T 2194/19 - On the need (or not) to adapt the description

Key points

• Board 3.5.03 takes position and is of the view that if the description mentions "embodiments" which are outside the scope of the claims, the description does not need to be amended to remove such "embodiments" or to change them into "embodiments not according to the invention" .
• The Board: " First, the board is not convinced that, according to the EPC, the "invention" is necessarily and always to be equated with the "invention claimed" (see e.g. T 944/15, Reasons 17)." 
• T 944/15 is the case where a computer program was held to be excluded from patentability under Art. 53(c) which specifies that "methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body" are excluded from patentability.
• T 944/15, cited r.17:  "[claims] do not, in themselves, define what the invention is. Instead, it is the corresponding teaching in the application which does that" 
• Compare Article 52(1) EPC: "European patents shall be granted for any inventions, in all fields of technology, provided that they are new, involve an inventive step and are susceptible of industrial application". 
• The Examining Division's analysis was: "the examining division equated the term "embodiment" with subject-matter that has to fall "within the scope of the invention as defined by the claims". 
• " Secondly, this board takes issue with the conclusion that the requirement that the claims are to be supported by the description (Article 84, second sentence, EPC) necessarily means that all the "embodiments" of the description of a patent application have to be covered by the (independent) claims, i.e. that all the embodiments must fall within the scope of those claims. This conclusion cannot be derived from the EPC. It can also not be derived from the jurisprudence of the Boards of Appeal, according to which merely inconsistencies or contradictions between the claims and the underlying description are to be avoided in that context (see e.g. T 1808/06, Reasons 2; T 2293/18, Reasons 3.3.5). [....] The mere indication that the embodiment does not or no longer fall under the respective claim(s) is not sufficient in this regard." 
•  T 1806/06 r.2: " In order to meet the requirement of Article 84 EPC that the claims have to be supported by the description, the adaptation of the description to amended claims must be performed carefully in order to avoid inconsistencies between the claims and the description/drawings which could render the scope of the claims unclear. Any disclosure in the description and/or drawings inconsistent with the amended subject-matter should normally be excised. Reference to embodiments no longer covered by amended claims must be deleted, unless these embodiments can reasonably be considered to be useful for highlighting specific aspects of the amended subject-matter. In such a case, the fact that an embodiment is not covered by the claims must be prominently stated."
• The Board seems to cite T 1806/06 at the correct place in its reasoning: namely for the position that "inconsistencies or contradictions between the claims and the underlying description are to be avoided" (which is indeed what T 1806/06 says). The Board, interestingly, cites no earlier case law for it's analysis that "The mere [fact] that the embodiment does not or no longer fall under the respective claim(s) is not sufficient in this regard".  Nor is any explanation or supporting reasoning given for this view of the Board (in para. 6.2.2 dealing with the matter).
• Als on T 2293/18, the Board required an amendment of the description because, essentially, "Folglich liegt eine Unstimmigkeit zwischen dem Anspruch 1 und Teilen der Beschreibung vor, weil beim Fachmann der Eindruck erweckt wird, dass die Beschreibung Wege zur Ausführung der Erfindung offenbart, die aber nicht unter den Wortlaut des Anspruchs fallen." 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t192194eu1.html

6.2 The board does not endorse the objection raised in Reasons 4 of the impugned decision for the following reasons:

6.2.1 First, the board is not convinced that, according to the EPC, the "invention" is necessarily and always to be equated with the "invention claimed" (see e.g. T 944/15, Reasons 17).

6.2.2 Secondly, this board takes issue with the conclusion that the requirement that the claims are to be supported by the description (Article 84, second sentence, EPC) necessarily means that all the "embodiments" of the description of a patent application have to be covered by the (independent) claims, i.e. that all the embodiments must fall within the scope of those claims. This conclusion cannot be derived from the EPC. It can also not be derived from the jurisprudence of the Boards of Appeal, according to which merely inconsistencies or contradictions between the claims and the underlying description are to be avoided in that context (see e.g. T 1808/06, Reasons 2; T 2293/18, Reasons 3.3.5). The board considers that it may well be that, in a given case, there is such an inconsistency or contradiction between the claims and an "embodiment" of the description. But this has to be justified by the examining division. The mere indication that the embodiment does not or no longer fall under the respective claim(s) is not sufficient in this regard.

6.2.3 Thirdly, the board considers that in particular Rule 42(1)(c) EPC cannot be the legal basis for establishing such a general and broad requirement for an adaptation of the description to the claims. It is simply not what this provision says. Rule 42(1)(c) EPC requires that the description discloses the invention, as claimed, in such terms that the technical problem and its solution can be understood, and that it states any advantageous effects of the invention with reference to the background art. These requirements set out in Rule 42(1)(c) EPC, however, cannot be taken to mean that all the embodiments described in the description of a patent application have to fall within the scope of the claims.

6.3 Hence, the objections raised in Reasons 4 of the appealed decision are likewise unfounded.