In the February edition of the CIPA Journal we reported on decision T 1989/18, published in December 2021, which found there to be no legal basis for refusing an application on the grounds that the description had not been amended in correspondence with the allowed claims.
Now, in recent Board of Appeal decisions (starting from T 1024/18) the decision in T 1989/18 has not been followed and the requirement for amendment of the description in correspondence with the allowed claims is enforced. Unusually, the Board in T 1024/18 was expanded to add two legally qualified members. The conclusions of this five-person expanded Board appear to carry extra weight.
The requirement for description amendments before the EPO is unusual in the context of global patent prosecution. It can place a heavy burden on the applicant and their representative to interpret the scope of the claims and description, a task that has traditionally been reserved for national courts during litigation.
The European Patent Office (EPO) Guidelines for Examination, section F-IV, 4.3, seeks to avoid inconsistencies between the description and the claims of a European patent application. They say any such inconsistency "must be avoided if it may throw doubt on the extent of protection and therefore render the claim unclear or unsupported."
This requirement was made more stringent in the 2021 Guidelines, which has led Examining Divisions to insist upon a range of "tidying-up" amendments such as: adaptation of the specific description to replace "optional" language with positive statements, and excision of subject-matter not within - or combinable with - the scope of the allowed claims. Sometimes, Examiners request explicit statements that subject-matter is not within the scope of the claims.
This section of the Guidelines was extensively re-cast in the 2022 Guidelines, but appears to have remained equally as stringent as the 2021 Guidelines.
Recent Board of Appeal decision T 1024/18 (and subsequently T 121/20, T 2293/18, and T 2766/17) support the Guidelines in arguing against the reasoning of T 1989/18. In those cases, patents were refused (in part) on the basis of a lack of adaptation of the specific description to the scope of the allowed claims. In contrast, Board of Appeal decision T 1444/20 supports the position in T 1989/18 that extensive adaptation of the description is not required. It is notable that the former decisions have been issued with distribution to other EPO Boards of Appeal whereas the latter have not.
Facts of T 1024/18
In T 1024/18 certain replacement claims were allowable. They had been amended to specify "a non-woven web atop which a first continuous core was formed and a second non-woven web atop which a second continuous core was formed", whereas the first embodiment of the description related to formation of first and second non-woven webs on a "screen". The expanded Board reasoned that the first embodiment:
"must therefore be deleted or must be clearly identifiable to the reader, for example by rewording of relevant passages to indicate that such passages are not, or are no longer, part of the invention".
The patentee was invited to file an adapted description, but did not do so, and also did not attend the hearing. Since the description was not amended, the replacement claims were refused.
Reasoning
The Board of Appeal found legal basis for the description amendment requirement in Article 84 EPC. According to the Board, there is long-established case law interpreting Art. 84 EPC as requiring the entirety of the description to be consistent with the allowable claims (e.g., T 977/94, T 0300/04, T 1808/06).
The Board noted the reasoning in T 1989/18, which took a view that Art. 84 EPC requires that the claims themselves are clear and that there exists matter in the description that supports the claims.
For the Board in T 1024/18, however, Art. 84 EPC imparts three requirements on the claims:
- their clarity,
- their conciseness, and
- their support by the description.
The Board reasoned that "the criterion that the claims be "supported by the description" is not in any way subordinate to the requirement of "clarity" of the claims, but is a requirement of its own". They concluded that merely providing a part of the description which gives support to the claims is not enough to satisfy the "supported by the description" requirement of Art. 84 EPC.
Instead, the Board found that the "supported by the description" requirement of Art. 84 EPC requires that "the description is consistent with the claims not only in some part but throughout". They went as far as to reason that "to provide only support for the claims in one single passage of the description while the rest of the description might give a different or even contradictory meaning to the claims, would in essence negate the general meaning of the words "support by the description"".
The Board concluded that:
"when amendments are made to the claims. the description must be made consistent therewith in the sense that a reader is not presented with any information conflicting with the wording of the claims"
Comment
It appears that the EPO and the Boards of Appeal are keen to distance themselves from the decision in T 1989/18, and to follow the requirements of Guidelines for Examination, section F-IV, 4.3 for adaptation of the description.
The expanded Board in T 1024/18 casts the necessary amendments in terms of "contradictory meaning" and "information conflicting". It appears to us that subject-matter in the description which is technically contradictory to the independent claims should be excised or marked. This is different to a mere inconsistency of language or feature combinations, or a lack of a given claim feature in an example in the description.
Such adaptations are here to stay until such a time as an Enlarged Board of Appeal decides otherwise (if at all).
EPO Guidelines go too far?
EPO Guidelines for Examination section F-IV, 4.3 seeks to encode case law for description adaptation and to communicate when description adaptations are needed. They specify that adaptation of the description is necessary where the description is "inconsistent" with the claims, and go on to attempt to define "inconsistent".
Sometimes, Examining Divisions appear to interpret "inconsistent" as encompassing any wording which is not identical to that used in the claims, in addition to any teaching that might be interpreted as technically inconsistent. Identifying such technical inconsistencies can be an onerous task for Examining Divisions, Applicants, and representatives alike.
Recently, we have noted proposed texts in which it appears Examining Divisions have reviewed the reference signs in the claims, and concluded that only figures (and associated description) whose reference signs appear in the claims are part of the claimed invention. In such cases, other figures have been marked as not being part of the claimed invention. It appears that appropriate and full use of reference numerals in the claims might at least indicate to Examiners the matter which the Applicant considers to fall within the scope of the claims.
We believe a fair interpretation of the case law is that subject-matter in the description which is technically contradictory to the claims should be excised or marked as not falling within the scope of the claimed invention. We believe that such an interpretation aides in defining which parts of the description truly do not fall within the claim scope.
Practical steps
The required description adaptations fall into four broad categories:
a) "summary section" amendments - removal of claim counterparts from the "summary" section and replacement with a reference to the claims, or adaptation of the claim counterparts to account for any amendments to the claims.
These amendments need to be carefully considered to ensure that no subject-matter (and combinations thereof) or associated discussion of technical effect and problem is lost.
b) "alternatives" - it appears that any technically inconsistent alternatives to the subject-matter in the independent claims should be i) marked as not within the scope of the claimed subject-matter or ii) excised.
This is not a straightforward choice. Given that claim interpretation falls under the Protocol on the Interpretation of Art. 69 EPC and says that equivalents should be taken into account in court proceedings (for example in the UK following Actavis and as long-established in Germany), great care should be taken before excising or disclaiming material that might reduce the scope for equivalents - or indeed where removing material might leave open interpretations to a wider range of equivalents. In consideration of such adaptations, the Applicant must always ask "is this question more appropriate for national courts and/or the Unified Patent Court?"
Care must also be taken when excising matter that the excision does not result i) in any insufficiency problems or ii) in a different meaning for remaining matter in the description and claims. If a different meaning results, the requirements of Art. 123 EPC might not be met.
c) Embodiments "not covered" - sometimes entire embodiments might not be consistent with the claimed invention.
Such "consistency" must be judged on a technical level, and, we believe, adaptations should only be made to matter which is technically contradictory to the claims. It is noted that Guidelines F-IV, 4.3 states "it is not an inconsistency when an embodiment fails to explicitly mention one or more features of an independent claim as long as they are present by reference to another embodiment or implicit", and that in "borderline cases.benefit of doubt is given to the applicant".
Similar considerations to those outlined for b), above, are also relevant in this case.
d) "tidying amendments" such as those to remove references to US law or incorporation by reference, citing prior art, and removal of some boilerplate language.
These are usually uncontroversial.
Amendments a) to c) are only possible with a full technical understanding of the claims and description, and we take the view that amendment is only necessary in case of technically contradictory subject-matter. Even so, a burden has been placed on Applicants and representatives to interpret the claims and description. In the facts of T 1024/18, above, it would have been necessary to ask whether a "screen" is - or could be - an example of a "continuous core"? Such a question might not be easy to answer.
Each and every potential description amendment requires due care and attention, taking considerable time to evaluate and argue for Applicants, representatives, and the EPO. In many cases, they may result in Applicants "nailing their colours to the mast" for claim interpretation purposes.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
