The application has already been discussed under the heading “Convergence of requests”
The general part of the post and the outline of the case will not be repeated here.
For the outline of the case, please refer to the parallel post under T 3097/19.
Inventive step of claim 1 of the MR + AR1 and 2
As the applicant did not reply in substance to the objections raised in the annex to the summons, the board considered that claim 1 of the MR as well of AR1 and 2 lacked IS over the same document D1.
Inventive step of claim 1 of AR3 and 4
The Board had no objections as to the obviousness of the claimed matter, because, on balance, although the skilled person could certainly have implemented the detection in the specifically claimed manner, the board has no evidence to justify the finding that the skilled person would actually have done it starting from D1.
Adaptation of the description for AR3 and 4
The board noted that description of the invention has not been amended since the entry in the European phase. It is thus the same for all requests.
The summary of the invention (paragraphs 7 to 11) reproduces the original claims and makes, for instance, no reference to the detection of a search window.
In the current application, the description:
(a) summarizes the invention by a set of features which does not include all the claimed features by omitting at least features ii) and iii), cf. paragraphs 7 to 11;
(b) defines as embodiments of the invention devices which do not contain all the claimed features, see e.g. the first embodiment and paragraph 108.
(c) states that modifications of embodiments or new embodiments obtained by unspecified combinations of technical means remain within the scope of the invention, cf. paragraph 107.
The way in which the description defines the invention is thus inconsistent with the words used in the claims. The present board was of the opinion that due to this inconsistency the scope of protection cannot be determined precisely, and that, therefore, AR 3 and 4 do not comply with Art 84.
Effectively, the board found AR 3 and 4 not to be allowable because their description was not “adapted” to the amended claims, although it did not have any objections under Art 84 C to the claims as such.
With this decision, the board also took position vis-à-vis the recent discussion, triggered by T 1989/18, as to whether the description needs to be “adapted” to amended claims and why.
The board also disagreed with T 2194/19 and concurs with the conclusions expressed in, especially, T 1024/18 and T 2766/17. Contrary to T 2194/19, the present board considered it necessary that embodiments said to be “of the invention” must fall within the scope of the claims.
For the board, under a systematic interpretation of the EPC, the function of the claims, as defined in Art 84, is only achieved when the potentially conferred scope of protection can be determined precisely. Whether this is the case for a specific patent application (or an amended patent) can only be made with due consideration of the description.
In the board’s view, this implies in particular an appreciation that under the EPC, a patent, and hence protection, is granted for an invention, cf. Article 1. What is the claimed scope of protection has thus to be determined on the basis of the claims in conjunction with the description of the invention, cf. Article 78(1,b), in consideration of the fact that protection is sought for the invention described.
So, if a claim is directed to something which is different than that described to be the invention, then the application for grant is self-contradictory, and it can be questioned for which matter the protection is actually sought. For the scope of protection to be determined precisely, the definition provided by the claims of the matter for which protection is sought must therefore be consistent with the definition of the invention provided by its description.
The Board also considered that this consistency between the claims and the description is necessary for legal certainty. The skilled person to whom the claims – and the entire application – are addressed must not be confronted with contradictory statements when reading the patent application as a whole. Otherwise, they may be left with doubts as to what is the invention sought to be protected.
The whole argumentation is to be found in the Reasons, Points 27 to 34.
According to Art 84, the purpose of the claims is to define the matter for which protection is sought.
For the board of appeal this imparts requirements on the application as a whole, in addition to the express requirements that the claims be clear, concise and supported by the description.
The board deemed it to be an elementary requirement of a patent as a legal title that its extent of protection can be determined precisely. Whether this is the case for a specific patent application (or an amended patent) can only be decided with due consideration of the description.
Claims and description do not precisely define the matter for which protection is sought if they contradict each other.
This decision is to be applauded as it takes, once again, the counterpoint to the various decisions considering that the description need not be adapted and that the description can comprise embodiments not falling under the claims.
Will the very loud voices considering that the three decisions should prime over the long line of case law requiring adaptation of the description start rethinking their position? I hope so, but I do not think it will sufficient.