The present publication will be very long, but it appears worth it.
The application relates to semiconductor packaging and die architecture.
Brief outline of the case
The applicant appealed the refusal decision of the ED.
In a communication under R 71(3), the ED informed the applicant of its intention to grant a patent based on AR4 (labelled “AR3”). In an annex, it provided the reasons for the non-allowability of the higher-ranking MR and AR 1 to 3.
In reply, the applicant stated that it did not approve the text intended for grant and requested the grant of a patent on the basis of one of the higher-ranking requests or issue of an appealable decision.
In accordance with R 71(6), examination proceedings were resumed, and the decision under appeal was issued.
In appeal the applicant also requested that specific questions to be referred to the EBA.
The board decided that a patent should be granted with a precise set of documents.
The request for referral to the EBA was refused.
The case is interesting as it deals with claim-like clauses, support by the description, and the puropose of a referral to the EBA..
The ED’s decision
Claim like clauses
The ED decided that the MR was not allowable because pages 30 to 38 of the description comprised claim-like clauses and therefore infringed what was stipulated in the Guidelines F-IV, 4.4, in the version of March 2021, and lead “to unclarity as to the actual scope of protection under Article 84″.
The applicant’s argument given during OP that deletion of the claim-like clauses would lead to a loss of disclosed subject-matter that could be needed, e.g. in case of opposition, was not convincing for the ED.
Claim-like clauses were not allowed under the Guidelines, and this was binding on the ED.
Support by the description
Amended description pages according to AR1 to 3 were held not to comply with Art 123(2) and not to meet the clarity requirements of Art 84.
The examples on these pages should be “prominently marked as not being part of the present invention“. As they were not, they resulted in a lack of clarity and should have been deleted. The ED referred to Art 84 and Rule 48(1,c).
The applicant’s requests
The applicant requested that the impugned decision be set aside and a European patent be granted on the basis of the MR underlying the impugned decision or AR 0 filed with a letter dated 03.08.2023, which differs from the MR in comprising different description pages.
The applicant further submitted that a decision of the EBA under Article 112(1,a) may be required on the point of law discussed in the statement setting out the grounds of appeal, and the appellant requested referral of the questions under point 6 of the statement setting out the grounds of appeal, point 2 of its letter dated 03.08.2023 or similar to the EBA.
The questions to be referred to the EBA
Question 1:
Is it allowed to reject an application due to the usage of “claim-like clauses” in the specification?
Question 2:
If the answer to question 1 is yes, is it allowed to reject an application due to the usage of “claim-like clauses” in the specification, even if disclosure would be lost, if the “claim-like clauses” would be deleted?
Question 3:
If the answer to question 1 is yes, is it allowed to reject an application due to the usage of “claim-like clauses” in the specification without detailed analysis on whether the usage of the “claim-like clauses” actually leads to “unclarity as to the actual scope of protection” or “irrelevant and unnecessary reduplication”?
The applicant’s argumentation
Claim-like clauses
The only reason for the rejection of the MR were the examples described on pages 30 to 38 because the ED considered these examples to be claim-like clauses.
The applicant pointed out that there was no decision of the boards (or the Enlarged Board of Appeal, which formed the basis for this part of the EPC Guidelines. It was solely based on long-standing practice developed over time by the EDs.
The unconditional application of Guidelines F-IV, 4.4 forced the applicant to limit the disclosure of a patent application in an unjustified way. The applicant gave examples of claim-like clauses which he considered should not be deleted.
The deletion of the relevant sections of the description would lead to a loss of description and interpretation basis and a change of the disclosure providing the framework for interpreting the extent of protection, cf. Art 69(1). The scope of protection would be “unduly modified compared to the original disclosure”.
Deletion of non-claimed but still covered subject-matter was not justified merely because this subject-matter was retained in the description in the form of claim-like clauses.
Moreover, repeating the wording of the independent claims or in general all claims “somewhere in the specification” and “explain[ing] additional, optional aspects” was common, and “almost always accepted” by EDs.
It should be irrelevant whether the wording of claims was repeated at the beginning or the end of the specification, whether it related to a specific figure, or whether the claims were repeated as numbered examples. It seemed to the applicant that the examples on pages 30 to 38 would not have been objected to if the examples were not numbered.
Furthermore, the passage of the Guidelines did provide “the theoretical possibility to amend the claim-like clauses to avoid claim-like language”, as the applicant had done for the then AR 2 filed with the grounds of appeal and corresponding to AR 1 underlying the impugned decision.
Editing the claim-like clauses to remove their explicit claim-like character did not solve the problem, and rewriting the disclosure was always problematic under Art 123(2).
Finally, the applicant argued that neither reason why claim-like clauses had to be deleted mentioned in the Guidelines applied. There was no inconsistency with the claimed subject-matter, and the examples could not lead to any lack of clarity.
The applicant added that it had become common practice of EDs to force applicants to delete parts of the specification due to the use of claim-like clauses without analysing whether the deletion was justified. In the appellant’s opinion, the Guidelines needed to be amended to avoid their application by default. The application of this part of the Guidelines should be limited for when no disclosure would be lost due to the deletion.
During the OP before the board, the appellant pointed out that a patent application in the US could be filed with claim-like clauses because, on the one hand, the USPTO did not allow multiple-dependencies of claims, and, on the other hand, the EPO had a strict approach on what is directly and unambiguously derivable from the application as originally filed and often does not accept US-type claims as a basis for amended claims.
In other words, including claim-like clauses in the description of a patent application might be a consequence of the stricter approach of the EPO. Claim-like clauses served as useful support and disclosure during the grant procedure. It would be contradictory to require their unconditional removal as a prerequisite for the grant of a European patent.
The applicant added that the recent case law of the boards, e.g. T 1444/20 indicated that the unconditional deletion of examples was not justified by the mere fact that the matter of the description pages concerned was in the form of claim-like clauses, contrary to what was stated in section F-IV, 4.4 of the Guidelines. However, the examiners continued to work according to the Guidelines. It was not uncommon for EPO actions to be issued solely to address claim-like clauses.
There was a clear contradiction between the case law of the boards and the Guidelines. Consequently, for any patent application containing claim-like clauses, an unnecessary appeal had to be filed to avoid the deletion of the claim-like clauses.
In case EP 3 094 648 (T 56/21), the board seemed to see the need for a referral to the EBA for a very similar issue.
The board’s decision
Claim-like clauses
The board noted that there appears to be no decision of the boards or the EBA that forms the basis of the relevant part of the Guidelines of March 2021, or of the corresponding passage in the current version of the Guidelines.
It also noted that sometimes T 749/00, Reasons 4, is cited in addition to the passage of the Guidelines F-IV, 4.4.
The present board cannot derive from this that claim-like clauses have to be, unconditionally, removed from the description.
For the board, there is no provision stipulating that examples within the meaning of R 42(1,e) should not be in the form of claim-like clauses, i.e. in the form of one or more independent clauses followed by a number of clauses referring to previous clauses, at the end of or in another part of the description.
There is no justification for deleting such examples just because they were drafted as claim-like clauses.
They are to be treated like any other part of the description and thus, inter alia, must support the claims pursuant Art 84.
Adaptation of the description to the claims
The board concurred that under Art 84, claims must be clear in themselves, at least as a general although not absolute principle.
Concerning the interpretation of the requirement of Art 84 that the claims must be supported by the description, the board did not agree with the findings of decision T 1989/18. The board also disagreed on the scope and applicability of Rule 48(1,c) EPC as a legal basis for an obligatory adaptation of the description.
On the contrary, the board agreed with the long established case law of the boards that “supported by the description” means requiring the entirety of the description to be consistent with any claims found to meet the requirements of the EPC.
The board referred to T 1024/18, Reasons 3.1; T 1808/06, Reasons 2; T 2293/18, Reasons 3.3; T 1399/17, Reasons 2.2; T 2766/17, Reasons 6; T 1516/20, Reasons 5.3; T 0121/20 Reasons 10; T 1968/18, Reasons 7.10; T 2685/19, Reasons 6.
The provisions of R 42 and 48 are directed to the content of the description and the matter of the application as a whole and, as such, seem to be the appropriate basis for seeking guidance. Art 84 is primarily directed to the claims and refers only indirectly to the description.
However, as the EBA has often stated with reference to the Vienna Convention, it is a general principle that legal provisions are to be interpreted not only on the basis of the ordinary meaning of the legal terms but also in light of their object and purpose.
Amendments of the description primarily serve the procedures following grant.
Under the PCT, it makes sense to treat certain rules as only suggestions given that proceedings under the PCT are normally not aimed at interfering with the substantive content of an application. Nonetheless, these suggestions are made at the international application stage precisely because such matter may have to be removed later at the national or regional stage.
Whatever the purpose of the cited rule may be under the PCT, in the system of the EPC, it would seem to serve no purpose if the provisions of R 48(1) EPC were merely to serve as guidelines but had no legal effect if ignored.
For the board, it is a general and overarching objective, and as such also a “requirement” of the Convention, that authorities, courts and the public interpreting the claims at a later stage should, as far as possible, arrive at the same understanding of the claimed subject-matter as the EPO bodies deciding on the patentability of the same subject-matter.
The only tool for achieving this objective is the patent specification as the expression of a unitary legal title.
The description, as an integral part of the patent specification, should therefore also serve this overriding objective, i.e. it should provide a common understanding and interpretation of the claims.
If the description contains subject-matter which manifestly impedes a common understanding, it is legitimate to insist on its removal under Art 84 and 94(3) and R 42, 48 and 71(1).
The board further approved the practice where instead of a direct removal, i.e. the deletion of the subject-matter not covered by the claims, a “removal” by way of an appropriate statement is made, leaving the technical disclosure unaffected.
Finally, the board added that the applicant has no legitimate interest in retaining subject-matter in the description not covered by the claims.
The required amendments to the description should not unnecessarily interfere with the legitimate interests of the applicant, for example, by limiting its procedural options in subsequent amendments to the patent.
However, the grant of a patent represents a legal watershed where subject-matter not covered by the claims must be accepted as having been effectively abandoned by the applicant.
The board did not see how an applicant could lose rights by non-covered subject-matter being removed from the description, either by deletion or by statement, and the applicant also conceded that effective rights would not be lost.
The referral to the EBA
The board had no doubt that a decision or opinion of the EBA would have a bigger impact on the wording of the Guidelines than a decision of the boards.
However, the board was of the opinion that obtaining an amendment of the Guidelines by the EPO is not a legitimate purpose for referring questions to the EBA. The main purpose of a referral to the EBA by a board is to settle issues that arise within the case law. The practice of the EPO and hence the Guidelines are expected to adhere to the case law to the extent that the case law is not manifestly divergent on the issue in question.
The EPC clearly states that it is within the functions and powers of the president to adopt the Guidelines, i.e. internal administrative instructions, see Art 10(2)(a). This must include the powers to decide how the Guidelines are to be kept up to date with the case law.
A referral to the EBA whose sole purpose is to correct the Guidelines and which is not necessary either for ensuring a uniform case law within the boards or for the board’s decision is not admissible.
Such a referral could be perceived as an attempt to encroach on the president’s powers under Art 10(2)(a).
Comments
That US practice should be taken into consideration at the EPO is a rather weak argument. This is valid for claim-like clauses, multiple dependencies or for added matter.
US type claims comprising a plurality of independent claims of the same category are not accepted under R 43(2) and this should not change.
The decision is to be welcomed as it looks quite balanced.
At the time being, it is an isolated decision, and it is to be hoped that it will be followed by decisions going in the same direction, especially when it comes to the adaptation of the decision.
Claim like clauses
According to the decision, claim-like clauses can be left in the description provided they bring some added-value.
However, this is not always the case, as they are often a mere repetition of the originally filed claims or of the claims of the parent application in case of a divisional application.
In such cases, they should be deleted as they bring no added value and not only obfuscate the perception of the whole patent description, and in the end actually try to circumvent all amendments of the original disclosure made during examination.
I am however not convinced that rewriting the disclosure, in order to remove claim-like clauses, is always problematic under Art 123(2). It just means extra work for the applicant and the ED.
I would not be surprised that R 42(1,e) might be amended in the future to get rid of claim-like clauses.
I would further like to add that by using the verb “shall” it directly and unambiguously follows in R42(1) that what is defined behind is mandatory. In the list of mandatory items, one cannot find claim-like clauses. This is different from the two-part form of the claim, cf. R 43(1) which is not mandatory.
Support by the description
It was not wise for the ED to mix clarity and support of the claims by the description. Those are two separate aspects found in Art 84.
The present decision is to be welcomed as it makes clear that the description has to be adapted to the claims. Decisions like T 1989/19 and T 1444/20 have become obsolete.
Referring to the PCT, as is sometimes done, does not help either, as the aim of the PCT is not, as such, to grant patents.
It is to be hoped that all those, especially from the other side of the Channel, can now be convinced that their fight not to have to adapt the description has become a rearguard action.
Referral to the EBA
That the Guidelines should reflect the case law of the EBA is not at stake.
However, forcing the president’s hand by referring questions to the EBA is not acceptable.
This does however not mean that the president can ignore what is in the EPC. Contrary to what has been alleged by his representatives before the EBA, the EPC cannot be amended by secondary legislation.
Potential referrals to the EBA
In view of the present decision a referral to the EBA on the adaptation of the description does not appear an absolute necessity.
A referral on the application of Art 69 in procedures before the EPO, other than in opposition, might help out as the case law is diverging on this topic.
https://www.epo.org/en/boards-of-appeal/decisions/t220438eu1
Comments
55 replies on “T 438/22 – Claim-like clauses are not forbidden under R 42(1,e) – Support of the claims by the description – No referral to amend the Guidelines”
Daniel, you see the reasoning underlying this Decision as “balanced”. I see it as thoughtful and persuasive. Assuming that it picks up more and more support at appeal board level, like a snowball starting to roll, it remains to be seen how much effect it has on the writers of the Guidelines for Examination. One hopes that they will be at least as “balanced” in their guidance to the ED’s as the writers of this Decision, taking into account not only the legitimate interests of the public in legal certainty but also those of the inventor/applicant in receiving from the EPO a scope of protection which is proportionate and fair.
Dear Max Drei,
I considered the decision well balanced, as on the one hand the board showed that the guidelines on claim-like clauses are not really supported by a decision of a BA or the EBA, and on the other hand, the decision has clearly said that adaptation of the description is necessary.
I can also agree with you and consider the decision as thoughtful and persuasive.
Whether the decision will be taken into account in the Guidelines remains to be seen.
It is only after a very long time that the criterion on purposive selection when claiming a sub range from a known range has been removed in the Guidelines from N to IS.
As far as the old essentiality test is concerned, it still figures in the Guidelines under the name 3.Point test and a reference to G 2/10.
That some EDs have been over formalistic in their approach of the necessity to adapt the description is not at stake. I remain of the opinion that adaptation of the description can be carried out taking into account “the legitimate interests of the public in legal certainty but also those of the inventor/applicant in receiving from the EPO a scope of protection which is proportionate and fair”.
What should stop is the absolute opposition to the adaptation of the desciption by some representatives.
Two examples
– Any feature in an independent claim cannot be left as optional in the desciption.
– If some original embodiments of the invention does not fall under the claims as granted, then this fact has at least be acknowledged. Those embodiments do not have to be deleted as such, but they cannot stay in the description as embodiments of the claims as granted.
Whilst Max may be persuaded, I have my strong doubts.
To be fair, the Board in T 0438/22 has, in my view, made the best effort to date in attempting to justify the practice of requiring strict conformity between the claims and the description. However, the lengthy and detailed arguments provided cannot disguise the fact that, at crucial points, the Board leaps to unjustified (or at least unexplained) conclusions.
Perhaps the most obvious example of this is in Reasons 5.5.3, where the Board, without explanation, arrives at the conclusion that:
“It is a general and overarching objective, and as such also a “requirement” of the Convention, that authorities, courts and the public interpreting the claims at a later stage should, as far as possible, arrive at the same understanding of the claimed subject-matter as the EPO bodies deciding on the patentability of the same subject-matter.”
I can see why those within the EPO may see this as an appealing position that serves noble objectives. However, not only is that position not derivable from the EPC but it is also based upon an inherent contradiction, namely that whilst the EPO will NOT apply Article 69(1) EPC when it interprets the claims of application, it expects that national courts will normally NOT arrive at a different interpretation when they DO apply that provision.
To be frank, this is putting the cart before the horse. Determination of the extent of protection conferred REQUIRES consideration of Article 69(1) EPC, and hence consideration of the description (amongst other things). If the description is intended to serve that (post-grant) purpose, then surely any amendments to the description must also be based upon an interpretation of the claims that INCLUDES consideration of Article 69(1) EPC. Otherwise, how else can the EPO possibly know which disclosures of the description are consistent with the subject matter of the claims and which are not?
Excellent argumentation from Doubting Thomas. How can the courts and an EPO ED arrive at the “same understanding” of what a claim means when the ED is forbidden to take Art 69 EPC into account even while the courts are required to take it into account?
Perhaps some help is to be found in the existing jurisprudence of the courts of England (Gillette Defence) and Germany (Formstein Doctrine) in distinguishing i) what the claim means from ii) what is the scope of protection delivered by the claim? The way the EPC is written, the event of grant launches a claim off of one planet and lands it on another, where minds working in different ways, decide what the claim means. As Thomas points out, the assertion that there is no such jump to a different world contradicts reality.
But, is there not room for Applicants and the EPO to reach consensus on what to do with a description of an illustrated embodiment that falls outside the literal meaning of a claim but nevertheless is close enough to it perhaps to fall within the scope of protection delivered by that very claim. Shall the ED bear the burden of proof that the disputed embodiment is “not the invention” or shall in future an ED bestow the burden on Applicant, to prove to it that the marginal embodiment in focus falls within the “scope of protection” which the claim confers, and so is NOT “not the invention”?
Dealing with “claim-like clauses” is baby steps, is it not, compared with conforming the description of embodiments that happen to fall just outside the literal wording of a claim which, in all other respects, is fit to grant.
Or will the EPO in future find it attractive, convincing, even self-evident, to assert that any argumentation from Applicant that a claim might enjoy an Art 69 penumbra wide enough to encompass the marginal embodiment is an admission that the claim is invalid for failure to comply with Art 84, EPC, that it is so unclear that it must be refused? I hope not but I expect that it will.
I would instead suggest that there ought to be room for (national) courts to take, to a suitable degree, account of claim amendments made, and arguments advanced, by the applicant during prosecution. To my mind that is a much more sensible (and, frankly, workable) approach for achieving the kind of objective outlined in Reasons 5.5.3 of T 0438/22.
Sadly, such a sensible approach may be a bitter pill for the EPO to swallow, as it would drastically reduce their (direct) influence on the final determination of the meaning of the claims. But any resistance from the EPO on that point would, in my view, have more to do with their (collective) ego and sense of importance than with serving the interests of justice.
Dear Max Drei,
The only point I can agree with you is that the discussion on claim-like clauses is no more than a side issue.
An amendment to the Implementing regulations could bring an end to the discussion.
I would not be surprised that a proposal in this respect would come from the EPO.
As far as the adaptation of the description is concerned, my position is abundantly clear and I will not repeat it here.
We have agreed that we disagree and we should leave it at this.
@ Doubting Thomas
The present statement addresses all the comments uttered by “Doubting Thomas” in reply to my publication.
From the style and content of the comment, the commenter acting under “Doubting Thomas” can easily be identified as “Proof of the pudding” acting on IPKat.
I would like first to observe that “Thomas” being a notorious trade mark, I would consider that acting as “Doubting Thomas” is an infringement of said notorious trade mark. But this is just for fun. I have, alas, lost my tongue in my cheek!
The comments figuring under “Doubting Thomas” do not require any more reply than what has already been said in IPKat. The opinion expressed by “Doubting Thomas” is no more convincing than that expressed under “Proof of the pudding”.
I find, to say the least, the attitude of “Doubting Thomas”, alias “Proof of the pudding” rather paternalistic. What gives “Doubting Thomas” alias “Proof of the pudding” the right and competence to tell the boards what they have to do or say? Is he more qualified than the boards to decide what is to be understood under “support by the description” in Art 84. Strong doubts are permitted.
The only point I would like to add, is that it is high time for a referral on the application of Art 69 and the Protocol in all procedures before the EPO besides when applying Art 123(3). This is a real issue and far more important than the adaptation of the description.
Any further comment on my side is actually superfluous. My position is abundantly clear: once the claims have been amended, the description has to be adapted to the claims deemed allowable. Over time, I have given numerous examples when such an adaptation I required and necessary.
I was not aware of any risk of TM infringement, so thank you for alerting me to that point. I had assumed that all readers would immediately realise that my pseudonym reflected my sceptical attitude (https://en.wikipedia.org/wiki/Doubting_Thomas). However, after posting my first comment, I did worry whether you might misinterpret it as doubting you personally. I am glad to see that you have retained your sense of humour in this respect.
We can certainly agree to (vehemently!) differ on our respective interpretations of Article 84 EPC. However, I think that it would help us both gain a better understanding of each other’s position if all of our comments were directed towards LEGAL arguments.
If you re-read my comments, I think that you will find that I merely present my views on what I believe represents the correct (and most workable) interpretation of key provisions of the EPC. That is not being in any way paternalistic, it is just advocating for my position. I would certainly expect you to do precisely the same in return, and would indeed welcome you doing so. There are many issues upon which our views appear to be in close alignment, and so it is interesting (and, hopefully, educational) for me to find out precisely why our views differ so dramatically on this topic.
The argument that “It is a general and overarching objective, and as such also a “requirement” of the Convention, that authorities, courts and the public interpreting the claims at a later stage should, as far as possible, arrive at the same understanding of the claimed subject-matter as the EPO bodies deciding on the patentability of the same subject-matter.” is extremely weak. If this were true, there would be no need for the protocol on the interpretation of article 69. The legislator was well aware of the drawbacks of the European patent system and the EPO needs to understand its place.
Well, article 69 states that the description and drawings shall be used to interpret the claims and the protocol states how this is to be done, doesn´t it? I don´t think that the legislator had in mind that everyone (courts, members of public) should come up with its own interpretation of what is claimed and protected. Ideally they should come to the same understanding, no ? Inconsistencies between the different parts of the patent are not very helpful to arrive at a common understanding.
Tommy, if you were a judge in a national court, would you not prefer to work with the originally filed description in order to gain a good understanding of the subject matter originally described, and how that compares to the subject matter defined by the claims?
Personally, I think that I would find it much easier to determine the significance of limitations in the claims if I could see how those limitations were originally presented. This is because, as is always the case, CONTEXT can be crucial in determining meaning. In this respect, one of the worst effects of description amendments made in accordance with the EPO’s “strict” standards is that they can all too easily erase or distort relevant context.
I would also point out that, to my knowledge, national courts have NEVER had a problem dealing with descriptions that have not been subject to a “strict” adaptation process. That is, those courts have been perfectly able to interpret the claims of patents whose descriptions have not been subject to erasure (or effective disclaiming) of subject matter that is allegedly inconsistent with the claims.
@ Doubting Thomas alias Proof of the pudding,
There is one point I ned to add.
What you actually suggest here is that national courts should take into account the file history.
The legislator has not envisaged this solution as there is no hint in this respect in the EPC, even taking into account the interpretation rules of the VCLT.
Some national courts might have done, but this is not an attitude common to all national courts.
It has recently been adopted by the Munich LD when deciding upon a PI.
Here we have to see whether the decision will be appealed and what the court of appeal of the UPC will say.
The day a file wrapper estoppel in the US style will be introduced in the EPC, I will agree with you that the description will not have to be adapted to the claims deemed allowable. We are far from this and I doubt that we will ever come to it.
You are quite correct that there is nothing in the EPC that requires national courts to consider the prosecution history. However, there is still room for them to do so – which is all that I was suggesting.
I am not sure that it is sensible to refer solely to the EPC when it comes to considering matters that, as admitted by the Board in T438/22, serve post-grant purposes only. National courts (or the UPC) gain jurisdiction for EP patents at that stage, and so surely national practices should have some bearing on such matters. Personally, I think that the role of the EPO is to grant patents, and not to try to steer national courts one way or another towards a particular interpretation of the claims. That may result in a messy and (slightly more) unpredictable situation. However, I believe that this is better than the alternative, which is where – despite NOT interpreting the claims in accordance with Article 69 EPC – the EPO can effectively become the sole and final arbiter of the meaning of the wording of the claims.
Article 69 EPC deals with the determination of the extent of protection conferred by a patent, not with the examination of an application. As Doubting Thomas points out : the EPO will NOT apply Article 69(1) EPC when it interprets the claims of application.
Which does not mean that the description must be ignored during the examination, it is of course used (by examiners and readers) to gain understanding of the terms of the claims and in some cases as a dictionary.
Mr Thomas, you indicate that “The day a file wrapper estoppel in the US style will be introduced in the EPC, I will agree with you that the description will not have to be adapted to the claims deemed allowable.”
Firstly, may I say that I am delighted that we have finally identified some common ground on this topic. I see this as a significant breakthrough, as it seems that we have reached agreement upon BOTH the nature of the problem (“Angora cat” patents) AND a potential solution to that problem, namely (formalisation of) a “file wrapper estoppel” approach to claim interpretation in court proceedings.
Secondly, I would like to understand the detail upon which we might agree.
For example, would you be content to cast aside the EPO’s current description adaptation practice:
– if all relevant (EPC and UPC) courts developed and applied a “file wrapper estoppel” concept when interpreting the claims of patents granted by the EPO; or
– instead only if the EPC were amended to include a “file wrapper estoppel” provision (perhaps as an addition to the Protocol to Article 69)?
@ Doubting Thomas, re your reply of January 19th
To cast aside the EPO’s current description adaptation practice two conditions have to be fulfilled at the same time:
1) Art 84 has to be amended si that the second half of the second sentence is deleted.
2) The EPC has to be amended to include a “file wrapper estoppel” provision.
Both those amendments of the EPC can only be the result of a Diplomatic Conference as required under Art 172. As the “second basket”, left over after the Diplomatic Conference of 2000, has not yet been considered, the likelihood of such a concomitant amendment is rather low, not to say inexistant.
I would just like to remind that in 2000, the UK delegation proposed to transfer Art 84 to the Implementing Regulations. This proposal was dismissed by the conference. The provisions of Art 84 were considered too important to be transferred to the Implementing Regulations. It would certainly have been easier to amend the corresponding provisions under Art 164.
If a Diplomatic Conference would be summoned, one of the first and most important things to do would be to insure the proper independence of the BA/EBA, and not to leave them in the strange situation they have been put after 2016.
Even if all national courts and the UPC would develop and apply a “file wrapper estoppel” concept when interpreting the claims of patents granted by the EPO, it would still not be in conformity with the EPC as it stands. Introducing, so to say through case law a “file wrapper estoppel” would not be in accordance with the rules of interpretation of the EPC under the VCLT. This might not be such a problem under common law, but the EPC has not be set up under common law.
When the EPC was set up, after the failure of the four attempts for a Community Patent, the legislator could have introduced a kind of “file wrapper estoppel”. It did not and it had certainly good reasons not to follow the path chosen by the USA.
In order to come out of the deadlock on the Community patent, the only viable situation was to separate the granting/issuance of the title from its use/exploitation.
The problems we face today, also with the UPC, is the result of political decisions taken in the seventies when this separation was enacted. The separation allowed non-EU member states to participate. On the other hand, the emergence of the PCT forced European countries to act, even if the PCT does not end up with a grant.
@ Doubting Thomas, re your second reply of January 18th,
As far as the EPO and its BA/EBA are concerned, what matters is the EPC and its own interpretation under the VCLT.
As there are differences in the interpretation of the EPC by different national courts, it is certainly better if the EPO at large sticks to its own interpretation. This does not mean that it should simply disregard what national courts may say, but it should not be the only factor to take into account.
Taking the example of added matter, the situation is such that some national courts claim to apply the jurisprudence of the EBA, but actually do exactly the contrary. Some plainly ignore decisions of the EBA. There is nothing to complain about, as decisions of the EBA are not the EPC, but an interpretation on it.
The way the EPC has been set up is that actually Art 69 and the Protocol should, at least in my opinion, only be considered when it comes to assessing the scope of protection when applying Art 123(3). For instance when dealing with added-matter, it could mean that equivalents should be accepted when dealing with added matter. This is certainly not in conformity with the case law on novelty and added matter set up by the EBA.
The EPO is by no means the sole and final arbiter of the meaning of the wording of the claims. This is for the national courts. The role of the EPO is to give all national courts a kind of common platform, and this implies that under Art 84, the description has to be adapted once the wording of the claims is finalised.
Any feature which has found its way into an independent claim, cannot be designed as merely optional in the description. When chunks of the original embodiments end up as lacking novelty and/or inventive step, it is normal that those embodiments cannot any longer be designed as representing what is actually claimed. This is what is required in the last part of the second sentence in Art 84.
Thank you, that is a helpful response – from which I take it that you believe that only an amendment of the EPC could (or should) lead to any change in the EPO’s Article 84 EPC practice regarding description amendments.
I am inclined to agree that the EPO should operate entirely independently of the national courts. That is, I tend to think that the EPO should base their practice solely upon the provisions of the EPC, and thus not take any notice of national practices (unless they constitute “subsequent practice” in the application of the EPC which establishes the agreement of “the” – to be understood as “all” – contracting parties regarding the interpretation of the EPC, as per VCLT Article 31(3)(b)).
I am also inclined to agree that equivalents should not be considered for the purpose of assessing patentability, including added matter. In this respect, I am comforted by the thought that the Formstein defence should deal with “Angora cat” situations where the equivalent either lacks novelty or inventive step.
Moreover, I can easily understand the reasons why the EPO has decided to adopt a pragmatic approach towards interpreting claims, and thus applies Article 69(1) EPC in only a very limited number of situations.
The difficulty that I have, however, can best be explained as a concern about what happens if, during examination, the interpretation of the claims adopted by the EPO (and possibly also accepted by the applicant) is WRONG in some way.
Considering how many EP patents are ultimately found to have been granted in error, it is not only possible but highly likely that EDs will unwittingly arrive at an erroneous interpretation of the claims in a significant number of cases. This should not be a surprise, given that the EPO will rarely if ever have the luxury of considering expert evidence explaining the meaning those skilled in the art will ascribe to the terms of the claims.
As illustrated by Ensygnia v Shell [2023] EWHC 1495 (Pat), one of the worst things that can happen if the interpretation of the claims is wrong is that certain amendments to the description can be held to add subject matter. It is easy to see why. An amendment labelling an embodiment as “not the claimed invention” will add matter if the embodiment in question actually does fall within the correct interpretation of the subject matter of the claims.
In Ensygnia v Shell, the amendment to the description was made post-grant, and as a failed attempt to unreasonably stretch the interpretation of the claims. However, if such an amendment were to be made during examination, then that amendment would generate an inescapable trap, as it:
(A) would give rise to invalidity due to added matter; but
(B) could not be removed (or reversed) without impermissibly broadening the extent of protection conferred by the claims.
In such a situation, the EPO’s interpretation of the claims will indeed be imposed upon the national courts, in the sense that they would have no choice but to revoke the patent solely because of amendments based upon that (erroneous) interpretation.
In such situations, it would not be fair to blame the applicant for accepting amendments based upon the EPO’s erroneous interpretation. This is not least because the error may not be immediately apparent, and the expense (and delays to grant) involved in spotting it, let alone successfully challenging it, would likely dissuade all but the wealthiest of applicants from travelling down that path.
I find it hard to believe that the authors of the EPC would have consciously chosen to implement a provision that absolutely requires applicants to make amendments (to the description) that are so high-risk. If they had done then, in view of the evident risks, I would have expected the travaux préparatoires to at least contain some discussion of why those risks must be borne by applicants (i.e. what greater evil the authors sought to prevent).
Finally, regarding your comment about “a kind of common platform”, I think that such is provided by the granted patent REGARDLESS of whether the description has been (strictly or otherwise) adapted to the claims. That is, all national courts will, at least at the outset, be dealing with the same claims and the same description. In this respect, I see the EPO’s current description adaptation practice as instead being a sort of back-handed way of indelibly imprinting onto the patent a key aspect of the prosecution history (i.e. the EPO’s interpretation of the claims).
@ “Doubting Thomas” alias “Proof of the Pudding”
Your reply can be divided in two parts.
The first part is about Art 69 in general and the second part is more about adaptation of the description and Art 84.
Application of Art 69
I see some problems when it comes to the application of Art 69 in general.
Either it is applied to all procedures before the EPO or only in opposition. The fact that the EPC is such that it should only be applied in opposition is the direct result of the dichotomy between grant and post grant procedures as decided in 1973.
Normally the EPO loses competence to decide upon a patent once it has been granted. The EPO only regains competence in two specific circumstances: opposition at the request of a third party, or revocation/limitation at the proprietor’s request.
If you “agree that the EPO should operate entirely independently of the national courts”, to which I agree too, Art 69 should only be applied in opposition when it comes to assess the scope of protection.
If it is tolerated, as suggested by some boards, to apply Art 69 in all procedures before the EPO, it means that equivalents have necessarily to be taken into account when assessing added matter. It means as well that what is obvious for the skilled person could would have to be tolerated when it comes to added matter. This in clear contradiction with the established line of case law of the EBA/BA in added matter, novelty or priority. I would therefore think that the reply of the EBA on a referral about Art 69 could be rather straightforward: in opposition and nowhere else.
Adaptation of the description
I would like to observe that Ensygnia v Shell [2023] EWHC 1495 (Pat) is a UK domestic case and did not imply any European Patent. I can however accept that an analogy with EP procedures cannot to be denied. What is also remarkable is that the amendment to the description was made post-grant. This compares somehow with the situation in opposition when the claims have to be limited.
This is why I am for a careful approach when it comes to the adaptation of the description. Any feature incorporated in an independent claim cannot any longer be considered as being optional in the description. I would also not delete any parts of the original disclosure. If three out of four original embodiments do not fall under the granted or limited independent claim, I cannot see a problem in acknowledging this fact. I would not delete anything in the description, as this is not required by Art 84. Any discussion at the end of the pre-grant examination about the exact scope of protection is not part of the duties of an ED. For an OD, it is very limited.
What can be gained from the “Travaux Préparatoires” is that Art 84 has been directly inspired by Art 6 PCT which reads: “The claim or claims shall define the matter for which protection is sought. Claims shall be clear and concise. They shall be “fully” supported by the description”. In the PCT, the wording fully does not matter as the PCT does not end directly with a grant or a revocation. This is left to the patent authorities of the designated/elected states or the EPO.
The only difference between Art 84 (earlier Art 82) and Art 6 PCT is the deletion of “fully” at the request of a number of professional NGOs. No further discussion on Art 84 can be gained from the “Travaux Préparatoires”. The “Travaux Préparatoires” do not contain any discussion about risks and why those risks must be borne by applicants (i.e. what greater evil the authors sought to prevent).
If the claims have to be supported by the description it implies directly and unambiguously that, once the wording of the claims has been finalised, the description has to be adapted to the claims. This has been EPO’s practice from the day 1 of examination. I do not see why it should change, just because some representatives fear that the amendment might potentially introduce added matter.
Whether the patent is granted or limited in a form in which is correct, or that the granted claims might even be invalid with respect to the prior art is inherent to the system. Any limitation in the claims has been accepted by the applicant/proprietor under Art 113(2)/R71(3).
With the EPC as it stands, the “common platform” implies necessarily the adaptation of the description to the claims. I cannot agree with your statement that ”the “common platform” is merely provided by the granted patent regardless of whether the description has been (strictly or otherwise) adapted to the claims”. The internal logic of the EPC as it stands does not allow your interpretation and that of some boards refusing any adaptation of the description.
There is a very positive aspect in T 438/22 : it puts on the onus on the ED to justify a requirement for description adaptation. A mere reference to the Guidelines without specific reasoning is not sufficient. This had been clearly pointed out in T 2194/19, and it is in essence the approach of the PCT ISPE Guidelines 5.29 : an inconsistency between the description and the amended claims has to be cured when it can be shown to cause doubt as to the meaning of the terms, i.e. when it makes the claim unclear, not just when it could cause doubt.
As to the « general and overarching objective » asserted by the Board as a « requirement » of the Convention, I fully concur with Doubting Thomas. It has no basis in the EPO which states that the mission of the EPO is to grant patents and it is beyond its remit, as clear in the settled case law of the BOAs.
The Board implements a purposive construction of the EPC aimed at the objective of affirming the primacy of the BOAs over national courts and the UPC. An implication of such construction is that it would open a Pandora box which would allow a Board to justify any rewriting or « dynamic interpretation » of the EPC, such as the expansion of the scope of Art 69 to the examination of applications as suggestedpresented as an option in T 439/22. Needless to say, this would create giant uncertainties.
The Board states that the description « should provide a common understanding and interpretation of the claims ». In the context of examination of applications, which is the case here, the description certainly needs to provide « understanding » of the claims, but the Board’s statement ignores the settled case law regarding « interpretation ». See CLB I.C.4.1 : « It is a well-established principle laid down by the boards’ case law that a non-specific definition in a claim should be given its broadest technically sensible meaning (see T 79/96, T 596/96) ». The language is the same in CLB II.A.6.1. This principle prevents an unclaimed feature disclosed in the description from being « read » into the claim as an implied limitation and from being relied upon by the applicant to overcome an objection. If the reliance on an unclaimed feature enables the applicant to convince the ED to allow the case, then this feature is « essential » and the applicant must be required by the ED to enter the feature into the claim so as to meet Art 84.
« Interpretation » in the sense of Art 69 is quite different from this principle in that it allows the terms of the claim to be given a meaning or a scope which departs from the literal wording of the claims.
The emphasis in the recent UPC decision SES vs Hanshow of the Munich LD on claim amendments, if confirmed, will be a game changer, as acknowledged by Mr Thomas.
As to Mr Thomas’ comment that prosecution estoppel should not be admissible in UPC proceedings because it is not based on any provision of the EPC, it ignores the fact that prosecution estoppel is based on a general principle of procedural law (« venire contra factum proprium »), applicable to all kinds of court proceedings and which may be considered by the courts when they apply the EPC. It has been applied as such by the BOAs : T 379/96, Reason 2.3 refers to the « well established prohibition of « venire contra factum proprium », and this principle is applied in more recent decisions T 837/18 and T 1839/18.
There are interesting recent develoments in the cases T 439/22 (interpretation of the claim wording) and T 56/21 (adaptation of the description) in which a referral to the EBA has been suggested by the Board.
In T 439/22, in which the Board’s communication only offers cursory reasoning, the applicant has replied that they do not see any need for a referral.
In T 56/21, the applicant has expressed agreement with the suggestion for a referral. Two anonymous third-party observations have been submitted on 24 November, to signal publications which challenge the EPO practice, much like amicus curiae.
When Mr Thomas locates the opponents « across the Channel », his information is very incomplete. The publications cited in the observations are authored by professionals from Sweden, Switzerland, Spain and France (myself), in addition to publications by UK colleagues.
Mr Hagel,
That any request of amendment to a part of the original disclosure by a division of first instance has to be justified cannot be considered as a scoop, even if sometimes those divisions forget it. This is also valid when it comes to the adaptation of the description. In this respect, the reminder in T 2194/19 was correct, but actually unnecessary.
The maxim „venire contra factum proprium“ is not to be equated with a general file wrapper estoppel in the US style.
It simply means that a party cannot give in one forum an explanation or interpretation and come up in another forum with a different one. I remember a case (I chaired the OD), a geared pump, in which the proprietor gave a first interpretation before the OD and a different one in appeal. The board did not buy it and the revocation for lack of sufficiency was confirmed. I could not find the decision quickly enough, but it exists.
I never acknowledged that the emphasis in the recent UPC decision SES vs Hanshow of the Munich LD on claim amendments, if confirmed, will be a game changer. I have my reservations about this decision and expressed them clearly. It is one single decision, moreover in a PI situation and cannot be taken as representative of a new tendency. To come to this conclusion, we will have to wait what the Court of Appeal of the UPC will say. I think that taking into account of the file history was due to the presence on the panel of a Dutch judge. Dutch courts use file history,
You keep insisting on the PCT ISPE Guidelines 5.29. A careful reading of the present decision would have shown you what the board thinks about the PCT: “proceedings under the PCT are normally not aimed at interfering with the substantive content of an application”. The immediate conclusion is that they are not applicable in EPC procedures. You also seem to have overlooked that Art 6 PCT which is the source of Art 84 EPC is even stricter than Art 84. What matters at the EPO is not what the PCT might say, but the requirements of the EPC, and only those.
I could not find T 439/22 and T 56/21 does not exist either. T 56/21 relates to EP3094648. Since the reply of the applicant wishing a referral to the EBA, third party’s observations have indeed been filed anonymously and referred to a series of articles of epi information and CIPA. A FICPI resolution was sent by the applicant. Whether the board will admit anonymous observations remains to be seen. I have strong doubts about their admissibility.
The most virulent observations/comments on IPKat on the topic of adaptation of the description came manifestly from UK representatives and especially one of them “Proof of the pudding”. My reference to the other side of the channel related to what I have seen in IPKat. That other authors, amongst them yourself, have dealt with the topic is correct, but they apparently look as isolated as the legal member in T 1989/18.
I do not think that the upper management is in the slightest way impressed with all what has been published on this topic across Europe. It will certainly not change its attitude/policy for this reason.
The suggestion in EP3094648 stems from the same legal member involved in the preceding decisions T 1989/18 and T 1440/20. There is one concurring decision: T 2194/19. On the other side there a numerous decisions of other boards disagreeing with the position adopted in this three decisions to start with the present one and, inter alia T 3097/19, T 1024/18 and T 2766/17, only quoted as examples of a very long list.
I think that the topic of adaptation of the description in order to support the claims is actually exhausted. The divergent points of view are quite clear and it is not by repeating them that the situation will improve.
In view of the massive effect on the production of divisions of first instance and of the boards of appeal, I am inclined to think that we might not see a corresponding referral to the EBA. If a referral would nevertheless come, the EBA would have to take a quick decision in order not to bring the EPO to a standstill.
For the surplus. I have always considered that a referral on the application of Art 69 and the Protocol in all procedures before the EPO would be much more useful.
Mr Thomas
T 439/22 is an ongoing proceeding. The file wrapper is here:
https://register.epo.org/application?number=EP14806330
Both this and T 56/21 can be identified using the Advanced Search function on the EPO Register. It is incorrect to say that they do not exist.
In T 56/21 the Board invited the applicant to comment on the third party observations. Their admissibility seems rather beside the point.
@ Anonymous,
Decision T 439/22 does, as such, not yet exist, exactly as decision T 56/21 does also not yet exist.
T 439/22 = EP 3 076 804 relates to the application of Art 69 in procedures before the EPO and I commented it on my blog. It is not about a referral on the adaptation of the description but a referral on the application of Art 69 in all procedures before the EPO. In the comments, I listed a series of decisions showing the divergent case law in this matter.
In T 56/21= EP 3 094 648, also commented on my blog, I have spotted the invitation to comment on the anonymous third party observation.
Inviting a party to comment on anonymous third party observations is another surprise in this file. The normal stance of the boards is to ignore anonymous third parties observations. If the purpose of the observations was to simply draw the attention of the board to some publications on the topic of adapting the description, the need to send those in an anonymous form is not really apparent. One wonders why anonymity had to be chosen? Any opinion on the topic is worth being said in the open.
I do however maintain my position on the likelihood on a referral about adapting the description. Just look at my reply to Mr Hagel’s comment.
@Daniel X. Thomas, re: your reply of 20 Jan
Thank you for your response. It certainly helps me to better understand your point of view.
I think that we can both agree that opening the door to applying Article 69(1) EPC could cause serious headaches for the EPO, if not outright chaos. However, as we can see from the reasoning of the Board in T 438/22, we cannot pretend that Article 69(1) EPC has no relevance whatsoever to proceedings before the EPO. The task that we all face is therefore working out precisely how the EPO should apply that provision, i.e. whether directly, indirectly (as in T 438/22) or not at all.
That is not an easy task. The same can be said for the task of interpreting the support requirement of Article 84 EPC. Whilst I will not pretend to present any final conclusions on that topic, I will make some (factual) observations – in the hope of establishing at least some further points upon which we can agree. I will also pose some questions aimed at doing the same (as well as hopefully providing you with food for thought).
Firstly, as the support requirement of Article 84 EPC is entirely separate from the clarity requirement of that article, it stands to reason that it must be intended to serve a different purpose.
Secondly, when interpreting the support requirement of Article 84 EPC, it is HIGHLY relevant to consider the purpose served by that provision. Indeed, this is the whole point of one method of interpretation, namely teleological interpretation (though I agree with your comment that the TP do not clearly identify the purpose that the support requirement is intended to serve).
Thirdly, whilst no clear conclusions can be reached based upon the TP alone, those preparatory documents:
(a) do not contain any pointers (or at least not any CLEAR pointers) towards a “strict” support requirement; but
(b) contain materials that some people might see as providing pointers towards a more liberal support requirement.
In connection with point (b), I refer in particular to:
– an initial draft for the support requirement, which was certainly on the liberal side (“No patent claim shall contain subject matter that is not listed in the description”);
– deletion of the word “fully” (before “supported”) in the subsequent text that was modelled on the corresponding PCT requirement.
Fourthly, if we interpret the support requirement of Article 84 EPC as being “strict”, then we must also go further with our interpretation. That is, we must determine precisely how strict the requirement is when it comes to removing alleged inconsistencies between the description and the claims. For example, we must determine whether, for an “embodiment” that is not clearly encompassed by the wording of the claims:
– it is enough to label it as a “disclosure” instead; or
– it is mandatory to either delete that embodiment or to label it as “not the invention according to the claims”.
Do you disagree with any of the above points? If so, can you explain why?
You state that “If the claims have to be supported by the description it implies directly and unambiguously that, once the wording of the claims has been finalised, the description has to be adapted to the claims”. However, can you explain how you arrive at an interpretation of Article 84 EPC which supports that assertion?
I can agree that it has always been the EPO’s practice to require adaptation of the description. However, can you agree that, on its own, this observation tells us nothing about the correct interpretation of the support requirement? Can you also agree that the EPO’s practice has changed substantially in recent years, in that it is now much more common for a “strict” adaptation to be required?
Finally, you indicate that the “internal logic of the EPC” supports your interpretation (or at least forbids mine). But if there is such an internal logic, what precisely is that logic, and from which provision(s) does it CLEARLY emerge?
@ Doubting Thomas alias Proof of the pudding
I can agree with you that opening the door to applying Art 69(1) could cause serious headaches for the EPO, and most probably outright chaos. It will depend a lot on the way the questions are referred to the EBA and if the EBA does not rewrite them.
Contrary to what you think, the same cannot be said for the task of interpreting the support requirement of Art 84. The purpose of the support requirement is simply to bring declarations in the description in alignment with the claims as granted or maintained.
The TP do not give away a lot. The only message which can be inferred is that the adaptation does not have to be so strict, in order to the claims have to be “fully” supported. The deletion of “fully” gives some leeway, but it cannot go as far as to say that no adaptation is required.
As I am not any longer in active service, it is difficult to say that it is now much more common for a “strict” adaptation to be required. What is clear to me, is that the internal quality audit must have spotted a large number of discrepancies as lots of descriptions were not any longer adapted to the finalised claims. Examiners got a time allowance to check whether the description was adapted or not. By not checking the adaptation, examiners could gain some time. With a high production pressure, it is not surprising.
It does thus not come as a surprise that the screws have been tightened and the Directives amended, so that the adaptation of the description cannot any longer left out. As it could be expected, lots of examiners took then a very strict stance in order not to get into trouble. The pendulum has actually swung back, completely in the other direction, but a fair balance has been missed.
I can only repeat that once the subject-matter of a dependent claim is added to an independent claim, or if a feature from the description is limiting an independent claim, the limiting features cannot be left as optional in the description.
In presence of embodiments which are not any longer encompassed by the claims as granted or maintained, the description has to be amended so that the latter does not give the impression that those embodiments can still be considered as being encompassed by the final claims.
In my opinion, it is not enough to label it as a “disclosure”. One does not know what is meant by the word “disclosure” and what is the relation of the “disclosure” with the claims as allowable actually is.
Any statement which under normal interpretation would lead to the conclusion that it could correspond to what is claimed is to be banned. I would not necessarily claim that it has to be deleted, but at least indicated that it does not fall under the invention as claimed. This should be sufficient in my eyes. It could for instance be left as explanation how to come to the claimed subject-matter, but it cannot be left and therewith imply that it is covered by the claim.
Art 84 requires the claims to be supported by the description. To decide whether the description supports the claims, it requires that first the subject-matter of the claims has to be finalised. Only then, the corresponding amendments of the description can be determined. This interpretation is plainly logical, and I do not see how a different interpretation of the requirement of support can be fulfilled.
There are lots of decisions stating that, in the absence of the applicant or of the proprietor at the OP before the ED or the OD, i.e. in the absence of a full set of documents, meaning. with only the claims, but without an adapted description, the application is either refused or the patent revoked.
I doubt that we will ever agree, but I can also only repeat that, without an amendment of Art 84 and the introduction of a proper file wrapper estoppel, adaptation of the description in order to support the claims will remain mandatory.
We can may be agree that it should not be done in a very academic or petty manner, but it has to be done. There is no way out of it with the EPC as it stands.
@Doubting Thomas
I take the freedom to react to some of the questions you have put to Mr Thomas and some of your comments (although not quite in the same order). Sorry for being tardy.
Doubting Thomas
when interpreting the support requirement of Article 84 EPC, it is HIGHLY relevant to consider the purpose served by that provision. Indeed, this is the whole point of one method of interpretation, namely teleological interpretation (though I agree with your comment that the TP do not clearly identify the purpose that the support requirement is intended to serve).
Francis Hagel
The support requirement of Art 84 has are two major purposes. First, make sure that the description and the drawings, if any, have a content adequate for understanding the claims. This is complemented by the reference numerals included in the claims, which connect the terms of the claims to the description and the drawings. Second, act as a bulwark for ensuring compliance with Art 123(2), by requiring the showing by the applicant that every claim amendment has adequate support in the description. There is no need for a teleological interpretation of the purposes of the support requirement, they are crystal clear. If a teleological interpretation is proposed, it is to justify an overstretched interpretation of the support requirement.
Doubting Thomas
I think that we can both agree that opening the door to applying Article 69(1) EPC could cause serious headaches for the EPO, if not outright chaos. However, as we can see from the reasoning of the Board in T 438/22, we cannot pretend that Article 69(1) EPC has no relevance whatsoever to proceedings before the EPO. The task that we all face is therefore working out precisely how the EPO should apply that provision, i.e. whether directly, indirectly (as in T 438/22) or not at all.
Francis Hagel
Article 69 is specifically aimed at the determination of the extent of protection and not at the examination of applications. During the examination, the settled case law regarding the interpretation of claims is that their terms must be given their “broadest technically sensible meaning” : see CLB I.C.4.1 and CLB II.A.6.1 (Note : The US MPEP 2111 states the same principle in the same words).
This implies that the description cannot be used to “read” into the claims unclaimed features disclosed in the description. If the applicant relies on an unclaimed feature to overcome an objection and the ED finds the argument persuasive, the unclaimed feature becomes “essential” and the ED must require the applicant to enter the unclaimed feature as a limiting feature into the claim. This implements the principle of the primacy of the claims. The general rule of claim interpretation of the case law referring to the broadest sensible meaning thus relies on the wording of the claims and must not take into account the description.
Whereas, the interpretation under Article 69 by a court may depart from the literal wording of the claims, whether equivalents are considered or not, and takes into account the description. In short, the rule of claim interpretation is heavily context-dependent
The general rule of interpretation according to which, during examination, the description is not to be used to interpret the claims, may have an exception though, when the description provides a dictionary for the terms of the claims. As stated in CLB II.A.6.3.3,: « In several decisions the boards have stated that terms used in patent documents should be given their normal meaning in the relevant art, unless the description gives them a special meaning (see e.g. T 1321/04, T 1089/11, T 25/15, T 1844/15). According to the established case law, the patent document may be its own dictionary (see e.g. T 311/93, T 523/00, T 1192/02, T 61/03, T 1321/04, T 1388/09, T 2480/11, T 1817/14). »
This is precisely the case for the patent in suit, in which the description contains a broad definition for the « gathered sheet », and the question is whether the interpretation should take into account the definition of the description or the wording of the claim.
It is very striking that the Board’s suggestion for a referral to the EBA makes no mention whatsoever of the settled case law defining the general rule of interpretation. What the Board does is to cherry pick the debate in the case at hand around the applicability of the « description as a dictionary » exception, and extrapolate from this debate a general conclusion that there is a divide between BOAs about the use of the description in the interpretation of claims, citing just a couple of decisions, so as to raise the issue of the application of Art 69 to the examination of applications.
But the Board’s reasoning is ill-founded, there is no more divide between the BOAs about the « description as a dictionary » exception, as clear from the quote of CBL II.A.6.3.3 above, than about the general rule. Both the general rule and the exception are settled case law. The only question is the applicability of this exception, which can only be assessed on a case-by-case basis.
Absent a divide between the BOAs as to the general rule of interpretation during examination and as to the « description as a dictionary » exception, there is absolutely no justification for a referral to the EBA. My guess is that the Board’s suggestion is an attempt to provide an argument to block the referral on the adaptation of description suggested in T 56/21.
Doubting Thomas
I can agree that it has always been the EPO’s practice to require adaptation of the description. However, can you agree that, on its own, this observation tells us nothing about the correct interpretation of the support requirement? Can you also agree that the EPO’s practice has changed substantially in recent years, in that it is now much more common for a “strict” adaptation to be required?
Francis Hagel
I remember the time when claim-language clauses replicating the independent claims in the original applications were deleted and replaced by the ED by a simple statement such as « a solution is provided in accordance with claim 1 ». This was very efficient, as there was no need any more to adapt claim-language clauses as a result of claim amendments.
Mr Hagel,
When you claim that there is no divide between the boards on the application of Art 69, I beg to disagree.
I have repeatedly shown that there is a clear divide between the boards on the application of Art 69. It is thus high time for this problem to be tackled and a satisfactory solution given by the EBA. Simply stating that it is case dependent will not be enough.
The problem of the claim-like clauses is a minor problem compared with that of the application of Art 69. I maintain that claim-like clauses are not foreseen in the EPC. An amendment of the Implementing regulations in order to ban those can be expected.
Mr Hagel, I am inclined to agree with your approach to interpreting Article 84 EPC. I think that fits with the comments that I made in response to Mr Thomas earlier today (re: the appearance of closer connection between Arts 83 and 84 EPC than between Arts 69 and 84 EPC). However, I very much doubt that you will persuade Mr Thomas that the purpose of the support requirement is “crystal clear” … unless, that is, you are suddenly persuaded by his (very!) different view of the purpose of that requirement.
Thank you for your response.
It is interesting that you seem to view the support requirement of Article 84 EPC as only becoming relevant once the final form of the claims has been decided. This is because I cannot understand how you arrive at that conclusion from the wording of the EPC. In particular, I do not see why:
– the requirement for the claims to be “clear and concise” should bite all the way through prosecution; but
– the requirement for the claims to be “supported by the description” should only be assessed at the end of the examination procedure.
To be clear, I can see PRACTICAL reasons for postponing consideration of the support requirement until a late stage of the examination procedure. What I cannot see are any LEGAL reasons for interpreting the support requirement in this way.
You argue that the interpretation of Article 84 EPC that you espouse is crystal-clear and follows logically from the wording of that article. What is still missing, however, is a convincing chain of logic (and legal reasoning) between that wording and your interpretation.
The interpretation of the support requirement is clearly a topic upon which reasonable minds may differ. I know that I will not persuade you to change your mind on this topic and so I have instead focussed upon trying to identify facts and conclusions that are either not in dispute between us or that provide both of us with food for thought. In this context, I will now offer the following thoughts.
The Board in T 0438/22 clearly sees the support requirement as being connected to Article 69 EPC, by way of an “overarching objective … that authorities, courts and the public interpreting the claims at a later stage should, as far as possible, arrive at the same understanding of the claimed subject-matter as the EPO bodies deciding on the patentability of the same subject-matter.” However, there is an argument that the (objectives of) the provisions of Article 84 EPC have much more in common with those of Article 83 EPC. This is because:
– both of Articles 83 and 84 EPC define standards that should be met by the claims of an EP application;
– the “clear and complete” requirements of Article 83 EPC could easily be interpreted as being a counterpart to the “clear … and … supported by the description” requirements of Article 84 EPC.
If we follow that train of logic, then the “supported by the description” requirement merely serves the purpose of ensuring that the patent bargain is met, in the sense that any subject matter that is claimed has (sufficient) support in the description.
Whilst this may not (yet) provide the most conclusive of arguments for a “liberal” interpretation of the support requirement, I think that there is more logic to it than the “overarching objective” that the Board in T 0438/22 essentially plucked out of thin air.
Contrary to what the Board asserts, Article 69 EPC does NOT make it clear “that the extent of the effective protection provided by a European patent, i.e. the enforceable rights derivable from a patent should, as far as possible, be related to the very same subject-matter found to be patentable during the grant proceedings.” The Board merely PRESUMES that Article 69 EPC does this in order to justify its assertion that Article 69 EPC “establishes a direct connection to Article 84 EPC.” In reality, the wording of Article 69 EPC merely sets out a way of determining the extent of protection that is based upon:
– the principle of the primacy of the wording of the claims; and
– a well-established principle for interpreting the meaning of provisions in legal documents (i.e. relying upon the CONTEXT provided by the rest of the document to help clear up any ambiguities).
Boards believing in the existence of a connection between Articles 69 and 84 EPC might provide them with a pretext for rubber-stamping the EPO’s current (“strict”) description adaptation practice. However, for the Boards to convince the rest of us to believe, then they will need to provide detailed legal reasoning to support that connection (i.e. something more than the mere “gut feel” about the perceived purpose of certain provisions).
@ Doubting Thomas alias Proof of the pudding
If you do not I do not see why:
– the requirement for the claims to be “clear and concise” should bite all the way through prosecution; but
– the requirement for the claims to be “supported by the description” should only be assessed at the end of the examination procedure,
then the you did never understand what Art 84 is about. This explains a lot!
That any set of claims has to be clear and concise all the way along is due to the simple fact that if a claim is not clear it is, in principle, impossible to decide whether it is novel or inventive. A multiplicity of independent claims of the same category is only acceptable in very limited circumstances, see R 43(2).
You might have developed a method by which unclear claims can nevertheless be assessed for N and IS. Could you be so kind as to give away your secret?
One possibility to deal with unclear claims is to give the unclear feature the broadest possible interpretation and based on this interpretation, you end up very quickly with an objection of lack of N or IS. Is this what you want for your client?
Furthermore, an unclear feature cannot help to differentiate the subject-matter of claim from the prior art, e.g. T 197/10.
Years ago, the EPO issued a notice in which it was specified that an adapted set of documents, comprising an adapted description was to be filed with each AR filed during prosecution.
When a representative asked to postpone the adaptation of the description, I do not know many EDs or ODs which would not accept to postpone the adaptation of the description until the wording of the claims is finalised.
However, only filing requests without an adapted description and not participating to OP ends up with the application being refused, cf. T 893/01 or T 109/02 or the patent being revoked, cf. T 986/00 or T 1024/18 (there are more decisions of the same kind). Is this what you want for your client?
Your theory about the link between Art 83 and Art 84 is nothing new under the sun. Just look at T 2001/12, the Headnote is self-explanatory, and you will realise that Art 83, 84 and 56 are part of a triangle of conditions to be fulfilled by the claims.
The “supported by the description” does not merely requires that was is claimed is to be found in the description in order for the bargain requirement to be met, in the sense that any subject matter that is claimed has (sufficient) support in the description. This actually boils down to the necessity of sufficient disclosure under Art 83.
Any statement in the description by which reasonable doubts arise about what the claim actually covers is to be avoided.
I repeat it once more here: a feature present in an independent claim cannot be left as optional in the description. If original embodiments are not any longer covered by limited claims in view of the prior at, those embodiments cannot be disclosed as covered by the limited claims. Is this so difficult to understand?
For the surplus, I invite you to put a direct question to the boards in your next appeal case, so that the board can convince you of the necessity to adapt the description to the claims as finalised.
You might feel the need to be provided with a detailed legal reasoning to support the connection between the claims and the description. Lots of people, and I think they represent the vast majority, do not need such a detailed legal reasoning in order to accept that the requirement of adapting the description to the claims is in plain wording in Art 84, second half of the second sentence.
Have you ever heard about the necessity to look at a text, for instance a claim or a legal requirement, with the mind to understand and not purposedly misunderstand it.
My patience is coming to an end. I do not intend continuing to reply to you.
For my part, the topic is exhausted.
Mr Thomas, you misunderstand the point that I was trying to make – which was essentially to emphasise that there is a difference between practice developed for the purpose of implementing a legal provision and the correct legal interpretation of that provision. It seems to me that you are working backwards from the EPO’s PRACTICE to justify your legal interpretation. To put it politely, that it not quite the correct way to go about interpreting a provision of an international treaty.
There may be a role under Art 32 VCLT for “subsequent practice”. However, when it comes to the EPO’s practice, that can at best be used as a supplementary means of interpretation.
The starting point for interpreting an international treaty is Art 31 VCLT: “A treaty shall be interpreted in good faith in accordance with the ordinary meaning to be given to its terms in their context and in the light of its object and purpose”.
The “ordinary meaning” of the term “supported” is “furnished with corroborating evidence”. That ordinary meaning does NOT in any way imply a requirement for the description to ONLY contain subject matter that supports what is claimed. Quite the opposite. It points to a “liberal” interpretation of Art 84.
So you will forgive me for being sceptical about any assertions that a “strict” interpretation of the support requirement is obvious from the wording of Art 84. You may also start to grasp why I have been keen to probe the “object and purpose” of Art 84, as that is essentially the only viable option that I can see for ignoring the plain meaning of “supported” and instead moving more towards the EPO’s current point of view.
You can repeat until you are blue in the face how you think descriptions should be amended in the face of certain types of claim amendments. It will make no difference. This is because what you are repeating is simply your opinion, and NOT any kind of logical conclusion stemming from a reasoned interpretation of a legal provision.
@ Doubting Thomas alias Proof of the pudding
I wowed not to reply, but you force me to.
If you think that I misinterpreted what you are trying to make you are yourself mistaken.
I am well aware of the difference between practice developed for the purpose of implementing a legal provision and the correct legal interpretation of that provision.
I am well aware of Art 31 and 32 VCLT, but the meaning of “supported” by the description is neither ambiguous nor obscure. It does also not lead “to a result which is manifestly absurd or unreasonable”. You might think that EPO’s practice leads to a result which is manifestly absurd or unreasonable, but this is by no means the case. You are entitled to your opinion. but you cannot ask me to share it.
Contrary to what you think, I will never get blue in the face. I leave this pleasure to you. My lungs are too precious. The interpretation I give to the “support” requirement is not merely my opinion, but it is confirmed by a long lasting line of case law. “Liberal” does not mean ignoring, as this is actually what you want.
You claim that the a “liberal” interpretation of Art 84, should be adopted by the EPO. The mere fact that the TP show that “fully” has been deleted, does not mean that in Art 84 the support requirement can be willingly ignored. You are mixing, intentionally or not, Art 83 and Art 84.
You have never taken position on the examples have repeatedly given. You have never replied to my comments about the link between Art 84, 83 and 56. You are actually purposedly trying to confuse the issues by reading into Art 84 things which cannot be found or read into it. Your interpretation is, in my opinion, plainly wrong. I am most probably not the only one to be of this opinion.
You might be sceptical about any assertions that a “strict” interpretation of the support requirement is obvious from the wording of Art 84. My interpretation is by no means strict, it merely corresponds to the wish of the legislator. That you purposedly want to ignore it, is your problem, not mine.
You can probe whatever you want, I will not follow you on your path. Enough is enough.
It is striking that this decision had to address the interpretation of a Guideline, not of the EPC or of an EBA decision. Does this mean that at the EPO the hierarchy of norms is upside down ?
I see this situation as the result of the heavy language policing the EDs are required to implement by the Guidelines. This is primarily about adaptation of the description after claim amendments and claim-like clauses, but also affects the claims themselves, see the ban of the words « substantially » or « approximately ». Such a word may be quite clear in the context of the description, when the function of the element as disclosed makes quite clear the meaning of « substantially » for the skilled person.
As to claim-like clauses, as I said before, I approve the position of the Board regarding the burden of proof on the ED and the observation that the Guideline is intrinsically inconsistent.
The specific drafting of the alleged « claim-like clauses », presented as many « examples », in the Intel application EP3511980 to which T 438/22 relates, raises interesting questions. Intel argues that the clauses may be useful in the context of court proceedings. Intel also argues that the changes required by the ED in the description could create new matter issues, by altering the interpretation of the claims before a court.
The EPO argues that such clauses create legal uncertainties as the extent of protection when assessed by a court. That may be true, but first, such concern is beyond the remit of the EPO, and second, uncertainties are everywhere for both parties in court proceedings. Take the assessment of validity : it is wishful thinking to believe that the UPC or a national court will always reach the same conclusion as the EPO. For example, major juridictions in Europe do not apply the PSA, or may apply it in a less rigid manner. And there are many other areas of potential uncertainty in court proceedings.
The Intel case is challenging owing to the great number of « examples » considered claim-like clauses by the ED, listed at the end of the description. This generates for the review and resulting amendments of the clauses an overwhelming amount of work, damaging to the « efficiency » objective stressed by the EPO and disproportionate, bearing in mind that they are only justified by hypotheticals. I also think that policywise this may act as a distraction from the core mission of the EPO.
Last year we had a developed discussion on this blog in relation to T 1426/21. I wrote at that time that in my view, claim-like clauses are not useful. My own experience has been that French patent attorneys use them to ensure support for the claims, because the French Patent Office’s practice was extremely picky on the support requirement. But I can see that such a great company as Intel acts differently. They have their reasons, based on their experiences and their objectives. The legal constraints applicable to the priority US application also play a role. An applicant must be left free to choose the content of the description, and the EPO should not thwart this freedom, as long as the claims are clear.
Mr Hagel,
I can agree with you that the legal support for the requirement in the Guidelines is quasi non-existing. This was also the case for another topic until, in a special case, the Implementing Regulations were amended.
It remains that the incorporation of claim-like clauses is causing a lot of extra work to first instance deciding bodies of the EPO. The EPO cannot be blamed if it wants to save time by not dealing with features absent from the EPC.
Claim like clauses might not be forbidden as such by the EPC, but they are also not mentioned anywhere in the EPC or in its implementing regulations. A reasonable interpretation of the EPC under Art 31(1) VCLT, shows immediately that the legislator only wanted to see a description and claims in an European application or a European patent. It was never envisaged to accept as well the US creation of claim-like clauses.
Insisting on the allowability of claim-like clauses might induce the AC to amend the Implementing Regulations in order to ban claim-like clauses. If claim-like clauses intend to disclose further examples, they can as well be kept in the description, but under examples and not aspect or anything alike. Claim-like-clauses are anything but not examples in the meaning of R 41 (1,e) and R 41(2).
It might have taken a long time for the AC to introduce R 137(4), until 2009/2010, but in view of the attitude of some representatives, the only way to force them to give the source of amendments was to introduce R 137(4). Up to the introduction of R 137(4), the obligation to give the source of amendments was only in the Guidelines, exactly like the way to deal with claim-like clauses. I have seen representatives claiming that the description and the claims had just been “retyped”, but in reality they did not bear any relation with the originally filed documents….
Should you have seen claim-like clauses in granted national patents, other than in the US, and especially in EPC contracting states, could you please be so kind and forward corresponding examples. Whether the applicant is Intel or a US SME, it does not change the interpretation of the EPC. Big firms like Intel do not have special rights vis-à-vis the EPC or the EPO. Requirements of US law and prosecution are not EPC requirements.
I agree that an applicant must be left free to choose the content of the description, and the EPO should not thwart this freedom, as long as the claims are clear and what is found in the description corresponds to the requirements of the EPC interpreted under the VCLT and its Implementing Regulations.
According to Art 31(3 and 4) VCLT, it is only if the parties to the treaty all agree that a specific meaning should be given to some terms. Claim-like clauses do not have an agreed meaning between all contracting states of the EPC. As theiy are decided by the AC under Art 164, the Implementing Regulations can be considered as expressing the common understanding of the EPC contracting states according to Art 31 VCLT.
That terms like “substantially” or “approximately” have to be banned from claims is due to the fact that, in general, they introduce uncertainties. “About” is of the same kind. When it deals with numerical values, general rounding rules apply, and the numerical value is to be measured with the current measuring instruments in the field. If it is to imply a certain margin of error, the margin of error has to be added in the claim.
Last but not least, terms like “substantially”, “approximately” or “about” have nothing to do with claim-like clauses and only obscure said issue. We should stick to the topic at stake.
Mr Thomas,
Thank you for your response.
There is a provision in US law (35 USC 112(f) which applies to claims using functional definitions such as « means for » and restricts the interpretation of the claims to the embodiments disclosed in the description. This likely explains that claim-like clauses are included in US priority applications and then kept without changes in foreign applications, which saves extra work and avoids issues as to the validity of the priority claim.
I do not think it would be a good idea to consider the addition of implementing regulations, because it is difficult to precisely define claim-like clauses. I have looked at a couple of French patents and very frequently, they include a list of claim-like clauses but the list is complemented by a few comments relating to some of the clauses e.g. a technical effect related to the independent claim. The qualification as claim-like clauses based on implementing regulations could thus easily be challenged by the applicant and this would entail endless discussions. Frankly, this is not worth the trouble. In my view, claim-like clauses are much ado for nothing.
Mr Hagel,
Could you give one reasonable reason why the EPO should take care of a provision of US law which has induced those famous claim-like clauses? Your argument is actually very weak.
Claims using functional definitions such as « means for » are standard practice in Europe. They give the maximum scope of protection and are not necessarily limited to the examples given, provided that it is manifest that at the filing date, the skilled person would know immediately what is suitable for the purpose.
If the US interpret those as being restricted to the specific embodiments disclosed in the description, it is their problem, not the problem of the EPO.
There is no reason when entering Europe for keeping claim-like clauses. The priority can be valid and no matter need be added, even if the wording in the priority document or in the application as filed is not absolutely identical.
It is certainly not difficult to precisely define what is hidden in claim-like clauses. It needs some care in re-formulating said claim-like clauses to transform them in proper embodiments according to European practice, but this is not a reason to merely accept them. Moreover it is not the job of the EPO to simply accept and take care of this idiosyncrasy of US procedure.
At this rate, the EPO should also accept multiple independent claims of the same category, preferably with overlapping scope. The European legislator has clearly said no. He should thus also say no to claim-like clauses.
When used by European applicants, I cannot refrain thinking, that they are used to obscure what is actually disclosed/claimed.
They cause extra work and have no legal justification whatsoever. Where do you find claim-like clauses in the EPC and its Implementing Regulations? I can only find the terms claims/description and nothing about claim-like clauses, whatever might be hidden behind. Even the VCLT cannot help here. So it is best to simply ban them as multiple independent claims of the same category have been banned, besides in some exceptional cases.
On the contrary, endless discussions are caused by claim-like clauses and it is not the duty of the EPO to play a game which has no raison d’être in European practice. The best is thus to ban them by amending the Implementing Regulations.
I remind you that the introduction of R 137(4) has stopped endless discussions on the source of amendments. It is for the applicant to indicate the source and not for he EPO to guess. It is for the applicant to indicate what embodiments should be covered by claim-like clauses and for the EPO to guess.
Mr Thomas,
My reference to US law was an explanation for the applicant’s practice, it was not intended to be a justification. It never hurts to understand the reasons underpinning a certain practice.
As to the use of claim-like clauses filed by European applicants, I do not want to mention a specific case, but please look at recent EP applications (published in January 2024) filed by French applicants in subclass A47 (household). You will immediately be able to spot applications containing claim-like clauses. This is by no means a practice limited to US applicants.
As to adding in Rule 42 a definition and a ban of claim-like clauses, this will first apply to all applicants, US and all others, and second it is dubious that keeping claim-like clauses in the description may give rise to a refusal. Many provisions of Rule 42 and 43 serve mainly as guidance and are not legally compulsory. Take for example the two-part form of claims prescribed in Rule 43. I personally prefer one-part claims for various reasons and I have always resisted EDs’ requests to shift to a two-part form. This has never resulted in the refusal of the application.
Mr Hagel,
Whether your reference to US law was “an explanation for the applicant’s practice”, and “not intended to be a justification” is actually irrelevant. That applicants have some reasons to insist on claim-like clauses is manifest. Those reasons are not relevant either.
I strongly disagree that “Many provisions of Rule 42 and 43 serve mainly as guidance and are not legally compulsory”. The only one which is not compulsory is the two-part-form of the claims.
In the first sentence of R 42, I read “The description shall”.
If the use of “shall” does not imply that what follows is not mandatory, then nothing else is mandatory.
I could at a pinch agree with you if the first sentence of R 42 would read “The description “may”.
I fail to see in R 42 and in view of its mandatory character, any reference to claim-like clauses.
I would allow myself to go as far as to claim that the board has not read correctly the first-sentence of R 42.
There is no more to say.
The best way for the EPO to get read of the problem of claim-like clauses is thus to ban them or anything looking a like.
From my side the topic is more than exhausted. I will not reply any more.
Mr Thomas, I can see from various of your other posts that you are well aware of the provisions of the VCLT. But yet you still cannot explain how the EPO’s interpretation of the support requirement can be derived by application of the principles of Art 31 VCLT. I should also point out that the “manifestly absurd or unreasonable” consideration of Art 32(b) only arises if and when an interpretation according to the principles of Art 31 leads to such a result.
As far as I can see, the “ordinary meaning” of the term “supports” that I previously pointed to does not bring Art 32(b) into play. It also does not leave the meaning “ambiguous or obscure”, as per Art 32(a).
On the other hand, a “manifestly absurd or unreasonable” interpretation of the support requirement might be one that:
– adopted a double standard regarding claim interpretation (e.g. the EPO refusing to apply Art 69 to matters of claim interpretation that are explicitly aimed at influencing post-grant claim interpretations); and
– because of that double standard, forces applicants to risk exposing their rights to invalidation post-grant, based upon added matter (including possible inescapable traps).
In this respect, I really do not see Art 32(b) as being helpful to your cause. Quite the opposite.
With regard to your examples, I refuse to be drawn not because I do not have an answer, but because the answer is “it depends”. Courts will be well aware that, according to Art 69 and its Protocol, determination of the extent of protection starts with the wording of the claims. In the light of this, do you really think that a national court will ROUTINELY ignore the wording of the claims in favour of a statement in an (unamended) description?
The principles of interpretation include the REBUTTABLE presumptions that:
– the same words mean the same thing; and
– different words have a different meaning.
There may be edge cases where these presumptions can be rebutted. But those will be the rare cases where there is sufficient evidence to support a counter-intuitive conclusion. At the end of the day, even if I do not always agree with their conclusions, I trust the courts to apply the correct principles and to therefore, as a matter of course, to reach justifiable interpretations of the language of the claims of a granted patent. In this respect, it puzzles me that you (and, it seems, an influential group within the EPO) have so little trust in the national courts.
@ Doubting Thomas alias Proof of the pudding
You are quite amazing as you do not seem capable of giving up.
You apparently must have the last word!
It has reached a point when it becomes pathetic.
We have agreed that we disagree and we should live at that.
Under those circumstances, no reply is due from my side, as the hamster wheel would continue running.
Mr Thomas, we can certainly agree to differ. What I find particularly revealing, however, is your tendency to declare a discussion closed when anyone refuses to let you off the hook with unsupported assertions that you make regarding the meaning of Art 84. If you could only find it within yourself to provide a explanation of WHY applying the principles of interpretation to Art 84 leads logically and inevitably to your interpretation, then this debate could be closed in a professional and amicable fashion.
@ Doubting Thomas alias Proof of the pudding
Since we agree to differ, it also means that we differ on the source of law and on its interpretation under the VCLT.
Should my assertions be unsupported, it is easy to return the compliment.
There is neither a professional nor an amicable discussion any longer possible with you. I have explained at length what can be drawn from the TP, not a lot, but from the deletion of “fully” in the TP you try to make a mountain with the help of the VCLT.
I have given my interpretation of Art 84 in the light of the VCLT. We disagree and that’s it. If my explanations are not logical, then this is also valid for yours. You see in Art 84, interpreted under the VCLT, things which I cannot see. What is there else to be discussed?
Your insistence is becoming unhealthy, and this is the reason I do not want to spent any more time discussing the topic of adaptation of the description under Art 84 (support) with you. I am not your punching ball.
@Doubting Thomas
You seem to take Mr Thomas’ answers rather seriously. In my view, commentators on his blog should be understanding of Mr Thomas’ huge workload (review BOA decisions, write up remarks, answer sometimes prolific commentators) and of his no-moderation practice. And keep in mind that he deserves credit for his contribution to the professionals’ information, his responsiveness and for providing a forum for debates.
We and I are also familiar with some of his idiosyncracies, such as his assertiveness, his ability to brush off facts and arguments he does not like or to utterly ignore them, his angle as a former EPO director less than interested in applicants’ or representatives’ concerns. This is so to speak the price to be paid when you challenge his views. Personally I smile when I read the type of answers, it shows I had a point.
Mr Hagel, I forgot to add that Mr Thomas does indeed deserves credit for his contribution to the professionals’ information, his responsiveness and for providing a forum for debates. This is a much appreciated, positive aspect.
Mr Hagel, you are probably right that I have given too much credence to Mr Thomas’ answers. I had wondered whether, having spent so much time at the EPO and having clearly absorbed their philosophy on Art 84, Mr Thomas might be able to explain how that philosophy derives from the EPC. Turns out the answer to my question is a clear “no”.
Regarding beliefs that are impervious to facts, reason and logic, you may be interested in the following article.
https://www.psychologytoday.com/us/blog/true-believers/201603/5-reasons-why-people-stick-their-beliefs-no-matter-what
As you will see from that article, humans tend to cling to beliefs that we find USEFUL. For that reason, another question that I have is why it is that the EPO finds their current interpretation of Art 84 to be so incredibly useful that they cling to it despite it being so obviously unsupportable (the constantly shifting rationales provided by different Boards being a clear “tell” on this point). As yet, I have no answer to that question. Cui bono?
@Doubting Thomas
Sorry for the tardy reply.
Thank you for the link to this article. Since it was published, in 2016, we have unfortunately witnessed the monumental rise of the indifference if not disdain for truth in all walks of life, including at the top political level of Western democraties.
Turning to your question : « why it is that the EPO finds their current interpretation of Art 84 to be so incredibly useful that they cling to it despite it being so obviously unsupportable ? », it leads to your final question : « cui bono ? », which is the right question.
Not only is this interpretation of Art 84 of no interest to applicants, it brings no value and it is burdensome, sometimes costly. A colleague in private practice recently told me that he had to challenge the amendments entered by the ED at the 71(3) stage in one out of two cases, and invoice his client accordingly.
I think the answer is clear : it is useful to « the President of the EPO » (« the upper floor of the Isar building », as Mr Thomas sometimes likes to say), or more broadly to the EPO management. And « useful to the President of the EPO » means that the current interpretation of Art 84 is aligned with his interests.
His interests are primarily to gain easy approval from the AC for his activities (and possibly have a say in the appointment of the next President, if a 3rd term for him is not to be envisioned).
Three years ago, after the Kluwer blog had reported the release of the 2021 revision of the Guidelines, our friend MaxDrei posted comments which in hindsight were extremely insightful. I take the freedom to quote them literally :
« These days, I have the feeling that, inside the EPO, management doesn’t give a toss about the law or the extent of protection given to the customers. All that interests them is “efficiency”, driving down cost and driving up profit. The writer of this useful blog post surmises that EPO management saw the high rate of rejection of Examiners’ scribbled amendments in the Druckexemplar as a drag on efficiency and profit, so resolved to do something about it.
What should be our response? Perhaps invite our corporate clients all round the world to complain direct to the EPO about the absurd lengths that EPO managers are driven to go to, to “conform” the description to the claims to the satisfaction of management. Just like with Article 123(2) the situation is getting out of hand, and all because Examiner careers depend on pleasing EPO management, which finds it easier to monitor Examiner “quality” under Art 123(2) and 84 than 54 or 56, EPC. »
What seems to matter here is thus the money trail more than legal or policy considerations. The members of the AC are the heads of the national patent offices. The national patent offices get 50% of renewal fees for granted patents validated in their country, i.e. a very substantial share of their budget for many of them. Which means that the members of the AC have a clear interest in the « production objective » of the President : maximise the number of granted patents and minimise the time to grant (« efficiency » in the EPO management’s language).
This seems to be the primary driver for the current interpretation of Art 84 and its implementation in the form of amendments entered by the EDs at the 71(3) stage to speed up the grant procedure. EDs are likely pressured by their management to reach « production objectives ».
This part of the EDs’ work has likely gained a higher weight in the EDs’ performance evaluation and related pay incentives. This may correlate with the relative decline in quality regarding search and examination reported by major industry players (see Kluwer patent blog, 28 Jan 2024 « Quality at the EPO: staff and industry concerns not addressed »), which matches recent audits of granted patents.
Areas of concern are particularly the completeness of search and the thoroughness of examination. For example, there are incomplete searches when the PCT search reports from non-EPO ISAs are utterly ignored, and/or when the Examiner has obviously not taken full account of the description. All of this is not surprising if EDs are not allocated suitable time and quality is not enough prioritised and rewarded by the management.
Doubting Thomassays:
date_range 01 Feb. 2024
Mr Hagel, you are probably right that I have given too much credence to Mr Thomas’ answers. I had wondered whether, having spent so much time at the EPO and having clearly absorbed their philosophy on Art 84, Mr Thomas might be able to explain how that philosophy derives from the EPC. Turns out the answer to my question is a clear “no”.
Regarding beliefs that are impervious to facts, reason and logic, you may be interested in the following article.
https://www.psychologytoday.com/us/blog/true-believers/201603/5-reasons-why-people-stick-their-beliefs-no-matter-what
As you will see from that article, humans tend to cling to beliefs that we find USEFUL. For that reason, another question that I have is why it is that the EPO finds their current interpretation of Art 84 to be so incredibly useful that they cling to it despite it being so obviously unsupportable (the constantly shifting rationales provided by different Boards being a clear “tell” on this point). As yet, I have no answer to that question. Cui bono?
Thank you for your reply.
I am sure that Max has a point, particularly in connection with the relative ease of determining metrics on “formal” matters (such as Arts 84 and 123(2) EPC) vs “substantive” matters (such as Arts 54 and 56 EPC). However, that can at best only be part of the answer. This is because it does not explain why EPO management persists with the policy despite it being an obvious drag on its “production” (ie grant) figures. It also does not explain why, contrary to facts, logic and reason, so many examiners and Board of Appeal members adhere to the current philosophy on Art 84 EPC.
As far as I can tell, many of those who adhere to the EPO’s interpretation of Art 84 EPC do so for genuine reasons (as opposed to reasons of convenience, ie toeing the line with management). I am therefore interested to learn why that belief is so (personally) “useful” to them. My best guess is that they see it as integral to the EPO doing a “good” job with examination. If that is true, then the EPO’s current philosophy would likely resonate most strongly with those who take particular pride in the “quality” of their work. It would also suggest that the strongest adherents might respond very negatively to suggestions that their interpretation of Art 84 is wrong. The link in their mind to the “quality” of their work could mean that they take such suggestions as a personal affront. Such suggestions might also be viewed with suspicion, and as being advanced by applicants holders who wish to be granted “angora cat” patents.
This poses a particular challenge for those of us who know for certain that their reasons for opposing the EPO’s interpretation of Art 84 are entirely virtuous (ie based upon a logical interpretation of the EPC, and aimed at avoiding untold downstream harm to applicants who are simply trying to adhere to the law).
@ Doubting Thomas alias Proof of the pudding and Mr Hagel
As far as beliefs are concerned, my point of view has been constant for many years: beliefs belong to religions and churches, but have nothing to in IP.
One the one side, IP is about hard facts and the interpretation of those facts, and on the other hand on law and the interpretation of this law. I cannot equate those interpretations with beliefs.
I have my interpretation of the requirement of support under Art 84, you have yours. This is, once again, by no means a question of belief.
I would also like to add that I am not speaking for the EPO. I am dealing with this point in view of my long experience and practice at the EPO.
It is your right wanting to see the EPO stop clinging to its interpretation of Art 84. This right is respectable as such, but will not make the EPO budge one iota.
Asking the question “cui bono” is actually asking the wrong question. The EPO does not seem to gain anything or any profit from requesting the adaptation of the description to the claims. It costs time, especially with those applicants/representatives which are unwilling to apply the EPC.
I can agree with you that applying Art 84, support, is not necessarily an absolute guarantee of quality. It is only the case if the search and the examination are themselves at a good level of quality. However, voices have emerged doubting the quality of searches/examinations and oppositions at the EPO.
I might indeed have some idiosyncrasies’, a certain assertiveness, but I am not merely to brushing off facts and arguments I do not like or utterly ignore them. In this respect, I am not different than any other human being.
I base my views on my long standing practice as EPO examiner respectively director. I can accept that EPO examiners or former examiners do not go as far as to share all applicants’ or representatives’ concerns, especially when they are contrary to the instructions given to them in the Guidelines.
The price to be paid when you challenge my views is that, unless the arguments are compelling, I have no reason to change my point of view. Having a point of view has nothing to do with beliefs. I could not resist a smile when I read your comments about beliefs. If you have to resort to beliefs, it indeed shows that I had a point.
When examiners are amending the description and the claims at the moment of issuance of the communication under R 71(3), other than for small issues like typos and the like, they are not abiding by the Guidelines. The representatives are thus perfectly in their role to query those amendments. That they cost money to applicants is manifest. This type of arm twisting by EDs is not acceptable, but understandable in view of the production pressure.
Considering Art 123(2) as a purely formal requirement is to me as wrong as considering Art 84, clarity and support, as a purely formal requirement. If a claim is unclear, how on earth can it be compared with prior art? If a claim infringes Art 123(2) it does not have an effective date and can neither be compared with any prior art.
The strict conditions on Art 123(2) established by the EBA have the purpose of not allowing an applicant/proprietor to gain an undue advantage over third parties. I am sure that you would like a strict application of Art 123(2) to your competitors, but not to yourself. This goes on a par with the argument I have often heard: you gave this to my competitor, so you can give that to me! Sorry, but I was never impressed or convinced by this type of argument.
The day the wording of Art 84, support, is deleted, then I will agree that any adaptation of the description to the claims is not any longer mandatory. This has nothing to do with beliefs, but with the wording of a clear legal provision!
To quote Wikipedia: “A belief is a subjective attitude that a proposition is true or a state of affairs is the case. A subjective attitude is a mental state of having some stance, take, or opinion about something.”
I accept that my interpretation of Art 84 EPC is only what I believe to be true. Whilst I have based that interpretation upon facts, logic and reasoning, I am under no illusion that this qualifies my position as anything other than a belief. For this reason, I remain open to persuasion by any argument that can methodically, logically and convincingly demonstrate that, as interpreted according to the principles of the VCLT, Art 84 actually has a different meaning.
In this context, I would encourage you to reflect upon, and to critically assess, your own position. Contrary to what you claim, your interpretation is a belief just the same as mine is. Your interpretation may well be based upon your years of experience and practice. But just because a belief is long-held does not make it immune from critical re-evaluation. Indeed, in my book, it is particularly important to critically re-evaluate any belief that is long-held. This is because the passage of time tends to blind us to points that we may have overlooked and/or to forget the assumptions that we made when we first formed our belief.
A critical re-evaluation of your position might usefully start with looking at the wording of Art 84 EPC and, with an open mind, applying the principles of Art 31 VCLT to that wording. If that exercise leads you unerringly back to your current interpretation of Art 84, then you will be able to explain to the rest of us how that:
– derives from the ordinary meaning of the words of Art 84 in their context and in the light of the object and purpose of that provision; and
– does not lead to a result that is manifestly absurd or unreasonable.
Unless you can demonstrate the above, then taking the position that the support requirement of Art 84 needs to be deleted for you to change your position amounts to nothing more than simply stating that you are right and that is the end to it. Whilst that does sometimes come across as pretty much all you have to say on the matter, I would be happy for you to prove that – contrary to such impressions – you can actually engage constructively in the debate on this topic.
Finally, with reference to your comments on Art 123(2), I would be grateful if you could not make assumptions about the motivations of anyone who argues for a different interpretation of Art 84. In addition to demonstrating your prejudices, doing so does not help to move the debate forward. When it comes to determining the correct interpretation of a legal provision, facts, logic and reasoning are all that matters. Unless someone was an author of that legal provision, then their motivations are really beside the point.
@ Doubting Thomas alias Proof of the pudding
I’ve reached an age and a level of experience in IP matters in general, and knowledge of the EPC in particular, so that I don’t need to be told what to do or think. I find your attitude of unsurpassed in pretentiousness. It is moreover oozing with self-satisfaction.
I will not repeat how I associate the present wording of Art 84 with the VCLT. My point of view is as valid as yours, and it is not a belief, contrary to what you insinuate. I am far from saying that I am right, and neither are you, but since the discussion I turning in circles, I do indeed think that the discussion should be brought to an end.
When you claim that I am not actually engaging constructively in the debate on the topic of support, it is so easy to return the compliment.
I have never brought the topic of Art 123(2) in the discussion, my comment about Art 123(2) stems directly and unambiguously from your comment of 05.02.24. which says “determining metrics on “formal” matters (such as Arts 84 and 123(2) EPC) vs “substantive” matters (such as Arts 54 and 56 EPC)”.
I did not make any assumption about the motivations of anyone who argues for a different interpretation of Art 84, but simply disagreed with the view that Art 84 and Art 123(2) are “formal matters” and Art 54 and 56 are “substantive matters”. You should make the effort to read what I have said and not come up with such non-sense.
Up to now, I have let you write what you wanted, but this last entry is in no way acceptable. I would therefore encourage you to reflect upon, and to critically assess, your own position and more important the way you express it.
The discussion is as dead as a dead horse can be. Since all arguments have repeatedly been exchanged that’s should be it. I would therefore urge you to stop flogging a dead horse. Enough is enough!
@Daniel X. Thomas
@Doubting Thomas
Thanks for your replies.
As to the interpretation of Art 84, I do not understand why its support prong should be questioned. It is necessary because (i) the content of the description and drawings, if any, is evidently required for the skilled reader to understand the meaning of the terms of the claims, and (ii) it acts as a bulwark to require applicant to show that claim amendments comply with Art 123(2).
As to the requirement to adapt the description after claim amendments, I note that it has triggered critical comments from many professionals and organisations finding that it has no legal basis in the EPC (see the two 3rd party observations submitted in the T 5/21 case (EP3094648) citing each several publications), whereas the EPO has failed to provide persuasive arguments consistent with its remit, and the BOAs supporting the requirement have relied on different sections of Art 84. Audits of granted patents have shown that the amendments are frequently poorly motivated (the only justification being a reference to the Guidelines without specific reasoning, as in T 438/22), and inconsistent across EDs.
As to the “philosophy” underpinning the requirement, I wish to point out that the authoritative implementation of the requirement in the form of amendments entered by the ED at the 71(3) stage is at loggerheads with the philosophy expressed in the Guideline C-V 1.1 dealing with the implementation of Rule 71(3), which reads as follows :
“This text may include amendments and corrections made by the examining division on its own initiative which it can reasonably expect the applicant to accept. In case of doubt as to whether the applicant would agree to the amendments proposed by the examining division, the applicant should be contacted by telephone or an official communication has to be written. The applicant’s agreement to such amendments will usually be recorded in the communication according to Rule 71(3) (see C VII, 2.4).”
The philosophy in this Guideline being that the applicant must not be imposed amendments he is not reasonably expected to accept, arm-twisting the applicant to force amendments to the description is inappropriate and does not comply with the Guideline. This is all the more true as the applicant remains responsible for the granted patent and the EPO is not liable for any defect in the granted patent. It is true that applicants may challenge the amendments but the additional costs and delay they entail tend to be dissuasive.
Mr Hagel, quite so. It seems that, in practice, EDs at the EPO pay more attention to sections of the GL such as F-IV, 4.3 than they do to sections such as C-V 1.1.
If an ED thinks that certain parts of the description fall outside of the extent of protection conferred by the claims, should they not be obliged to provide, for each and every affected passage, a REASONED explanation of how they come to that view? How else can the applicant possibly gain a proper understanding the ED’s reasons for requiring amendments? Such an understanding is, of course, essential to any determination of the validity of the ED’s view.
Mr Hagel,
Claiming that the adaptation of the description has no legal basis in the EPC is an opinion which has been expressed in various circles, and by some boards, but it is and remains an opinion. Moreover it is a minority opinion within the boards of appeal. You cling to this minority opinion like a drowning man clinging to a lifebuoy. I have thus to disagree with you on this point.
I can however agree with you that what EDs are allowing themselves in matters of amendments of the claims and of the description when issuing the communication under R 71(3) is at loggerheads with the Guidelines C-V, 1.1.
When the amendments are minor or of formal nature and self-explanatory, the consent of the applicant is not absolutely required. However any amendment to the substance require the approval of the applicant and cannot be forced upon him in the communication under R 71(3).
I do not deny that such amendments induce additional costs and delay. The problem here is that the production pressure on examiners is such that they have to take any possibility to get rid of the case as swiftly as possible. Understanding why the examiners behave as they do, does not mean approval, on contrary.
The general addressee for your complaint is however not the ED, but somewhere else in the hierarchy of the EPO and at the AC.
Dear Mr Thomas,
The way you depict me as a drowning man clinging to a single buoy is indeed colourful but somehow misleading. I am very far from being isolated in my position. Please look at the publications cited in the two third-party observations submitted in T 56/21 (EP3094648), including a CIPA position paper.
Please also look at the resolution EXCO/FR22/RES/002 of the FICPI Executive Committee of 25 -29 September 2022, which expresses extremely critical comments regarding the EPO practice. FICPI membership includes over 5,000 practitioners in private practice on a worldwide scale.
In one of the cited publications (epi information 3-2022), Martin Wilming, a Swiss colleague, judiciously refers to a comparative study conducted by WIPO on the relationship of the claims and the disclosure back in 2002; SCP/7/6. https://www.documentcloud.org/documents/22035692-scp_7_6-1#document/p4/a2110426.The practice of the EPO is extensively reviewed, and summarized as follows:
“[T]he support requirement under Article 84 requires that the subject matter of every claim must have its basis in the description so that a person skilled in the art is able to extend the particular teaching of the description to the whole scope of the claimed invention.”
Martin Wilming then offers comments, which I take the freedom to copy :
« No mentioning of amendments to the description at all. Essential features must be taken up in the claims (p. 5, first paragraph), but that is it. The same holds true for the other jurisdictions assessed.
In any event, no national practice in a major jurisdiction that I am aware of requires applicants to adapt the description, and in particular not in the way the EPO currently does. Against this background, it appears far-fetched to assume that the PCT contracting states really intended to require substantial amendments to the description by way of Art. 6 PCT (and even less so under the less restrictive wording of Art. 84 EPC). »
Which implies that if, as you state, the Boards finding that there is no basis in the EPC for the current practice of the EPO are a minority, the EPO’s practice is an ultraminority. It is actually totally isolated vis-à-vis all patent offices in Europe and in the world.
I would like to add a few comments on T 438/22.
The decision clearly states in Reason 6.2 that its interpretation of Art. 84 involves the addition of a condition to Art. 84, referring to the 1st sentence of Art. 84. This argument is very weak indeed as the 1st sentence of Art. 84 is interpreted in the case law and the Guidelines as implying a different requirement, namely, essential features must be mentioned in the claims, and this requirement fully concurs with the WIPO Study SCP/7/6 page 5 1st paragraph cited by Martin Wilming.
This would amount to no less than a revision of the EPC. And the « overarching objective » put forward by the Board as the « raison d’être » for its interpretation is at odds with the objective of the EPC as set out in Art. 1 EPC, which is the grant of patents. Such an « overarching objective » would mean that the EPO is entitled not just to grant patents but also to steer the interpretation of claims by national courts and the UPC. This is nowhere to be seen in the EPC.
It is also inconsistent with Reason 5.8 of the decision stating that « the grant of a patent represents a legal watershed where subject-matter not covered by the claims must be accepted as having been effectively abandoned by the applicant. »
It is surprising in this respect that the Board declines a referral to the EBA for the reason that this would encroach on the responsibilities of the EPO President.
Another remark is that the Board refers to Art. 83 in respect of the description. I note that the over-emphasis of the EPO on the adaptation of the description is in sharp contrast with the EPO’s scant attention to compliance of the description requirement of Art. 83. A former colleague of yours in the ICT field told me that he had only seen two (2) refusal decisions based on Art. 83 in his entire career spanning several decades.
Dear Mr Hagel,
I will not deny that not only yourself, but various groups of representatives, and even the International Bureau, have dealt with the question of the support of the claims by the description.
As far as the International Bureau or the PCT is concerned, the finality of the PCT is not to grant patents. This is reserved to national or regional offices. Suggestions might be made in the PCT or by the IB, but those suggestions are not binding for national or regional granting offices. This position has been repeated in G 2/21. Any reference to the PCT is thus not helpful.
Within the boards of appeal of the EPO, those claiming that there is no legal requirement to adapt the description remain a very small minority. That, in your eyes the EPO’s practice is an ultra-minority, is a position for which you have to take full responsibility.
Even if for the sake of argumentation, one can consider that “the EPO’s practice is an ultra-minority”, it remains that it is for the president of the EPO to decide upon the Guidelines and for the EBA to interpret the EPC. Divisions of first instance and boards are only required to follow decisions of the EBA. Those instances might not be bothered to react on those various positions, but after all, they sit at the longer side of the lever.
In view of the vast majority of decisions of the boards which require adaptation of the description, a referral for such a question does not seem to be an absolute necessity. It is also part of the discretion of the boards to refer a question to the EBA or not. It would sometimes be better if a board would refer a question to the EBA. However, when looking at numerous requests for referral, those are in a lot of cases much to specific and tailored to the case at hand. It is then easy for the board to refuse the request for referral.
Art 1 of the EPC might require the EPO to grant patents, but only under certain conditions which are defined further down in the EPC. One of those is Art 84, which can thus not be ignored, even in part.
That the “grant of a patent represents a legal watershed where subject-matter not covered by the claims must be accepted as having been effectively abandoned by the applicant” is best exemplified by R 80. If the proprietor has not claimed certain embodiments, it will not be allowed in opposition or in the limitation procedure, to file further embodiments in form of dependent claims. It will be for it to show, in case of litigation at national level, whether the non-claimed embodiments fall under the broader independent claim.
At the level of examination, my experience shows that it is very difficult to raise an objection under Art 83 in the absence of reasonable doubts about sufficiency. The Guidelines are very clear in this respect, cf. F-III, 3 to 5. Alleging that EDs only “give scant attention to compliance of the description requirement of Art. 83” is thus not correct.
The situation is better in opposition, and most of problems of lack of sufficiency only emerge in opposition.
That in the ICT field only few refusals are due to lack of sufficiency is not a surprise.
Having also worked in this field as examiner, I can confirm.
Lack of sufficiency occurs mainly in chemistry/pharmacy and biotech. In my last directorate we had to deal with mechanical perpetuum mobile. There, every application is lacking sufficiency. The strange thing is that even in this area, refusal was more than often under Art 123(2) than under Art 83. This was certainly not a surprise.