In a requirement unique to the EPO, the EPO Examining Division regularly requires that the applicant “adapts” the description to an allowable claim set. In recent years, in particular based on several amendments to the EPO’s Guidelines for Examination, this has led to lengthy and costly exercises of rewriting parts of, or almost the entire, description, unnecessary rounds of discussions with Examiners, and to a string of contradictory case law.
No other relevant jurisdiction in the world knows the requirement to comprehensively rewrite the description (i.e. the originally filed disclosure) once an allowable claim set has been agreed upon. While the requirement for the claims to be clear and concise (to not be “indefinite”) can be found in all major jurisdictions, a requirement that the description needs to be amended prior to grant to remove supposed “inconsistencies” between the claims and the description is exclusive to the EPO. Supposedly, this requirement is meant to “help” first instance courts that have to decide on infringement of the granted EP patent.
Without going into the details of the case law controversy that has ensued, only one aspect, which is particularly annoying to applicants, shall be highlighted: Examiners often introduce language from their end (or request that the applicant introduces language into the description) that states that certain embodiments “are not part of the invention”. Obviously, making such an statement, if even possible, is highly risky for the applicant and the applicant will either push against this requirement or obviate the problem by simply cancelling the respective passage of the description (on the question of whether cancelling embodiments no longer falling under the wording of the claim can indeed be advantageous for the applicant under certain circumstances, if done voluntarily, see the further discussion provided towards the end of this article).
In good news for applicants, Board of Appeal Decision T 56/21 of October 4, 2024, highlighted in this year’s BoA case law conference, may indeed signal the beginning of the end of this strict practice.
The case underlying T 56/21 was subject to anticipatory discussions by the IP community interested in European Patent Law since
(a) the Board had initially indicated to refer the question of whether it can be required from the applicant to “adapt” the description to allowable claims to the Enlarged Board of Appeal, and
(b) some commentators had expected that the question in this Decision may be combined with the more fundamental questions underlying the referral G 1/24, i.e. the question whether it is (even) allowable to resort to the description to “interpret” claims that in themselves are perfectly clear.
In the end, the Board 3.3.04 has decided to not refer any questions to the Enlarged Board of Appeal, but rather concluded on its own that there simply is no basis in the EPC to request that the applicant somehow “adapts” the description to an allowable claim set. The Board also has provided extensive (orbiter dictum) comments about the question of whether or not the description should even play a significant role in interpreting the claims, highlighting the “primacy of the claims” and generally stating “reservations” about using the description to interpret the claims for the purpose of examining an application.
Irrespective of the fact that no referral has been made and that this decision has not been combined with the broader referral question G 1/24, the Decision is important and carries weight, not the least because an extensive discussion of the existing case law in regard to the questions outlined above is presented:
- To which extent should the description be consulted to interpret claims?
- Is there a basis in the EPC to request “adaption” of the description to allowable claims?
Overall, a detailed analysis is provided in that respect, which cannot be easily ignored. In fact, the IP Commentariat and the IP Blogosphere have eagerly taken up the Decision and it seems to be consensus that this Decision will eventually lead to (or already is) the demise of the current strict EPO requirements to “adapt” the description to an allowable claim set.
The Reasons for the Decision T 56/21 are essentially divided into two separate segments. Under items # 1 to 52 of the Reasons for the Decision, the Board of Appeal more fundamentally examines whether Art. 69 EPC has any role to play in examination (before grant) and quite succinctly comes to the conclusion that there is no need or purpose to determine (or worry about) the scope protection of the claims during examination.
In fact, for the examination of patentability of an application, the reference point is the prior art and no determination of the scope of protection is required while, in enforcement of a patent after grant, the “extent of protection” conferred by the claims is relevant, but determined in view of the infringing subject-matter, which is an entirely different question (see item # 15 on page 10 of the Decision referring, among others, to G 1/98).
The Board of Appeal’s conclusions in regard to this question can be summarized as follows (see Reasons, # 52; highlighting added):
(a) In proceedings before the EPO, the extent of protection conferred by a patent is only relevant to the assessment of Article 123(3) EPC in post-grant proceedings.
(b) The assessment of clarity and of support of the claimed subject-matter by the description before grant of a patent is a matter distinct from determining the extent of protection conferred by granted claims after grant. It is the purpose of the assessment of Article 84 EPC as part of the examination of patentability to arrive at a definition of the patentable subject-matter in terms of distinctive technical features distinguishing it from the prior art.
(c) Article 69(1) EPC and the Protocol are not concerned with the definition of the subject-matter according to Article 84, first sentence, EPC. Instead they are concerned with the post-grant effects of a patent in the Contracting States. Their purpose is to prevent the protection conferred by a patent being limited to "literal infringement" relying on a narrow construction of the claims in a patent.
(d) Article 69 EPC and the Protocol are not concerned with the "interpretation" of claims in the sense of claim construction, i.e. determining the meaning of the terms of a claim and its subject-matter for the purpose of assessing patentability. These provisions do not therefore provide a general methodology for determining the subject-matter claimed for assessing patentability in examination.
(e) Relying on the description to resolve ambiguities or contradictions in claims of an application before assessing their compliance with clarity and support requirements under Article 84 EPC deprives claims of their function as defined by Article 84, first sentence, EPC, and affects the assessment of Article 84 EPC and further requirements for patentability.
(f) It is not the purpose of the examination of European patent applications to anticipate equivalent matter potentially relevant to infringement. Construing claims in a way that extends the subject-matter claimed beyond the strict wording of the claims when assessing patentability distorts this assessment.
(g) The meaning of the claims put forward by an applicant has to be understood before assessing compliance with the requirements for patentability of the EPC. The finding of lack of clarity is a potential result of such construction, not a condition for claim construction. Since granted claims have the character of a legal norm rather than that of a contractual clause, claims should be construed objectively (not subjectively) based on the usual technical understanding of the features in the context of the claim as a whole (see T 10/22, […]). The description provides the overall context and, more importantly, the disclosure which supports the subject-matter claimed and forms its basis under Articles 83 and 123(2) EPC. Nevertheless, the understanding of the disclosure should not replace or add to the definition of the subject-matter in the claims by way of implicit features, but allow for a definition of patentable subject-matter in the claims.
(h) In summary, Article 84 EPC is not mutually complementary or subordinate to Article 69(1) EPC and the Protocol. Article 69(1) EPC and the Protocol are therefore not to be applied in examination […].
The second part of the Decision T 56/21 (items # 53 to 99) more specifically deals with the question whether it can be required that the applicant must adapt the description to allowable claims based on Art. 84 EPC and/or Rule 48(1)(c) EPC. The Board quite summarily answers this question in the negative (see Reasons, # 99, highlighting added):
(a) Article 69 EPC and its Protocol are not concerned with the assessment of patentability in examination before the EPO but with the extent of protection in the context of national proceedings of a European patent following such examination. Article 69 EPC and its Protocol are hence not applicable in grant proceedings before the EPO.
(b) Article 84 EPC and Rule 43 EPC are not a corollary of Article 69 EPC even though claims are the main determinant of the extent of protection. Consequently, the requirements of Article 84 EPC and Rule 43 EPC are to be assessed separately and independently of considerations of extent of protection when examining a patent application.
(c) Article 84 and Rules 43 EPC set forth requirements for the claims. They do not provide a legal basis for a mandatory adaptation of the description to claims of more limited subject-matter. Within the limits of Article 123 EPC, an applicant may, however, amend the description on its own volition.
(d) Rule 48 EPC is concerned with the publication of an application and the avoidance of expressions which are contrary to public morality or public order, or certain disparaging or irrelevant statements. Rule 48 EPC does not provide for a ground for refusal based on the inclusion of merely "irrelevant or unnecessary" matter in the description intended for grant and even less for "discrepancies" between the subject-matter claimed and that disclosed in the description.
The point raised under (d) addresses another requirement often put forward by Examining Divisions, which is that numbered embodiments sometimes presented at the end of the description must be removed since they are “superfluous” or can be confused with the claims. The Board concludes that there simply is no basis in the EPC for such a requirement.
Another important conclusion can be taken from item 102 on page 83 of the Decision, where the Board addresses the argument that harmonization of the practice of the national courts “requires” that the description is brought in accordance with the claims. In that respect, the Board holds:
However, such harmonisation of the practice of national courts by way of interpreting Article 84 EPC contrary to its wording, is outside of the powers of the EPO (see T 712/10, point 8.2 of the Reasons). If the legislator considers it justified to require that the description be aligned with the subject-matter of claims held allowable, the legislator should provide for the respective legal basis by way of amendment of the EPC.
Notably, in T 56/21, the Board of Appeal also discusses the landmark UPC Decision NanoString Technologies Inc. et al. vs. 10x Genomics Inc. et al. which is (among others) concerned about preventing any discrepancy between the subject-matter of the same patent in infringement and in nullity proceedings. While this may be sensible or even essential in proceedings before courts, where both questions are at issue in parallel, the Board of Appeal has “reservations” about interpreting claims in grant proceedings with the intention to determine the extent of protection with respect to possible (not known) infringing subject-matter, instead of determining the content and meaning of the claims, independently of considerations which scope of protection may be adequate (see item # 51 on page 36 of the Decision). Again, the Board points out that the “point of reference” is different for assessing patentability and infringement.
Now turning to practical advice to applicants, it will certainly take a while before this Decision and others will be incorporated into the Guidelines for Examination and then into the practice of the Examining Divisions. Also, the outcome of G 1/24 needs to be awaited. However, the catchword of the Decision T 56/21 is so succinct that it certainly would seem useful to confront a particular obstinate Examiner with the same:
In examination of a patent application, neither Article 84 nor Rules 42, 43 and 48 EPC provide a legal basis for requiring that the description be adapted to match allowable claims of more limited subject-matter.
“Strategically”, to allow the Examiner to “save face”, it is nevertheless recommended to introduce boiler plate sentences into the description that only state the obvious, for example “the invention is as defined in the appended claims” or “examples/embodiments not falling under the claims are provided for reference”. It is also recommended to copy the wording of claim 1 into the summary of the invention (if that is not already the case from the onset) and to fulfill the other formal requirements that are typically brought forward by the Examiners, such as briefly discussing relevant prior art in the background section or removing any instances of “incorporation by reference”. By contrast, applicants should resist proposals made by the Examining Division to add statements to the description that certain embodiments are “not part of the invention”. If still necessary or if the quick grant of a patent is important, particularly “offensive” passages of the description may simply be cancelled.
However: Voluntary amendments may make sense if infringement proceedings are considered in Germany
As the last aspect of this article, at least for the jurisdiction of Germany, and considering the present case law of the German Federal Court of Justice, it may indeed be advantageous for the applicant to consider the voluntary removal of embodiments that were covered by the originally filed claims but no longer fall under the claim language after amendments.
According to standing German case law, and also in line with the developing case law of the UPC, patent claims always have to be interpreted considering the description and the figures of the patent. This also applies to claims which are seemingly clear, because “being clear” is the result of an interpretation.
Considering this general approach, the German Federal Court of Justice had to decide in 2011 on whether the following wording “clamps are adapted to clamp the strands at the opposed ends of the device” strictly requires the embodiment to at least have two clamps or whether embodiments providing only one clamp would also be covered by the claim wording by means of equivalence (BGH, X ZR 16/09 “Occlusion Device”). The court held that the patent requires at least two clamps at the opposed ends of the device and denied infringement under the doctrine of equivalence by embodiments which had only one clamp. The court argued, based on with information found in the description, which stated “[0027] … the fabric can be inverted upon itself to form a recess or depression and the fabric can be clamped about this recess to form an empty pocket (not shown) before the fabric is cut“.
Taking this disclosure into account, the court concluded that, if the description discloses several possibilities of how to achieve a certain technical effect, but only one of these possibilities has ended up in the patent claim, the use of one of the remaining possibilities regularly does not constitute an infringement of the patent by equivalent means. This means in essence, what is disclosed but not claimed, is “disclaimed”. This legal approach was confirmed and refined in the decisions BGH, X ZR 69/10 “Diglycid-compound” (2011) and X ZR 29/15 “Pemetrexed” (2015). The decisions confirm that existence of subject matter, which is explicitly disclosed in the description but was not claimed, was found to be disclaimed and therefore excluded to be covered under the doctrine of equivalents.
Consequently, not adapting the description to the amended claims by leaving unclaimed subject matter in the description may result in an obstacle to arguing infringement by equivalents related to this unclaimed subject matter. If the description is amended (for example by removing embodiments no longer falling under the claims), infringement courts have more room to interpret the scope of protection even under the doctrine of equivalents, as national German courts do not apply any file wrapper estoppel and any reason why an applicant has amended the claims expressed towards the examiner are not taken into account. At the moment, it is not clear whether the UPC will follow this German approach, as there have been two contradicting decisions issued by the UPC in this regard.
From a litigation point of view, at least with a view to Germany and taking the current case law and practice into account, it may be advisable to proactively amend the description after having amended the claims, in case the carved out subject matter may be suitable to also fulfil the other requirements of the doctrine of equivalents. This needs to be assessed on a case-by-case basis.
Dr. Holger Tostmann - Patentanwalt, Partner
Thomas Schachl, LLM - Rechtsanwalt, Partner
