EP 3 385 548 B1 relates to a fixing device.
Brief outline of the case
In the meantime Opponent 2 had been taken to court in Germany on charges of patent infringement.
In a first decision, T 0235/25 2026-01-12, the board refused to postpone the OP and decided maintenance in amended form according to AR6.
The only point left to discuss was the adaptation of the description.
At the second OP the proprietor first requested remittal to the OD as in the meantime G 1/24 had been issued. The board refused to remit to the OD.
At the second OP, the proprietor filed an AR5a which should be dealt with before AR6.
The board did not admit AR5a under Art 13(2) RPBA. An objection under R 106 related to the non-admission of AR5a was rejected by the board.
To be discussed were AR6, 6b and 6c, and the corresponding description.
AR6 and 6b were considering to contravene Art 84.
In AR6a, the proprietor requested a stay awaiting the decision G 1/25.
Eventually the patent was maintained on the basis of AR6c.
The board’s decision on AR6 and 6b
Some of the limiting features included in the claims of AR6 are presented as optional in the granted version of the description.
This is the case, at least, in paragraphs [0024] and [0029] of the patent specification.
Paragraph [0024] describes a configuration in which the external thread extends at least partially or even entirely over the receiving area as merely ‘advantageous’, although this is mandatory in the claims. The feature constituting the inventive step, whereby the external thread has the same external diameter in the shank region and in the receiving region, is likewise stated as merely ‘preferable’.
In paragraph [0029], the same features are also stated as optional (column 6, line 11: Preferably; line 16: Where applicable; line 18: Preferably).
For the board, this constitutes an inconsistency between the claims and the description in each instance, leading to uncertainty as to which features form part of the invention and which features are merely optional.
The same applies to auxiliary claim 6b.
Consequently, AR6 and 6b do not meet the requirements of Art 84.
The board’s decision on AR6c
AR6c comprises the set of claims according to AR 6, which was deemed allowable in the interim decision together with a description adapted accordingly in paragraphs [0019] to [0022], [0024] and [0029] to [0032].
The opponents raised no objections regarding the adaptation of the description.
The board had no objections either.
Comments
It can be assumed that the proprietor’s tactics and requests had a direct link with the ongoing infringement before a German court.
The present decision corresponds to Case 3 exemplified in my recent summary of situations in which an adaptation of the description appears to be necessary
Keeping optional features in the description whilst limiting the claim constitutes indeed an inconsistency between the claims and the description.
This inconsistency leads to uncertainty as to which features form part of the invention and which are merely optional. The legal basis for objecting this inconsistency is Art 84.
In other words, the definition of the matter for which protection is sought in the description is at odds with that derivable from the claim wording.
Reasonable doubts are permitted whether the EBA will consider that in such a situation the description will not have to be adapted, but we never know.
Comments
8 replies on “T 235/25-2-Optional features in the description when the claim has been limited”
First reaction, to start the ball rolling. I can see that the word “optionally” tells us that the feature is not essential. But aren’t the words”advantageously” and “preferably” (the subject of the negative Decision on AR 6) qualitatively different from “optionally”? They don’t mean the same thing as optionally. They are not synonyms of “optionally”.
Perhaps in the German language of the proceedings, the understanding of the reader is different. But in English if I claim a range of, say, from 2 to 3, and in the description write that 2 to 3 is “advantageous” or “preferred” that doesn’t by itself tell the reader that the claimed range is optional. Rather, it is a disclosure that if you work within that claimed range you get a better technical effect. Meaning depends on context.
Am I doing the writer of the Decision an injustice? Do say.
@ Max Drei,
I’m not sure I can follow you, when you say that “advantageous” or “preferred” do not imply “optional”. Perhaps they do not in the layman’s language, but in patent language, they do — at least according to the EPO Guidelines, F-IV, 4.9:
> “**Optional features**, i.e. features preceded by expressions such as **”preferably”**, “for example”, “such as” or “more particularly” are allowed if they do not introduce ambiguity. In such a case, they are to be regarded as **entirely optional.**”
(**emphasis** mine)
Granted, this passage of the Guidelines is about claim interpretation, but I don’t see why the same interpretation should not be followed for the description.
Of course, in reverse, “optional” does not imply “advantageous” or “preferred”.
@ Extraneous attorney,
Thanks for your reply. In order not to be influenced by your views, I replied to Max Drei before reading your comment.
I think we agree broadly as we both referred to the Guidelines F-IV, 4.9. However, I might not be fully aligned with your view is your last sentence. To me in essence all those terms are synonyms. See my reply to MaX Drei.
Max Drei,
As far as I am concerned, the words ”advantageously” and “preferably” are qualitatively NOT different from “optionally”. It is disputable whether they are synonyms but to me, they do mean the same as “optionally”.
If you claim the range 2-3 and you say in the description 2-3 is “advantageous” or “preferred”, you will earn directly and unambiguously an objection under Art 84. What is the matter for which protection is sought? Is it the range 2-3 or something around the range 2-3. If it is around 2-3, what are the boundaries?
In chemistry you often see a claim of the type range 10-30, preferably 12-28, more preferably 14-26, and most preferably 15-20.
This formulation is acceptable and allows to save claim fees, but all the sub-ranges could for the same token be subject matter of dependent claims from an independent claim covering the broadest range. The sub-ranges are mere options within the broad range.
If in a disclosure your define different ranges for different parameters, you can only combine ranges of parameters at the same level of preference in the absence of a pointer from a preferred range to any other more preferable or most preferable range. The same applies if you combine a broadest range of one parameter with a sub-range of another parameter. Whether you write ”advantageously” instead of “preferably”, does not change the picture.
The two first § of the Guidelines F-IV, 4.9 read:
Optional features, i.e. features preceded by expressions such as “preferably”, “for example”, “such as” or “more particularly” are allowed if they do not introduce ambiguity. In such a case, they are to be regarded as entirely optional.
These expressions introduce ambiguity and render the scope of the claim unclear if they do not lead to a restriction of the subject-matter of the claim.
As far as the exact value within a range or of the end values of the range, I refer to the Guidelines F-IV, 4.7.and its subsections. F-IV, 4.7.1. deals with the interpretation of words like “about”, “approximately“, “substantially”. F-IV, 4.7.2 deals with clarity objections resulting from the use of words like “about”, “approximately“, “substantially”.
I have nothing more to add, but to say that you are doing the writer of the decision an injustice.
I wrote my reply before looking at the comment of Extraneous attorney. I see my position confirmed by his comment. He also referred to F-IV, 4.9.
Thank you both for your replies. I wrote that meaning depends on context. What I did not write, but should have done, is what the claim says. Suppose that the claim, amended in prosecution, to narrow the range of X, now recites for X a narrower range of 2 to 5, and the descripion includes a statement that range 2 to 5 is “advantageous” (or “preferable”) because it delivers an enhanced tech effect Y. How is that “inconsistent” with the claim? How does it render the claim unclear?
But if, instead, the description announces that the range 2 to 5 recited in the claim is “optional” I see that as different. Suddenly, there vis a contradiction.
But hey, never mind. It’s not that important. I’m only trying my best to ensure that language is used with precision (and for a reader with a mind willing to understand)
Max Drei,
I can agree with you that meaning depends on context. However, your more precise example, does not change my point of view. You will still have to remove “advantageous” or “preferable” when the claim is limited to the range 2-5.
If you have not disclosed originally that the range 2-5 delivers an enhanced effect, you will not be allowed to add this in the description. Such an addition would be objected under Art 123(2).
Showing, under G 2/21, that an enhanced effect can be obtainable can save your limited claim as far as inventive step is concerned, but this effect cannot be added to the original description if it was not originally disclosed.
I cannot see any difference in essence between “optional” and “advantageous” if the effect in the sub-range was not originally disclosed. This is a situation in which the front page of the patent will bear the mention STIN (Supplementary Technical Information) inviting third parties to consult not only the description of the patent, but also the public part of the file. See Guidelines H-V, 2.3.
Mr Thomas,
I have been surprised by your comment : “ the definition of the matter for which protection is sought in the description is at odds with that derivable from the claim wording”. You seem to assume that the description should contain a definition of the matter for which protection is sought. I do not find any such role for the description in the EPC. Its role must not be equated to that of the claims.
The decision shows the risk of using qualifiers in the description. Personally, I have always avoided in my drafting and prosecution practice to declare that a feature is “essential”, and even “preferred” or “preferable”, as this may be too limiting and it is generally unnecessary. When you are in the applicant’s shoes, it is important to keep options and every element of the description must be able to provide adequate support, in case you want to shift the scope of the claims vs. their initial wording. The disclosure of technical effects/advantages linked to certain embodiments/features is certainly helpful to provide support esp. in view of G 2/21 but this does not require qualifiers such as “preferable” or “preferred”.
Mr Hagel,
I maintain my point of view and I am assuming nothing In the present case, the definition for which protection was thought derivable from the plain claim wording was at odds with the fact that some features in the description were still described as being “preferred” or “optional”, although they had been used to limit the independent claim.
There is no risk whatsoever to use qualifiers in the original description. At this moment in time, they are perfectly acceptable. The mere fact that some features are contained in dependent claims as filed indicates that they are, at this moment, merely optional, preferred, advantageous or the like.
Once being added to an independent claim in order to limit it, those features cannot any longer be preferred, optional or advantageous. The scope of the claims vs. their initial wording is then manifestly shifted.
It might be true that in the technical filed you have been working, the wording “preferred”, “more preferred” or “most preferred”, might have been unusual. Those formulations are however usual in chemistry and pharmacy when it comes to ranges.
Even as EPO staff member I was aware that a good representative would never write in the description that a feature is essential. However the essential character of a feature can be gained from the context.
Any feature necessary to obtain a given technical effect supporting inventive step is to be considered as essential. Any feature mentioned in an independent claim is by essence essential. If the original disclosure presents three embodiments ABC, ABD or ABE, it is manifest that AB is essential.
You do not have to use the word preferred, optional or advantageous, but the context implies it.