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.
Comments
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.
https://www.epo.org/law-practice/case-law-appeals/recent/t193097eu1.html
Comments
23 replies on “T 3097/19 – Adaptation of the description”
Daniel, what I regret is the tone of decisions such as this. It reminds me of that old joke about the old age pensioner driving down the Autobahn and on the phone with his wife, who called to warn him about the reports of a Geisterfahrer on that same Autobahn. His reply: One Geisterfahrer? Schatz, there are lots of them.
I read here that it is an “elementary requirement” of any patent system, that the description has to be amended in prosecution to be in precise conformity with the allowed claims because, otherwise, the scope of protection remains undefined. Curious then, that of all the world’s Patent Offices, the EPO is the ONLY one to enforce this “elementary” requirement.
Opinions differ, as to whether the claim “defines” the invention for which protection is sought. But I don’t know anybody else who thinks that the task of the description is to define that invention. Perhaps those with English as first language have a different idea what “define” means than those on the European mainland?
Dear Max Drei,
Whether the EPO is the only office in the world requiring adaptation of the description is, in my humble opinion, irrelevant.
In the light of the EPC as it stands, this is a further decision finding that the description has to be adapted to the claims.
In my long standing practice of the EPC the description and claim had to be adapted to each other.
That some boards are of a different opinion is their good right, but it is a matter of fact that those decisions do not correspond to the general line of case law in the matter.
If the description is not defining the invention what then the function of the description?
Daniel, you ask what is the function of the description. My answer is that its purpose is to provide an enabling disclosure of the invention defined by the claim, to enable the skilled reader of the patent to put the invention into operation and effect over the full scope of the terrtory defined by the claim. The description and the claim have different but complementary functions. The claim tells readers what is an infringement and what is not. The description delivers to those readers the quid pro quo of the patent system, which offers time-limited exclusive rights (defined by the claim) in return for an early enabling disclosure (provided by the description). This for me is what the EPC means when it says that the description must “support” the claim.
That is my opinion and, until recently, I thought it was everybody else’s too.
Dear Max Drei,
The whole patent system is built on the exchange of a disclosure for a timely limited monopoly.
I can thus agree that in this respect the description “supports” the claims.
But if the description consists of an enabling disclosure, why do elements which do not contribute to the enabling disclosure of the claims have to stay in the description once the claims are limited?
I come back to my example of the optional features.
If an optional feature is incorporated in the independent claim, leaving the feature as optional in the description cannot be considered as enabling, as it says something different from what is said in the claim.
In my comment on T 2194/19 I have replied to Mr Lambnton and took position about the paper of Reddie and Grose which apparently corresponds to a large extent to the article published in the October edition of the CIPA Journal.
What I have said there applies mutatis mutandis here.
If the claim is limited to “amorphous plastic” in how far does it help enablement when in the description it is specified that “amorphous plastic” may cover purely amorphous plastics, or both purely amorphous and mixed blends.
If the claims defines the amorphous plastics as in the description than enablement is given to the broadest definition.
If the claim is limited to amorphous plastic, then enablement has to be limited to amorphous plastics.
The same applies to my example of the “ventilator”.
When some embodiments originally disclosed are not any longer novel and inventive over the prior art, in how far is it necessary for enablement purposes to keep those non-patentable embodiments in the description or to say that that they still represent the invention as claimed.
In how far do claim-like clauses kept in the description help enablement? I do not see this at all.
To me, support of the claims by the description does not stop at enablement. This has been my position all along my active time at the EPO and still is. See the examples above.
Daniel, I have been through several draft replies but have decided to bin them all. It seems that you and I differ what is meant by “enablement”. For me, it is quite simple: exclusively Art 83 EPC, and nothing to do with Art 84 EPC. Just as we need to keep clear the distinction between Art 54 and Art 56, so we need to keep distinct the requirements under Art 83 and Art 84.
Dear Max Drei,
You consider that “support by the description” is only referring to Art 83. To a large extent I can agree with you. if an objection under Art 83 is raised, it can in general only be overcome by infringing Art 123(2) as what is added in the description or the claims finds no support in the originally filed documents.
The problem is that Art 83 does not mention the support by the description, but Art 84 does.
When taking about “support by the description” we can thus not avoid taking into account Art 84 but certainly not Art 83, at least directly.
By the way, there is a link between Art 83, 84 and 56. See G 1/03 or the catchword of T 2001/12.
This link between those Art of the EPC is not very known when I see the reaction in seminars I have been leading.
I would however add it does not help in the present discussion of what is supported or not in the meaning of Art 84 and what is to be amended in the description once the claims have been limited.
It is nice that the Board thinks the EPC should have been worded differently and has decided to invent a “precisely determined” criterion which the Board deems to be an “elementary requirement of a patent”, but the Board should stick to the wording of the EPC. This decision is not persuasive.
Dear Anonymous,
It will not come as surprise that I am of a different opinion.
The board is sticking to the wording of the EPC.
Art 84 requires the claims to be supported by the description.
It has not come to the conclusion you would have liked to see, but you have not explained why the decision is not persuasive besides a rather sweeping statement.
I would not be surprised if R 42 would be modified in due time so as to make it clear that the description will have to be adapted to amended claims in order for those to be supported by the description according to Art 84. It is pure guesswork, but such a possibility would bring an end to the present discussions.
An amendment of Art 84 is not to be expected in the near or even distant future.
At the Diplomatic Conference in 2000 it was suggested by the EPO to transfer Art 84 to the Rules of implementation.
The Diplomatic Conference did not pursue this idea. We will thus have to leave with Art 84 as it stands.
A proposal of the UK delegation was to add Art 84 to the grounds of opposition.
This proposal was dismissed by the Diplomatic Conference.
A referral to the EBA is most probably not to be expected from the president of the EPO.
A referral could only come from a board, but it would first have to be admitted by the EBA, and the result might not be the one wished by all the supporters of T 1989/18, T 1444/20 and T 2194/19.
Modification of R42 as you suggest, in order to ensure that the “correct” interpretation of A84 is reached, would seem to amount to a “dynamic interpretation” of the sort that we saw in G 3/19.
I thought that you were against such practices?
Dear Other Anonymous,
Where did I say I was in favour of an amendment of R 42?
I simply thought that it could be a possibility to end the discussions.
Some boards would then not be able to base their refusal of an adaptation of the description on this Rule.
Amending R 42 has nothing to do with a dynamic interpretation of the case law of the EBA.
If R 42 is amended under Art 164, it will not be a dynamic interpretation of the case law of the EBA, but a new rule of law. This quite different!
Dynamic interpretations of the case law of the EBA are delicate and not necessarily convincing as they might change again. In this respect they should be avoided.
Up to now the case law of the EBA changed once. In the early days the proprietor could oppose his own patent. Later the EBA decided that he could not as the opposition is a contentious procedure.
That the opposition procedure is a contentious procedure was known from the outset. The first decision of the BA could thus have been different.
With a new R 42,
The comment above has been cut off, but the gist is clear. However, with respect, you are entirely wrong about G 3/19.
G 3/19 was not a dynamic interpretation of the case law, as you suggest. It was explicitly a dynamic interpretation of the EPC, specifically Art 53(b), as set out clearly in the keywords and in points XVIII onwards of the reasons. That interpretation of the Articles of the EPC was “justified” by the amendment to Rule 28(2) which apparently reflected a “clear legislative intent” which “substantially changed” the “legal and factual situation” (points XXVI.4-XXVI.7).
This seems to be tantamount to a circumvention of Article 164 EPC. The Enlarged Board’s entirely unconvincing reasoning at point XXVII of the reasons only makes this clearer.
In the circumstances I fail to see how an amendment of Rule 42 to impose the “correct” interpretation of Article 84 is anything but completely analogous to G 3/19.
But, the Enlarged Board has said that’s OK, and has rendered Art 164 essentially redundant, so what’s sauce for the goose is sauce for the gander, no?
I concur with MaxDrei and Anonymous’ critical comment regarding the addition of a requirement for a « precise determination » of the extent of protection based on the 1st sentence of Art 84. It is indeed a « dynamic » – I would even say « creative » – interpretation of the EPC ! The Board seems to apply to the interpretation of the EPC the principle of purposive construction for the assessment of claim scope so dear to UK courts.
This shifts the basis for the requirement to adapt the description so as to remove inconsistencies with the claims from the initial position that it is based on the « support » requirement of Art 84 to a brand new requirement. The Board probably did not consider this initial position very reliable.
Regardless of whether this is legitimate, this purposive construction approach would likely generate undesirable uncertainties as to the interpretation of EPC specific provisions and as to the admissible approaches to interpretation. It is of note in this respect that the Board accepts (Reason 36) that its approach may be « in tension « with the case law of the BOAs.
It should also be pointed out that the requirement for a « precise determination » of the extent of protection is in realistic terms out of reach. With claim wording with apparently clear meaning, thus meeting the clarity requirement, there are always ambiguities which remain, even with very simple words, as apparent when a national court assesses the scope of claims in infringement proceedings.
A case very much in point here is the England and Wales High Court decision L’Oréal vs RN Ventures [2018] EWHC 173 (Pat) of 05 February 2018 relating to a skin treatment device. Excerpt :
« 62. Mr Moody-Stuart suggested that Mr Herbert was applying an “overly precise understanding of the terms, derived from his degree rather than coloured by the experience of the skilled addressee at the time”. I agree with this submission. »
In this case, expert evidence subject to cross-examination convinced the judge that while a shear mode embodiment of the device was deleted from the claims and the description during EPO examination and only a tension/compression embodiment was ultimately claimed and described, the latter embodiment would actually create a shearing effect.
Another significant aspect of this decision is that the court dismissed the notion of a prosecution history estoppel, explaining that the applicant’s approval of the amendments was not to be equated to a disclaimer. UK courts are not isolated on this topic, prosecution history estoppel is not accepted as a rule by other European courts.
Dear Mr Hagel,
I am pleased to see that you continue posting comments on the blog and I am thankful to this.
I replied to a certain extent in my comment to “Another anonymous” about the “dynamic interpretation” of the EPC in view of G 3/19.
I was however aiming at the last part of the second sentence of Art 84.
The thought of a “dynamic interpretation” of the first instance is quite interesting.
When stating that “a precise determination of the extent of protection is in realistic terms out of reach”, you have a point.
This is the prime reason for Art 69 and its Protocol of Interpretation.
I would therefore say that the first sentence of Art 84 finds a dynamic interpretation in said Art 69 and its Protocol of Interpretation.
Any national judge can give his own interpretation of the claims and devise any doctrine of equivalents he wishes.
The EPO has no say about the scope of protection with the exception in opposition in view of the requirements of Art 123(3).
The case law of the BA of the EPO requires, in my opinion rightly, that the claim wording should be clear, thus meeting the clarity requirement as stated in the first sentence of Art 84.
That, sometimes, but not always, some ambiguities, can be considered remaining, it is for this reason that courts assess the scope of claims in infringement proceedings.
And here we are back on Art 69 and its Protocol of Interpretation.
That in Europe there is in principle no file wrapper estoppel is not at stake.
It is rarely used in national courts, but, for example, it was the case in first instance in The Netherlands in the famous pemetrexed case.
Should it become established that the description does not have any longer to be adapted, then it would be necessary to introduce a kind of file wrapper estoppel.
Otherwise it would not be possible to determine why claims have been limited during prosecution. This is exactly the case in the US where the description is never amended.
Approval of the form of the claims is a necessity as in the contrary there is no grant.
It is certainly not a disclaimer in the classical meaning of this notion.
However, when the claims have been limited during prosecution, it implies necessarily that the claims as filed were not comprising patentable subject-matter.
In the UK case you quote, the claims were interpreted differently and this was only after cross-examination of an expert, that the judge came to his conclusion.
The case is thus too specific to be taken as a general indication.
There is no cross-examination of witnesses or experts at the EPO.
Hearing of an expert has regularly be refused by the BA.
I still come back to my general questions:
1) If an optional feature is incorporated in the independent claim, what can be the reason for an applicant/proprietor in leaving the feature as optional in the description?
2) When some embodiments, way of carrying out the invention or the like, are not any longer patentable, what can be the interest for an applicant/proprietor to maintain in the description that those embodiments, way of carrying out the invention or the like, still correspond to the claimed invention?
3) What is the good of clause-like statements in a description when those clause-like statements correspond to the originally filed claims or those of a parent application?
To my knowledge, I have not yet received convincing arguments in reply to those questions.
Those questions are however at the core of the requirement that the claims have to be supported by the description once the claims have been limited.
Daniel, I too am glad that the discussion is still running and, whether or not Francis Hagel replies, I have a comment in reply to your items 1, 2 and 3.
Taking 3 first, I myself include the claim-like clauses when filing a divisional but am content to excise them in order to get to grant.
As to your 1 and 2, what bothers me is when an ED requires me either to delete entire passages of detailed description or else state explicitly that the description is NOT of the invention. For me, there are very often detailed description of an illustrated device that lacks one or other feature of the allowable claim 1 but nevertheless is vital to the task of the description and drawings, to enable the claimed subject matter. Usually, the enabling description of Fig 1 is essential to the enablement of the embodiment of Fig 2, Fig 2 being within the allowable independent claim. Usually, features described in one illustrated device are available for inclusion in all the other illustrate constructions.
The way I compromise is to state in the introduction to the drawings that Fig 2 is an embodiment of the claimed invention. For Fig 1 I state instead that it is a longitudial section of a catheter (or whatever). I refrain from saying that it is an embodiment of the claim but neither do I state explicitly that it is NOT an embodiment of the invention.
In doing this, I want to achieve the full scope of protection for which my client is entitled. Who could reasonably deny my client that? Has my way of addressing Art 84 now become intolerable for the EPO though?
Dear Max Drei,
I can happily agree with your position on point 3. As long as the claim-like clauses are deleted upon grant, the fact to have them in the application at fling is not a real problem. Should the subject-matter of the original claims be found in the original disclosure, the need for clause-like statements is not apparent at all.
This should be valid whether we are filing a divisional or not. Introducing such claim-like clauses during examination should however not be accepted, especially if they refer to the original claims which in the meantime have been limited.
As far as point 1 is concerned, I do not think that an entire passage has to be deleted. It is just necessary to remove the statement that a feature is optional.
It would go way too far to delete the whole passage on the optional feature and I cannot see a division going as far as this.
The situation is more delicate with point 2. The question here is the following: is it reasonable for an ED to require either to delete entire passages of detailed description or else state explicitly that said passages of the description do not represent the invention.
In case of some embodiments not relating to the invention as claimed, those cannot be left in the description.
The description cannot contain any ambiguity in this respect.
As an example, there were 10 Figs in the original filing. Fig 1 was representing the prior art and Fig 2-10 were relating to the invention originally claimed.
In view of new prior art, the subject-matter of Figs 2-5 is not any longer falling under the claims as they represent non-patentable embodiments of the originally claimed invention. Deletion of Figs. 2-5 and the corresponding description is not absolutely necessary, but it cannot be left in the description of the granted or maintained patent that those Figs represent the claimed invention.
If a given passage is needed for the comprehension of the invention claimed and hence for enablement, then it can be left in the description, but it has to be marked as not falling under the claims. There is no way out of this.
To take your example, if Fig 1 is essential to the enablement of the embodiment of Fig 2, Fig 2 being within the allowable independent claim, you cannot say directly or indirectly that Fig. 1 represents the invention. What you can say is that Fig. 1 is essential for the understanding of the invention, but does not represent the invention. I understand that you wish to refrain from saying that it is an embodiment of the claim. A division can require you to say that it is not an embodiment of the invention but necessary for the understanding of the invention. Leaving a doubt of what is or is not representing the invention claimed is not acceptable in European practice, or at least as long as Art 84 is drafted as it is.
In any case I do not find it appropriate to require deletion of parts of the description and of the drawings, but it has to be clear to the reader what falls under the claims and what not.
I am not sure that I could convince you, but this is what I can say in view of my experience and of the vast line of case law requiring the description to support the claims under Art 84 and not Art 83.
Dear Daniel, yes, you are right. Your answer has not convinced me.
You see, even when I amend the description to remove any “contradiction” or “inconsistency” with the claim, you STILL tell me that I am not satisfying the established case law of the Boards of Appeal (never mind the Guidelines).
I’m tendng more and more to the view that a referral to the EBA would be helpful and would take some of the heat out of the debate.
Dear Other anonymous,
Please allow me to come back to your views on G 3/19.
You are formally right when you say that G 3/19 did not boil down to a dynamic interpretation of the case law of the EBA.
It was indeed a dynamic interpretation of Art 53(b) in the light of the new R 28(2) with the effect to render moot decisions G 2/12 and G 2/13.
I would however not say to another person, and the more so if hiding behind anonymity, that a person is “entirely wrong”.
A minimum of respect is due as with such a statement, you imply that the other person is stupid, bordering on idiocy. Think of the Netiquette.
You are perfectly within your rights when you disagree, but it does not warrant to use such a derogatory wording.
When I said in a rather casual manner that G 3/19 boils down to a dynamic interpretation of the case law, I meant that at the end of the day G 3/19 rendered decisions G 2/12 and G 2/13 moot.
I do however agree that G 3/19 boils down to a circumvention of Art 164 as the amended R 28(2) was a rule decided under the pressure of the EU commission, not even the CJEU! On the other hand, legal changes under pressure are rarely giving good results.
The situation with Art 84 and a possible amendment of R 42 would be different.
It would simply make clear what has to be understood under “support by the description in Art 84.
Such an amendment would not be at odds with Art 84 and the situation thus cannot be compared with that of G 3/19.
Art 53(b) deals with an exception to patentability, and hence should in any case be applied with parsimony.
G 2/12 and G 2/13 gave an interpretation of what could be held as an exception: the method, but not the result of the method.
Such an ambiguity does not exist with Art 84. It would thus be possible in an amended R 42 to interpret Art 84 in accordance with the leading line of case law.
Dear Mr Thomas,
Thank you for your answer to my comment and your questions, which show your interest in understanding an applicant’s reasoning.
At the risk of disappointing you and MaxDrei, I am not going to give you specific answers for every category of inconsistency. But I wish to express a broader concern regarding the adaptation of the description to remove inconsistencies with amended claims.
The assessment of claim amendments as to Art 123(2) is based on the content of the description of the application as filed. The assessment of the other requirements of the EPC also critically relies in various respects on the description of the application as filed and on the common knowledge possessed by the skilled person as of the filing date.
Any post-filing amendment of the description may undermine this consistency and create legal uncertainties. The « description » referred to in Art 69 is logically the description of the granted patent. But if it is different from the description as filed, can it be interpreted in the eyes of a skilled person defined with reference to the filing date ? If the interpretation of the claims by a court is altered by the amendments of the description, there is a Damocles sword i.e. the risk for the claim amendments to be considered new matter and for the patent to be struck down by the court. And it may be difficult for examiners to assess such risks, all the more so as national courts typically have different approaches as to the interpretation of claims. This should suggest strong restraint for the EPO as to adaptation of the description.
This is no little concern, which is why I am, generally speaking, against any substantial amendment of the description, and in any event in favour of minimising any amendment.
An amendment of the description is justified in my view, only if an inconsistency causes doubt as to the meaning of the claims and make them unclear. This is in essence the test stated in section 5.29 of the PCT ISPE Guidelines. It implies that the onus is on the ED to demonstrate that the inconsistency causes such doubt.
My other reason is that amendments of the description involve additional work and costs for the applicant, for no clear benefits. This is also the case on the EPO side.
Frankly, I do not understand the over-emphasis of the EPO on this issue. The obvious is, it has opened a Pandora box, judging from the unprecedented divide between the BOAs. This is a embarrassment. You have been right to call this a saga, the recent decision adding a new requirement to Art 84 is a sensational new episode, and it may not be the end of the story.
If the « precise determination » of the extent of protection is to become the new mantra of Art 84, chances are amendments will be required by the ED which fall prey to the 123(2) trap, especially in view of the very strict approach of the EPO of Art 123(2).
A striking illustration is the depiction of the term « substantially » in a claim as unclear, pursuant to Guideline F-IV 4.7, and its deletion by an ED as part of a 71(3) notification. This is a type of situation I recently found in a granted patent. For example, the term « substantially vertical » or « substantially circular » in a claim is replaced by the ED by « vertical » or « circular ». This comes down to selecting the lower or upper limit of a range of values. If the description does not explicitly disclose the selection of (strictly) « vertical » or « circular », the selection can arguably be depicted as « singling out » a value within the range, and inadmissible under Art 123(2).
Dear Mr Hagel,
Thanks for your reply to my comments.
I have no reason to be disappointed if you do not wish to give me specific answers for every category of inconsistency. it is your good right to do so.
I can however follow you when you express a broader concern regarding the adaptation of the description to remove inconsistencies with amended claims.
I am fully aware of a potential danger under Art 123(2) when at grant the description is amended.
It remains however that such an amendment does not concern the claims.
You acknowledge yourself that the assessment of claim amendments as to Art 123(2) is based on the content of the description of the application as filed.
Even after grant, the source of disclosure under Art 123(2) is not the amended description but the original description and the claims when those have been filed at the same time as the rest of the application.
I have thus some difficulties in following you when you state that through a description amended at grant, the granted claims can later be considered infringing Art 123(2).
I have never come across a patent revoked under Art 123(2) because the description had been adapted at grant.
I do neither know any decision of a national court deciding revocation because of the adaptation of the description.
If you have such examples, I would be happy to see them.
As far as your reference to section 5.29 of the PCT ISPE Guidelines is concerned, I have already expressed my opinion on it, and need not repeat here, but to say that I am not convinced.
I agree with you that amendments of the description involve additional work and costs for the applicant and for the EPO.
As the adaptation of the description is however required under the EPC as it stands, this argument also fails to convince.
I stated repeatedly that the pedantic attitude sometimes put to light by EDs is not warranted and this can indeed bring unnecessary costs to the applicant. I remain convinced that a reasonable approach to this problem is possible, necessary and useful.
Dear Max Drei,
I am not surprised that I could not convince you with my comments.
They do however correspond to the way I have been following over all my time at the EPO.
I never experienced big difficulties with applicants/proprietors when it came to adapting the description.
I am aware that the EPO has tightened the screws in this matter in recent times.
I also know as a matter of fact that some EDs ignored wilfully the adaptation of the description when it came to grant.
This was spotted by the internal quality control department.
A referral to the EBA could certainly be a solution.
There are two ways for a referral: from the president or from a board.
I cannot see the president referring a question to the EBA as what is done corresponds to the instructions in the Guidelines.
A referral can thus only come from a board rebelling against the long line of case law requiring adaptation of the description.
I cannot imagine a board rebelling to such an extent as to refer a question to the EBA.
I do however agree with you, that it would be a good solution.
I hasten to add that the reply of the EBA depends on the referred question, although interpretation or rewriting of the questions has become standard practice at the EBA.
A referral to the EBA would not necessarily bring an answer corresponding to your wishes.
In some cases, the EBA has simply confirmed established practice.
I think here of the undisclosed disclaimers in G 1/03.
It could be the same here.
Just came across this decision https://eplaw.org/nl-pharmathen-v-novartis-appeal/. Just went into the EPO register as I was curious to see if the EPO examiner required amendments of the specification to delete any embodiments that were not encompassed by the claims. As you can guess it was not the case.
Despite having a broader specification than what it seems to be encompassed by the claims, based on the reported decision, it does not seem that the Dutch Court of Appeal had any problem to understand the scope of the claim ! Maybe equivalent should not exist as well?
Someone should really look at the Travaux Preparatoire explain why today’s guideline and this latest decision is not inline with the practices of the 80s, 90s, 2000s and 2010s.
This journey by some of the board of appeal of the EPO feels almost like they are trying to be the white knights. They try to fix something without the proper tools.
I agree with what has been said previously Art 84 is not here to purge the patent specification, if it was why stopping to embodiments and not deleting all the background section?
Dear Anonymous!
I have checked the “Druckexemplar” as it is called in the EPO jargon.
You are right that the examiner did not require amendments of the specification to delete any embodiments that were not encompassed by the claims.
Some amendments were carried out in the general presentation of the invention and he deleted the all statements of “incorporated by reference”.
For the rest he simply replaced when it was question of “the invention” by the “disclosure also relates to”.
This is exactly what happened in the famous pemetrexed case.
This is the reason why the EPO decided to tighten the screws with respect of adaptation of the description.
Taking pretext of a case in which the Guidelines were not followed for justifying that the description should not be adapted is done in bad faith and hence no justification for your position.
This latest decision is absolutely in line with the practices of the 80s, 90s, 2000s and 2010s.
Just have a look at T 977/94 and compare the description as granted and the description of the patent as amended.
The patent has been maintained according to an AR filed during the OP. Claim 1 of this AR consists of claims 1+5 (particles of spheroidal shape represent more than 30% by volume of the soldering components of the coating) + 6 (the organic binder is present in the coating in a proportion comprised between 0.5 and 1 .5% by weight) as granted.
In the description of the patent as granted, col, 5, l. 16-19 one reads: “Preferably, the spheroidal particles should represent at least 30% by volume of the total solder products.
In the description of the patent as granted, col, 5, l. 32-34 one reads: “A proportion between 0.5 and 1.5% by weight, based on the total coating is suitable”.
In the new patent specification, col. 4, l. 49-51 one reads: “Spheroidal particles must make up at least 30% by volume of the total weld product”.
In the new patent specification, col. 4, l. 49-51 one reads: “A proportion of between 0.5 and 1.5% by weight, based on the total coating, is required.”
The prior art, a public prior use, revealed during the opposition has been added at the beginning of the description. It was due to this public prior use that the claims had to be limited.
This is what I call adapting the description to the claims.