The patent concerns a device and a method for machining the inner surface of a pipe system, especially at a joint area of the pipe system.
Brief outline of the case
The OD decided maintenance of the patent according to AR4.
Both proprietor and opponent appealed the decision.
In view of infringement proceedings in Germany, appeal proceedings were accelerated.
The board decided maintenance on the basis of AR2.
The case is interesting for two aspects:
- Claim interpretation in the light of the description
- Adaptation of the description in opposition
In the present publication we will concentrate on the adaptation of the description in opposition.
After the OP before the board, the procedure was continued in writing for the question of adaptation of the description in the light of the allowable AR2. The debate was closed as far substantial matters were at stake, and the board refused to reopen it.
The proprietor’s point of view
The alleged inconsistency between claim 1 of AR 2, as interpreted by the board, and certain embodiments in the description and the figures of the patent was the result of the fact that these embodiments were ignored by the board for the purpose of the claim interpretation.
The proprietor did not consent to the board’s view regarding an alleged inconsistency between the steering device feature of claim 1 as granted and some passages of the description and figures of the granted patent. Rather, when interpreting granted claim 1 in line with Art 69, i.e. when also taking into account the description and the drawings of the patent, no such inconsistency was created in the first place. In any case, G 3/14 prevented any such amendment to the description.
The opponents’ point of view
For legal security, it was essential that the claims were not interpreted more broadly in infringement proceedings than in opposition proceedings. Hence, the description of the patent had to be adapted not only in view of the amendments of claim 1 as introduced by AR 2, but also in view of the board’s narrow claim interpretation.
There was a risk that the Regional Court of Düsseldorf would arrive at a broader, incorrect understanding of the claim in application of Art 69(1) and thus arrive at a negative finding for the opponents in the pending infringement proceedings.
Paragraphs [0027], [0030], [0032], [0034] and [0039] had to be amended in order to make clear that the machining devices of Figures 1, 2a, 2b, 4a, 4b and 6a did not fall under the scope of claim 1.
Under R 80 amendments to the description can be occasioned by a ground for opposition if they affect the claim construction and thus define the scope of protection. Decision G 3/14 was not applicable here. Reference was also made to decisions T 1024/18 and T 3097/19.
The opponents thus argued that the amended description still contained passages that were inconsistent with the subject-matter of claim 1 of AR 2.
The boards decision
For the board, support by the description is required to avoid inconsistencies between the claims and the description and/or the drawings which could cast doubt on the extent of protection conferred by the patent. The board referred to T 1149/97, Reasons 6.1.11; T 1808/06, Reasons 2; T 2766/17, Reasons 6; T 3097/19, Reasons 24; T 169/20, Reasons 1.2.5).
There is a large body of case law developed by the Boards of Appeal, with which the present board concurs, according to which Art 84 is the basis for bringing the description in line with the amended claims in order to avoid inconsistencies, cf. T 977/94, Reasons 6.1; T 1808/06, Reasons 2; T 2293/18, Reasons 3.3.5. Any disclosure in the description and/or drawings inconsistent with the amended subject-matter should normally be deleted or a statement should be added that an embodiment is not covered by the claims, see e.g. T 1808/06, Reasons 2.
The requirements of Art 84 apply – like all other requirements of the EPC – mutatis mutandis to claims which have been amended in opposition proceedings pursuant to Art 101(3). However, R 80 establishes a limit to any amendment made to the patent in opposition proceedings, namely that it must be occasioned by grounds of opposition specified in Art 100, even if the respective ground has not been invoked by the opponent, cf. T 323/05, which concerned a request to adapt the description.
Th board reminded that according to G 10/91, Reasons 19, that in case of amendments of the claims or other parts of a patent in the course of opposition or appeal proceedings, only amendments occasioned by a ground of opposition as submitted by the opponent at the outset of the opposition procedure or later admitted by the OD are to be fully examined as to their compatibility with the requirements of the EPC.
According to G 3/14, Reasons 16 and 17, the claims of the patent may be examined for compliance with the requirements of Art 84 only when, and then only to the extent that the amendment introduces non-compliance with Art 84.
Claim 1 of AR 2 has been amended by the addition of two features, (i) and (ii), to claim 1 as granted.
Pursuant to G 3/14, objections under Art 84 are thus admissible insofar as they arise out of the addition of features (i) and (ii).
The board was satisfied that the proprietor’s amendments to paragraphs [0007], [0017] and [0021] of the description are both necessary and admissible under Art 84, R 80 and decision G 3/14. Not only are they directed to non-compliances with the third requirement of Art 84, support by the description, which were not already present in the granted patent but were introduced by the addition of features (i) and (ii) to claim 1 as granted, they can also be regarded as occasioned by the ground for opposition of lack of sufficient disclosure, in accordance with R 80.
The board agreed with the opponents that the amended description still contained passages that were inconsistent with the subject-matter of claim 1 of AR 2.
The detailed description from paragraph [0027] to paragraph [0039] refers to each of Figures 1, 2a, 2b, 4a, 4b and 6 as illustrating machining devices of “an embodiment of the present invention” despite the absence of a steering device in the sense of feature c. of claim 1. Also, the note at the end of paragraph [0030] contradicts the requirement of claim 1 that the machining device has an actual physical component able to perform the task of steering the machining device.
The inconsistencies between claim 1 of AR 2 and the amended description of the patent do not arise out of the amendments made in AR 2; they already existed in the patent as granted. In fact, feature c. relating to the steering device remained unamended after grant.
The addition of features (i) and (ii) did not change the claimed subject-matter concerning the steering device vis-à-vis the claims as granted. Therefore, the board failed to see a direct nexus between the amendments to claim 1 and the passages identified by the opponents, the removal or adaptation of which is thus not possible in view of decision G 3/14.
In this context, the board noted that in G 3/14, Reasons 55, the EBA concluded that a granted claim may turn out not to comply with Art 84 but that “such non-compliance must be lived with”.
By analogy, the same must apply in respect of a claim amended in opposition proceedings where a non-compliance with Art 84 – whether it concerns a lack of clarity or a lack of support by the description – already existed in the patent as granted.
Since neither clarity nor lack of support as expressed in Art 84 constitute a ground for opposition under Art 100, it must thus be accepted that the removal of an inconsistency between description and claims is not be possible in such a case. The board referred here to T 433/97, Reasons 4, and T 367/96, Reasons 6.2, both cited in decision G 3/14, and T 1808/06, Reasons 2, and T 2391/18, Reasons 4).
Comments
The present decision can be considered as confirming T 2391/18.
It is certainly defendable that G 3/14 is applied as it was here and in T 2391/18. According to this way of looking at G 3/14, any inconsistency between the description and the independent claim as granted cannot be amended when the latter has not been amended.
This way of looking at G 3/14 can however lead to interpretations under Art 69(1) and the Protocol which are not in conformity with the clear meaning of the claims. From its own admission, the board held that Figures 1, 2a, 2b, 4a, 4b and 6, cf. § [0027] to [0039], are not representing “an embodiment of the present invention” in the absence of a steering device in the sense of feature c. of claim 1. The same applies to § [0030].
If Figures 1, 2a, 2b, 4a, 4b and 6, do not represent “an embodiment of the present invention”, the description should be adapted correspondingly.
It looks a bit like a kind of split personality, to say on the one hand, that some Figs do actually not represent an embodiment of the invention, but on the other hand, not to amend them correspondingly.
A not so hypothetical case
When for instance, claim 1 and claim 2/1 as granted are combined, no objection of lack of clarity for the subject-matter of the combined granted claims can be raised under G 3/14. There is nothing to say about this part of G 3/14. The case law of the boards was clearly divergent when it came to clarity as such.
In the description as granted, the subject-matter of claim 2/1 is usually declared optional. When following G 3/14 and the present decision, the optional character of the subject-matter of claim 2 cannot be deleted from the granted description, although said subject-matter cannot any longer be considered as optional.
The scope of protection has changed, but it will not be reflected in the description of the amended patent. The whole reason for of the adaptation of the description is to have a description in accordance with the claims. Why should this requirement which not only follows from Art 84, but also from Art 69 be ignored in case of an opposed patent?
When the scope of protection has changed, the description has logically to be amended. The rest are rather narrow legal arguments which fail to convince.
It is clear that G 3/14 also deals with “support” part of Art 84, but I am not sure that the authors of G 3/14 were aware of this consequence. They were mainly bothered with clarity as such.
It shows how important it is that the adaptation of the description before grant is an absolute necessity. For the skilled person, it is immediately apparent that the protruding portions centre the device in the pipe, but do not allow it to change direction since they cannot but follow the pipe, i.e. they do not steer it. Steering is obtained by a separate device linked to the protruding portions. This distinction should have been expressed before deciding grant.
https://www.epo.org/en/boards-of-appeal/decisions/t220447eu1
Comments
5 replies on “T 447/22 – Limits of the adaptation of the description after amendment in opposition – Pre-existing inconsistency”
Mr Thomas, I am interested in your comment that “This way of looking at G 3/14 can however lead to interpretations under Art 69(1) and the Protocol which are not in conformity with the clear meaning of the claims”.
Can you explain how, in your view, such (inconsistent) interpretations might arise?
As illustrated by T 447/20, point 13.6 of the Reasons, the mere existence of an inconsistency between the claims and the description does not mean that a court (or a Board of Appeal) will necessarily determine that the extent of protection afforded by the claims is broad enough to encompass the “inconsistent” embodiment of the description.
According to Art 69(1) EPC “The extent of the protection conferred by a European patent or a European patent application SHALL be determined by THE CLAIMS”. Whilst there is a role for the description and drawings, this is limited to their use to INTERPRET the claims.
Therefore, for the purpose of determining the extent of protection conferred by the claims, it is perfectly reasonable for a court (or Board) to lend no interpretative weight to embodiments of the description that clearly do not accord with the invention defined by the claims. This is because principles established by national courts emphasise that the most important factor for determining the extent of protection is the wording of the claims.
For example, paragraph 18 of Saab Seaeye Ltd v Atlas Elektronik GmbH & Anor [2017] EWCA Civ 2175 (https://www.bailii.org/ew/cases/EWCA/Civ/2017/2175.html) indicates that principles used by the UK courts to determine the extent of protection include the following.
“(iii) It follows that the claims are to be construed purposively – the inventor’s purpose being ascertained from the description and drawings.
(iv) It further follows that the claims must not be construed as if they stood alone – the drawings and description only being used to resolve any ambiguity. Purpose is vital to the construction of claims.
(v) When ascertaining the inventor’s purpose, it must be remembered that he may have several purposes depending on the level of generality of his invention. Typically, for instance, an inventor may have one, generally more than one, specific embodiment as well as a generalised concept. But there is no presumption that the patentee necessarily intended the widest possible meaning consistent with his purpose be given to the words that he used: purpose and meaning are different.
(vi) Thus purpose is not the be-all and end-all. One is still at the end of the day concerned with the meaning of the language used. Hence the other extreme of the Protocol – a mere guideline – is also ruled out by Article 69 itself. It is the terms of the claims which delineate the patentee’s territory.
(vii) It follows that if the patentee has included what is obviously a deliberate limitation in his claims, it must have a meaning. One cannot disregard obviously intentional elements.
(viii) It also follows that where a patentee has used a word or phrase which, acontextually, might have a particular meaning (narrow or wide) it does not necessarily have that meaning in context”.
In the light of such principles (and, in particular, point (vii) above), I do not see any “kind of split personality” in the Board’s approach to adaptation of the description. This is because it merely reflects the fact that a proper determination of the extent of protection afforded by the claims is perfectly possible even when a description contains “inconsistent” embodiments.
@ Doubting Thomas,
I have no comment to make about a decision of a UK court. It is interesting to see how one national court, among plenty of other ones, interprets the claims, but I will leave it at this.
I respect your point according to which the extent of protection afforded by the claims is perfectly possible even when a description contains “inconsistent” embodiments. This not my position as you know and it will not help to merely repeat it here.
It should also be reminded that the reason for G 3/14 was a clear divergence of case law of the boards in matters of clarity as such. It is only due to some amicus curiae that the EBA found it necessary to also deal with the question of support. I personally regret it as it was not part of the question.
This is why we end up with the present decision. It is correct under G 3/14, but itmakes a distinction between opposed patents and merely granted patents when it comes to adaptation of the description.
All patents going through the EPO should be on a par and dealt with in a similar way when it comes to adaptation of the description. This is the reason why I found a “kind of split personality” in the Board’s approach of adaptation of the description.
Mr Thomas, thank you for your reply.
Am I correct to understand that, in your view, determination of the extent of protection conferred by the claims is NOT (perfectly) possible where there are “inconsistencies” between the description and the claims?
If that is your view, could you explain how you believe such “inconsistencies” would hamper / prevent determination of the extent of protection conferred by the claims?
The presence of alleged “inconsistencies” between the description and claims did NOT prevent the Board in T 447/22 from:
– interpreting the claims; and
– determining that they had a scope that did NOT encompass the allegedly “inconsistent” embodiments in the description.
Whilst the Board did not determine the extent of protection conferred, they nevertheless relied upon principles under Art 69 EPC to interpret the claims. Thus, if the presence of alleged inconsistencies did not hamper the Board’s determination (of the meaning of the claims of EP 2 425 173 B1), why would those inconsistencies hamper / prevent determinations by national courts (of the extent of protection conferred by the claims of EP 2 425 173 B1)?
@ Doubting Thomas,
It is not my intention to have a further turn on your favourite merry-go-round.
You will thus not be surprised that, as a matter of principle, my answer to your repeated question will be negative.
What is at stake here, is not interpretation of the claims as such, but the mere application of Art 84, support, as it presently stands.
You might have noted that I made two publications about T 447/22 on my blog. One on the adaptation of the description, and one on the interpretation of the claims. In my opinion, the two topics are distinct, even if some relation between the two can be seen.
I have also seen your comment about T 447/22 in IPKat. For the same reason as above, I will not comment it either.
Mr Thomas, understood. You do not owe me a response.
It seems that our views on Arts 84 and 69 EPC are quite different, perhaps irreconcilable. However, I had noted that our respective views on many other topics seem to be much more closely aligned. My initial hope had therefore been to better understand your position, in case it turned out to be supported by important points that I had somehow overlooked.
The process of trying to understand inevitably involved my explaining to you the facts, evidence and reasoning that led me to my current position, as well as what I see as logical flaws in certain (principles from) Board of appeal case law. I apologise if this has seemed like too much at times. It had not been my intention to constantly turn the discussion around in circles, just to get some straight answers to questions on points that made no sense to me, or where logic and reason pointed me to a different conclusion.