Brief outline of the procedure
The present application concerns digital communication systems in which communication data is transmitted via interleaving using error correction.
According to the application as filed, the invention provides “for a very efficient and reliable use of memory for error-correcting code interleaving” (paragraph ).
The applicant appealed the refusal decision of the ED that the sole request was not allowable view of Art 84 and 123(2).
The board considered that AR 6, which became the sole request during OP, was not any longer infringing Art 84 and 123(2).
The case was remitted to the ED for further prosecution under Art 54 and 56 for independent claims 1 and 5 as well as dependent claims 4 and 8 under Art 84 and 123(2).
Most of the objections under Art 123(2) have been overcome. One objection was found unjustified.
The case is interesting as the board elaborated on the adaptation of the description.
The board held that the requirement that the claims are to be supported by the description under Art 84, second sentence, does not necessarily mean that all the “embodiments” of the description of a patent application have to be covered by the independent claims, i.e. that all the embodiments must fall within the scope of those claims. The board developed its argumentation on this topic in point 6.2.2 of the Reasons.
Added-matter in presenting an alternative to claimed subject-matter.
The ED’s position
In Reasons 2.3 of the appealed decision, the ED raised an objection under Art 123(2) related to the insertion of the expression “an embodiment of the present invention alternative to the embodiment as claimed in the present invention” in amended pages 14 and 23 of the description relating to original Figures 3 and 9 respectively. The ED considered that those figures did not relate to subject-matter that falls within the scope of the invention as claimed in the independent claims.
The board’s position
The board did not agree that the mere insertion of this expression adds subject-matter that was not disclosed in the application as filed. This is because it would have been directly and unambiguously apparent to the skilled reader that original Figures 3 and 9 and their respectively associated paragraphs  and  concern convolutional interleaving using a memory of a specific size (size A).
The convolutional interleaving described in these figures and their associated paragraphs therefore differs from the convolutional interleaving that is claimed in independent claims 1 and 5.
For the board, this remains to be also the case with the expression “an embodiment of the present invention alternative to the embodiment as claimed in the present invention” being inserted in original paragraphs  and . The board also noted that the ED did not indicate in Reasons 2.3 of the appealed decision which subject-matter they considered to have been added compared to the application as filed. The objection was thus unfounded
Support by the description
The ED’s position
In the Reasons 4 of the appealed decision, the ED observed that the following paragraphs of the description, namely
- paragraph , relating to Figure 3;
- paragraph , relating to Figure 5;
- paragraph , relating to Figure 6;
- paragraphs  and , relating to Figure 8;
- paragraph , relating to Figure 9,
all concern convolutional interleaving using a memory of said specific size A.
The ED regarded this to be at odds with the smaller memory size of, size B, used in independent claim 1.
The board’s position
The board did not endorse the objection raised in Reasons 4 of the impugned decision.
Definition of the invention
First, the board was not convinced that, according to the EPC, the “invention” is necessarily and always to be equated with the “invention claimed”, see e.g. T 944/15, Reasons 17.
In T 944/15, the board held that the role of the claims is, according to Art 84, to define this matter for which protection is sought. They must be examined for compliance with the provisions of the EPC. They do not, in themselves, define what the invention is. Instead, it is the corresponding teaching in the application which does that. On the other hand, a patent application provides a description of the invention, including a teaching of a technical solution providing a technical effect.
In the present decision, the board added that this definition of the invention as what the application teaches was adopted by the EBA in G1/08 “Tomatoes/STATE OF ISRAEL” OJ 2012, 206 (Reasons 18.104.22.168), when referring to the “Rote Taube”, cf. BGH, 27.03.1969 – X ZB 15/67, definition of the invention as being in conformity with the EPC.
Importantly for the present case, the role of the teaching in determining the nature of the invention in respect of Article 53(c) EPC was emphasised by the Enlarged Board in G 1/07 (4.3.2). In G 1/07, the EBA gave a definition of what has to be considered as a surgical treatment in the meaning of Art 53(c).
It is, therefore, not the claimed scope, but the corresponding teaching of the invention which is decisive for establishing what the invention is, and, for the purpose of Art 53(c) EPC, whether or not a claimed invention only concerns the operation of a device without any functional link to the effects of the device on the body, cf. G 1/07, Reasons 4.3.2.
Support by the description under Art 84
Secondly, the board considered that the requirement that the claims are to be supported by the description, cf. Art 84, second sentence, does not necessarily means that all the “embodiments” of the description of a patent application have to be covered by the (independent) claims, i.e. that all the embodiments must fall within the scope of those claims.
For the board, this conclusion cannot be derived from the EPC. It can also not be derived from the jurisprudence of the BA, according to which merely inconsistencies or contradictions between the claims and the underlying description are to be avoided in that context. In this respect it referred to T 1808/06, Reasons 2; T 2293/18, Reasons 3.3.5.
The present board considered that it may well be that, in a given case, there is such an inconsistency or contradiction between the claims and an “embodiment” of the description. But this has to be justified by the ED. The mere indication that the embodiment does not or no longer fall under the respective claim(s) is not sufficient in this regard.
R 42(1,c) and support by the description
Thirdly, the board considers that in particular R 42(1,c) cannot be the legal basis for establishing such a general and broad requirement for an adaptation of the description to the claims. It is simply not what this provision says.
Rule 42(1,c) requires that the description discloses the invention, as claimed, in such terms that the technical problem and its solution can be understood, and that it states any advantageous effects of the invention with reference to the background art. These requirements set out in R 42(1,c), however, cannot be taken to mean that all the embodiments described in the description of a patent application have to fall within the scope of the claims.
It is not to be disputed that any decision of a BA is a collective decision. However, it is worth noting that the legal member in the present decision is different from the legal member having acted in T 1998/18 and T 1444/20.
Is the demonstration of the board convincing?
Having been drafted by the whole board with the help of a different legal member does by no means allow to find the reasons more convincing.
There is at least an attempt to justify that the description does not have to be limited to the claims granted in order for support under Art 84 to be given to the claims.
Trying to find support for this thesis in G 1/08, which deals with the exceptions under Art 53(b) and G 1/07 which deals with surgical methods under Art 53(c) is an attempt which however fails to convince.
The two EBA decisions are dealing with two very specific problems which cannot, in my humble opinion, be generalised.
I would rather claim that the interpretation of those decisions of the EBA by the present board has been somehow misused in order to obtain a specific result. Some people would speak about a “dynamic interpretation” of the case law of the EBA.
Invention and scope of protection
That the invention is not defined by the claims is nothing new under the sun, but to claim that the description can disclose embodiments which are not covered by the claims is quite a different story. In the former East-European states the claims were defining the invention. Not in European practice.
It is clear that the claims merely define the scope of protection and not necessarily the teaching of the invention, which can be doubted when the claim is about an activity (process or method claim), but there is one aspect which should not be forgotten.
At the end of examination procedure, or even at the end of the opposition procedure, the claims are most often limited in view of the prior art revealed by the search or the opponent. It is thus not infrequent that embodiments originally disclosed and the claims defining the scope of protection as filed have to be limited to what is the actual contribution to the art.
That in such a situation embodiments do not fall under the claims eventually granted or maintained is not infrequent.
The result of the examination/opposition is to end with a patent as it should have been originally filed. It is a fiction, but this fiction has been at the basis of all the patent laws requesting substantial examination.
It is thus difficult to understand why embodiments which have nothing in common with the eventually granted claims should not be deleted or marked as no being part of the invention and the corresponding claims.
Ignoring this fundamental aspect of examination and clinging to R 42(1.c) as an obstacle to deleting embodiments is not the way to go.
What actually matters in not R 42(1,c) but Art 84. As an article of the EPC, Art 84 has a higher legal ranking than any of the Implementing Rules e.g. R 42(1,c). The reason for this is to be seen in Art 164(2).
Previous case law
The present board carefully avoided mentioning T 1989/18 and T 1444/20 in which everything already turned already around R 42(1,c).
There is still a series of decisions of the BA which consider the adaptation of the description is a necessity, cf. T 1024/18, Reasons 31.6-3.10. T 1024/18 takes the opposite view of T 1989/18. T 1024/18 is exemplary of what can be considered an established line of case law.
The headnote of T 1808/06 specifies that it is only in situations where the removal of inconsistencies between description and claims is not possible for procedural reasons, e.g. no amendment possible of the granted version that – purely as an auxiliary construction – Art 69(1) can be invoked for an interpretation of the claimed subject-matter.
In T 2293/18 the board reminded that the support of the claims by the description, is a different and distinct requirement in addition to the clarity and conciseness of the claims as such under Art 84. The requirement that claims must be supported by the description ensures that the claims reflect the effective contribution to the prior art in such a way that they can be carried out by the skilled person in the whole field covered by them. When speaking about contribution to the prior art, G 1/03 immediately comes to mind.
The present board bases its conclusion on the fact that the mere indication that an embodiment does not or no longer falls under the respective claim not sufficient to deny support by the description, but has to be justified by the ED.
One can thus a contrario conclude that if the ED justifies the absence of support, the objection might be correct.
The demonstration of the board that some embodiments do not need to be deleted fails to convince.
It is the duty of the EPO to insure that in later procedures the proprietor cannot prevail himself of possible interpretations which could be possible in case the description is not adapted to the claims.
Art 69 and its Protocol of Interpretation is prima facie for national respectively supranational jurisdictions, not for the EPO . Art 69 and its Protocol of Interpretation can only be effective if no loopholes are left to the proprietor, hence the necessity to adapt the description to the claims.
This does not mean that a pedantic adaptation has to be carried out. Some common sense should prevail in the matter.
Established case law is still such that the description needs to be adapted. It should stay like this.
Should a change be envisaged and wished two possibilities are offered
- a referral to the EBA is one possibility. I can however not see the president of the EPO filing such a referral. And the result might not be the one wished by some representatives, as it might endorse the established line of case law ;
- Another possibility would be to amend R 42(1,c) so as to clarify that embodiments of the invention not falling under the claims are to be deleted.
If R 42(1,c) were to be amended as suggested, decisions like T 1989/18, T 1444/20 and the present one would become obsolete. This is by far the preferable option.