of added matter in the absence of a proper support in the original documents.

If for any reason you have to stick in one application with one type of anti-squabbling feature, you will have to delete the others from said application. At least it is how I see it and would advise an ED should it seek an advice.

Whether you can be claiming something like “Use of surface topography to stop layer-squabbling” depends on what the original description says. I see here a limit to the hypothetical, although it has certainly helped the discussion.

I agree with you that my example can be considered different, although I am not absolutely convinced.
Like any hypothetical example it has to be taken with caution and it only applies mutatis mutandis to your case.

At least the overall conclusion remains similar. If only one combination of the independent and the dependent claim can be allowable, the other examples will have to be deleted or marked as not falling under the claim.

In your case, if for any reason you need to limit your claim to one specific example, the other examples will have to be deleted or marked as not falling under the claim. I understand that you would be reluctant to do so, but this is how I see the situation.

What matters here is what has been originally disclosed.
One lesson is that a “rubber sentence” at the end (or at the beginning) of the description will not help you very much when it comes to mixing and matching.

I am sure that in the US it would be looked at in a much more lenient way, but this is not valid on this side of the Atlantic.
Over here, the drafting rules are much stricter, but this should not be a surprise.

There is no need for you to go further into my example.

Max Drei

Thanks for all that, Daniel. We have pretty much exhausted the topic, haven’t we.

Nevertheless, I remain disappointed by the present Guidelines. The current standard text on the end of an ED Art 94 Communications reminds me of the Iron Lady, Margaret Thatcher, and her famous phrase TINA (There Is No Alternative). But I still think that there are situations during prosecution when to amend the description to state explicitly that something disclosed in the description is NOT part of the invention is MORE “misleading” to the skilled, curious but impartial technical reader than to assert that it IS an embodiment of the claimed combination of technical features.

I also remain unrepentant about my invocation of the three prongs of the EPO’s Bermuda Triangle and the Examiner’s response to the unfortunate inventor caught in that Triangle. In your newest comment above, you observe that i) in my hypothetical an amendment might raise a “mere” problem of added matter (the third prong) and ii) whether it does or doesn’t depends on the quality of the original drafting. That seems to me to bear out my misgivings.

To find out during prosecution that the claim to a “new thing” is unsustainable but that the contribution to the art is more in the nature of a “new use of a known thing” is not unusual. It would be a pity if ED intransigence over prosecution amendment in such situations means that the inventor can’t get a fair scope of protection for that inventive contribution.

But for the time being I continue to put my trust in the long-established common sense and instinct for fairness that I have found over the years at the EPO. Even Margaret Thatcher was, in reality, far more flexible than her TINA would suggest.

Daniel X. Thomas

Dear Max Drei,

I understand your disappointment, and I agree with you that with a sensible and pragmatic approach both applicants/proprietors and divisions of first instance can come to an acceptable solution in the interest of all.

The three decisions were in a sense rather disturbing and brought forward problems which were not such that they warranted such an apodictic stance from some boards.

By the way, not only Maggie has used TINA, Mrs Merkel did to: “alternativlos” was also one of her favourite words.
Auxiliary question: why this stance came from lady PM/chancellor? ;-))

Max Drei

Daniel, you ask me: why did Merkel and Thatcher tell us that there is/was no alternative? I am glad to have the opportunity to give my answer.

History has revealed that both ladies were wrong. A client from Poland once told me that in Poland they say “There is always an alternative”. History teaches us then that one should be cautious in declaring that there is no alternative.

Oh and BTW, thanks for giving me a new word for my collection: apodictic. I like it!

I thought that the thread had run its course. Not quite yet, it seems.

Bring about

One point that I find surprising/annoying:
This decision cites T 1808/06 Reasons 2 in support for its position that not all “embodiments” of the description must be covered by the (amended) independent claims. Indeed the cited paragraph mentions inconsistencies between the claims and the description but it also states: “Reference to embodiments no longer covered by amended claims must be deleted, unless these embodiments can reasonably be considered to be useful for highlighting specific aspects of the amended subject-matter. In such a case, the fact that an embodiment is not covered by the claims must be prominently stated.”

Thus I do not understand how the board in this decision can consider that it is in agreement with the case law. There is divergent case law here. And the divergence is with a decision that seems to be a basis for the current practice of the first instance codified in the Guidelines. I am not sure that the conditions were met in the present case, but in general it seems to me that a decision of the Enlarged Board would be very welcome to settle a matter that potentially affects all patent applications submitted to the EPO.

Daniel X. Thomas