http://ipkitten.blogspot.com/2022/04/epo-board-of-appeal-tows-party-line-on.html
Following on quickly from the controversial Board of Appeal decision T 1989/18, in which the description amendment requirement was found to lack legal basis, comes another Board of Appeal decision concluding the opposite. T 1024/18 is an appeal decision revoking EP 2609899 on the grounds that an amended description had not been filed with the allowable amended claims on appeal.
Legal Background: Description amendments
The requirement to amend the description of a European patent application in line with the scope of the allowable claims is an idiosyncrasy of European patent practice. The current Guidelines for Examination require substantial amendments such that the description does not contradict the allowable claims (H-V, 2.7 and F-IV, 4.3(iii)). Applicants are required either to delete subject matter no longer covered by the claims or explicitly state that the offending subject matter does not fall under the scope of the invention.
| Deleting subject-matter |
Applicants are understandably reluctant to make substantial amendments to the description, given the potential impact of amendments on how the claims may be interpreted under the doctrine of equivalents in infringement proceedings (which goes beyond the “normal meaning” applied to the claims during examination required by the EPO Guidelines for Examination, F-V, 4.2). Another concern with the current requirements is the time and cost associated with having to make extensive amendments to an otherwise allowable specification. No other jurisdiction (as far as this Kat is aware) forces applicants to amend the description in line with the allowed claims. It is therefore a mystery to many attorneys why the EPO insists on placing this arguably unnecessary burden on applicants. After all, isn’t the monopoly awarded by a patent defined by the claims?
There is, of course, the argument that the description should be used to interpret the claims (Article 69 EPC), and thus that a disparity between the description and the claims may make the scope of the claims unclear. However, the EPO Guidelines indicate elsewhere that “[e]ach claim must be read giving the words the meaning and scope which they normally have in the relevant art” and further “require the claim to be amended whereby the meaning is clear from the wording of the claim alone. This is important because it is only the claims of the European patent, not the description, which will be published in all the official languages of the EPO” (F-IV, 4.2, emphasis added). It could also be asked whether, if the Examiner is able to identify which parts of the description need amending because they do not correspond with the scope of the claims under a normal interpretation, does this not demonstrate that the scope of the claims is clear?
In a recent decision (T 1989/18), published online at the end of 2021, a Board of Appeal failed to find any legal basis for the description amendment requirement (IPKat). This decision caused a considerable stir, given the controversy that already surrounded description amendments following a strengthening of the requirement in the 2021 Guidelines for Examination. The decision in T 1989/18 raised the question of whether Examiners would stick religiously to the Guidelines or if they might be persuaded to follow the explicit reasoning from the Board of Appeal in T 1989/18 (although the latter was considered this unlikely).
T 1024/18: “Supported by the description” is a distinct requirement to clarity and means “supported by the whole description”
T 1024/18 was an appeal case from the opposition division (OD) decision to maintain EP 2609899. At oral proceedings the Board of Appeal rejected the main request. The claims of an auxiliary request (AR) were considered allowable. However, the patentee failed to file an amended description in line with the AR claims, and the Board of Appeal therefore revoked the patent (for procedural efficiency without remittal to the OD).
The Board of Appeal in the case (3.2.06) found legal basis for the description amendment requirement in Article 84 EPC:
The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description.
According to the Board of Appeal, there is long-established case law interpreting Art. 84 EPC as requiring the entirety of the description to be consistent with the allowable claims (T 0977/94, r. 6.1; T 0300/04, r. 5; T 1808/06, r. 2). The Board of Appeal noted the contrary reasoning in T 1989/18, that inconsistencies in the description do not affect the clarity of the claims since the claims themselves should be clear without reference to the description. T 1989/18 also found that Art. 84 EPC requires the claims to be supported by the description only to the extent that the claims should not include subject matter that does not have basis in the description. As such, additional subject matter in the description that does not appear in the claims is not prohibited.
For the Board of Appeal in T 1024/18, however, Art. 84 EPC is not concerned solely with the clarity of claims, but with their clarity, conciseness and support. For the Board of Appeal, therefore, “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“.
The Board of Appeal in T 1024/18 further reasoned that merely providing a part of the description which gives support to the claims “appears at odds” with the support requirement of Art. 84 EPC. For the Board of Appeal in this case it was necessary for the claims to be supported by the entire description. For this Kat, the Board of Appeal reasoning at this point becomes rather circular:
‘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”‘ (r. 3.1.8)
Or to paraphrase, “supported by the description means supported by the whole description, because that is what supported by the description means”… Nonetheless, following this reasoning, the Board of Appeal concluded that the requirement in Art. 84 EPC for the claims to be supported by the description includes the requirement that the description is consistent with the claims throughout. As such, the description should be amended so that the reader is not presented with any information conflicting the wording of the claims. Given that the patentee in the case had not filed an amended description in line with the otherwise allowable AR, the patent was revoked.
Final Thoughts
Interestingly, T 1024/18 has been given a “C” distribution, and been awarded a place in the “Selected Decisions” section of the Boards of Appeal website. By contrast, T 1989/18 was only given a “D” distribution and did not appear as a Selected Decision. Does this difference in treatment of the two conflicting decisions tell us what the EPO considers to be the “correct” interpretation of the law on description amendments?
It is possible that some Boards of Appeal and Examiners were unaware, prior to the reaction to T 1989/18, of the depth of feeling by EPO users on the issue of description amendments. Despite the disputed legal basis, it will be rare event for a patentee to sacrifice the grant of an otherwise allowable case (or justify the cost and time of an appeal) for the sole purpose of taking a stand on description amendments. The willingness for applicants to conform to the description amendment requirement thus should not be taken by the EPO as a sign that users are content with the status quo stipulated by the current EPO Guidelines.
As things currently stand the legal basis for onerous description amendments is disputed. Will T 1989/18 be a one-off decision, with future Boards of Appeal falling in line behind T 1024/18, or will this issue eventually require a referral to the Enlarged Board of Appeal (EBA)? In the absence of any sign from the EPO that there is a willingness to ameliorate the current Guidelines, any change will most likely depend on the appetite of EPO users to challenge the current approach.
Further reading
Board of Appeal finds no legal basis for the requirement to amend the description in line with the claims (T1989/18) (26 Dec 2021)
Can amending the description to summarize the prior art add matter to the patent application as filed? (T 0471/20) (5 Jan 2022)
Content reproduced from The IPKat as permitted under the Creative Commons Licence (UK).
http://ipkitten.blogspot.com/2022/04/epo-board-of-appeal-tows-party-line-on.html
Following on quickly from the controversial Board of Appeal decision T 1989/18, in which the description amendment requirement was found to lack legal basis, comes another Board of Appeal decision concluding the opposite. T 1024/18 is an appeal decision revoking EP 2609899 on the grounds that an amended description had not been filed with the allowable amended claims on appeal.
Legal Background: Description amendments
The requirement to amend the description of a European patent application in line with the scope of the allowable claims is an idiosyncrasy of European patent practice. The current Guidelines for Examination require substantial amendments such that the description does not contradict the allowable claims (H-V, 2.7 and F-IV, 4.3(iii)). Applicants are required either to delete subject matter no longer covered by the claims or explicitly state that the offending subject matter does not fall under the scope of the invention.
| Deleting subject-matter |
Applicants are understandably reluctant to make substantial amendments to the description, given the potential impact of amendments on how the claims may be interpreted under the doctrine of equivalents in infringement proceedings (which goes beyond the “normal meaning” applied to the claims during examination required by the EPO Guidelines for Examination, F-V, 4.2). Another concern with the current requirements is the time and cost associated with having to make extensive amendments to an otherwise allowable specification. No other jurisdiction (as far as this Kat is aware) forces applicants to amend the description in line with the allowed claims. It is therefore a mystery to many attorneys why the EPO insists on placing this arguably unnecessary burden on applicants. After all, isn’t the monopoly awarded by a patent defined by the claims?
There is, of course, the argument that the description should be used to interpret the claims (Article 69 EPC), and thus that a disparity between the description and the claims may make the scope of the claims unclear. However, the EPO Guidelines indicate elsewhere that “[e]ach claim must be read giving the words the meaning and scope which they normally have in the relevant art” and further “require the claim to be amended whereby the meaning is clear from the wording of the claim alone. This is important because it is only the claims of the European patent, not the description, which will be published in all the official languages of the EPO” (F-IV, 4.2, emphasis added). It could also be asked whether, if the Examiner is able to identify which parts of the description need amending because they do not correspond with the scope of the claims under a normal interpretation, does this not demonstrate that the scope of the claims is clear?
In a recent decision (T 1989/18), published online at the end of 2021, a Board of Appeal failed to find any legal basis for the description amendment requirement (IPKat). This decision caused a considerable stir, given the controversy that already surrounded description amendments following a strengthening of the requirement in the 2021 Guidelines for Examination. The decision in T 1989/18 raised the question of whether Examiners would stick religiously to the Guidelines or if they might be persuaded to follow the explicit reasoning from the Board of Appeal in T 1989/18 (although the latter was considered this unlikely).
T 1024/18: “Supported by the description” is a distinct requirement to clarity and means “supported by the whole description”
T 1024/18 was an appeal case from the opposition division (OD) decision to maintain EP 2609899. At oral proceedings the Board of Appeal rejected the main request. The claims of an auxiliary request (AR) were considered allowable. However, the patentee failed to file an amended description in line with the AR claims, and the Board of Appeal therefore revoked the patent (for procedural efficiency without remittal to the OD).
The Board of Appeal in the case (3.2.06) found legal basis for the description amendment requirement in Article 84 EPC:
The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description.
According to the Board of Appeal, there is long-established case law interpreting Art. 84 EPC as requiring the entirety of the description to be consistent with the allowable claims (T 0977/94, r. 6.1; T 0300/04, r. 5; T 1808/06, r. 2). The Board of Appeal noted the contrary reasoning in T 1989/18, that inconsistencies in the description do not affect the clarity of the claims since the claims themselves should be clear without reference to the description. T 1989/18 also found that Art. 84 EPC requires the claims to be supported by the description only to the extent that the claims should not include subject matter that does not have basis in the description. As such, additional subject matter in the description that does not appear in the claims is not prohibited.
For the Board of Appeal in T 1024/18, however, Art. 84 EPC is not concerned solely with the clarity of claims, but with their clarity, conciseness and support. For the Board of Appeal, therefore, “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“.
The Board of Appeal in T 1024/18 further reasoned that merely providing a part of the description which gives support to the claims “appears at odds” with the support requirement of Art. 84 EPC. For the Board of Appeal in this case it was necessary for the claims to be supported by the entire description. For this Kat, the Board of Appeal reasoning at this point becomes rather circular:
‘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”‘ (r. 3.1.8)
Or to paraphrase, “supported by the description means supported by the whole description, because that is what supported by the description means”… Nonetheless, following this reasoning, the Board of Appeal concluded that the requirement in Art. 84 EPC for the claims to be supported by the description includes the requirement that the description is consistent with the claims throughout. As such, the description should be amended so that the reader is not presented with any information conflicting the wording of the claims. Given that the patentee in the case had not filed an amended description in line with the otherwise allowable AR, the patent was revoked.
Final Thoughts
Interestingly, T 1024/18 has been given a “C” distribution, and been awarded a place in the “Selected Decisions” section of the Boards of Appeal website. By contrast, T 1989/18 was only given a “D” distribution and did not appear as a Selected Decision. Does this difference in treatment of the two conflicting decisions tell us what the EPO considers to be the “correct” interpretation of the law on description amendments?
It is possible that some Boards of Appeal and Examiners were unaware, prior to the reaction to T 1989/18, of the depth of feeling by EPO users on the issue of description amendments. Despite the disputed legal basis, it will be rare event for a patentee to sacrifice the grant of an otherwise allowable case (or justify the cost and time of an appeal) for the sole purpose of taking a stand on description amendments. The willingness for applicants to conform to the description amendment requirement thus should not be taken by the EPO as a sign that users are content with the status quo stipulated by the current EPO Guidelines.
As things currently stand the legal basis for onerous description amendments is disputed. Will T 1989/18 be a one-off decision, with future Boards of Appeal falling in line behind T 1024/18, or will this issue eventually require a referral to the Enlarged Board of Appeal (EBA)? In the absence of any sign from the EPO that there is a willingness to ameliorate the current Guidelines, any change will most likely depend on the appetite of EPO users to challenge the current approach.
Further reading
Board of Appeal finds no legal basis for the requirement to amend the description in line with the claims (T1989/18) (26 Dec 2021)
Can amending the description to summarize the prior art add matter to the patent application as filed? (T 0471/20) (5 Jan 2022)
Content reproduced from The IPKat as permitted under the Creative Commons Licence (UK).