CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 673/22 – Adaptation of the description necessary

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The patent relates to a non-combustion suction type tobacco product that does not lighted to generate smoke from the tobacco product.

Brief outline of the case

The patent was maintained according to AR3.

The proprietor and both opponents appealed the decision.

The board held that the MR as well as AR 1, 2A, 2B, 3A, 3B were lacking IS over D2=GB 2469838.

The board decided maintenance according to AR4A.

Opponent 2 requested the appeal fee to be reimbursed for reason of a SPV committed by the OD.

The alleged SPV turned around the fact that Opponent 2 considered that it had not got the possibility to comment on the adaptation of the description.

The request for reimbursement of the appeal fee was rejected.

Opponent’s 2 point of view

During OP in opposition, the chair enquired whether there were any other objections or requests and then formally announced the decision to maintain the patent. It was understood by both of the opponents and it would also seem by the proprietor that the chair was specifically referring to objections or requests in respect of AR 4A=AR 3A in opposition, rather than the description. The parties were given the impression that the amendment of the description was to be dealt with as a separate issue.

However, the chair denied requests to enter a discussion concerning compliance with Art 84 in view of contradictions between the descriptive portion of the specification and the maintained claims of AR 4A=AR 3A in opposition. After a break the OD advised that it “can and will not” allow amendment of the description.

For Opponent 2, the contradiction between the amended claims of AR 4A=AR 3A in opposition resulted in a contravention of Art 84 since the scope of the protection could not be clearly determined. For example, it could not be determined whether the claims still encompassed triethyl citrate which was frequently referred to in the description but which was no longer explicitly the subject-matter of claim 1. Furthermore, the refusal of the OD to give the opponents the opportunity to present arguments on this issue resulted in the maintenance of a patent that should otherwise be revoked for contravention of Art 84. Consequently, the test for a SPV having occurred was met and reimbursement of the appeal fee was justified.

The proprietor’s point of view

The proprietor submitted that there was no SPV during the OP in first instance. From the minutes of the OP it was clear that the opponents were given the opportunity to present any final requests or objections that they might have. The opponents should have seized this opportunity to mention that they had objections under Art 84 concerning the description. As they did not do so in due time and as the final decision was then announced orally, the OD was no longer in a position to address these objections.

Furthermore, the proprietor submitted that no provision of the EPC required the adaptation of the description to the subject-matter as claimed, as held in the decisions T 1989/18 and T 1444/20.

However, the proprietor expressly reserved the right to file an amended version of the description if an adaptation of the description was indeed held to be necessary by the board.

The board’s decision

In the present case, AR 4A=AR 3A in opposition was found to be admissible and allowable by the OD. The fact that the OD did not consider the request of Opponents 1 and 2 to amend the description to bring it in conformity with the claims is not linked to the appeal of Opponents 1 and 2, who would of have had to file their appeal irrespective of the issue of the adaptation of the description. Therefore, regardless of whether a SPV took place or not, the board deemed that reimbursement of the appeal fee of Opponent 2 was not equitable.

As to the adaptation of the description, the board judged it necessary to amend the description to bring it in conformity with the claim. As pointed out by Opponents 1 and 2, a number of inconsistencies between the descriptions and the claims are present such as in paragraph [0012], where “triethyl citrate” is cited as a stabilizer of the invention.

The Board did not follow decisions T 1989/18 and T 1444/20 for the reasons given in decision T 1024/18, Reasons, point 3. The board also referred to T 121/20, T 2293/18, T 2766/17 and T 1516/20. Indeed, while the claims need to be clear in themselves, Art 84 requires that the claims be supported by the description. This means that any inconsistencies between the claims and those parts of the description disclosing ways to carry out the invention need to be removed.

The board considered that the case is to be remitted to the OD for the description to be adapted to the claims of AR 4A found allowable. In spite of the proprietor’s preference to adapt the description during OP before the board, the latter considered it more appropriate to remit the case to the OD for adapting the description to claims 1-4 of AR 4A. Not only none of the parties had fully considered the amendments to be made, but the description is to be carefully scrutinized for inconsistencies.


Adaptation of the description – The known decisions

T 1989/18 and T 1444/20 do not need any further presentation.The same LM was acting in both cases.

In the case EP 3 094 648 (T 56/21), again with the same LM, the applicant agreed to a referral to the EBA on 30.10.2023. Anonymous TPOs quoting articles pleading for the non-adaptation of the description have been filed on 24.11.2023. The applicant took position on 14.12.023. Since then the case is idling.  

Adaptation of the description – The present decision

It does not come as a surprise that the present board, like the vast majority of the boards, considers adaptation of the description to the claims as necessary and mandatory.

The description cannot give the impression that features clearly not belonging to the claimed subject-matter are still meant to fall under the claims when reading the description.

The OD’s decision

Once the OD had formally announced the decision to maintain the patent, it could not allow any further amendments to the description. By announcing the decision, the OD lost any competence to amend any part of the patent. If it had, after the announcement of the decision, allowed the adaptation of the description it would indeed have committed a SPV.

It appears important for an OD only to announce the decision of maintenance once the wording of the claims has been finalised, but also after the description has been amended in view of the claims deemed allowable. Gaining time and hurrying the announcement of the decision was not really optimal.

On the procedure

The new MR filed in opposition was lacking N over D1=US 4,981,522. AR1 and 2 were lacking IS over D2=GB 2469838.

Neither D1 nor D2 were mentioned on the ISR established by the JPO and on the SESR. The patent is classified in A24F 47/00 and A24B 15/28. D1 is classified in A24B 15/42, A24C 5/00 and A24D1/22. D2 is classified in A24B 15/28. Th SES was carried out in A24F and A24D.

Whilst the OD found claim 1 of the MR lacking N over D1, the board found that the same claim lacking IS over D2.

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