T 3097/19 - On the need to adapt the description

Key points

• In this examination appeal, the Board finds an auxiliary request allowable, but the applicant did not file an adapted description.
• The Board: "The Board deems it to be an elementary requirement of a patent as a legal title that its extent of protection can be determined precisely. In the Board's view, the clarity and conciseness requirements in Article 84 ultimately serve that purpose, but they are not sufficient to ensure it. To mark this distinction, the Board prefers to talk about the scope and extent of protection being "precisely determined" rather than being "clear".
• " under a systematic interpretation of the EPC, the function of the claims, as defined in Article 84 EPC, is only achieved when the potentially conferred scope of protection can be determined precisely. Whe­ther this is the case for a specific patent application (or an amended patent) can only be made with due consideration of the description."
• "if a claim is directed to something which is different than that described to be the invention, then the application for grant is self-contradictory, and it can be questioned for which matter the protection is actually sought. For the scope of protection to be determined precisely, the definition provided by the claims of the matter for which protection is sought must therefore be consistent with the definition of the invention provided by its description"
• "the Board disagrees with the conclusions in T 1989/18, but rather concurs with the conclusions expressed in, especially, T 1024/18 and T 2766/17. It also disagrees with the conclusions of T 2194/19 (catchword), inasmuch as it considers necessary that embodiments said to be "of the invention" must fall within the scope of the claims", i.e. (as I understand it) the present Board considers the phrase "embodiments of the invention" in the description to mean, to the skilled person, "embodiments falling within the scope of the claims".
• The Board acknowledges that  "the often {but incorrectly, see *} expressed requirement that the claims be clear "from the wording of the claims alone" appears to be hardly compatible with the idea {underlying the Boards reasoning} that the patent (application) must be read "as a whole"" (the curly brackets {} indicating my analysis)
• * - "The Board does not agree with a verbatim reading of the former requirement, nor, without further qualification, with the statement of T 454/89 (reasons 4.1 (vii) as cited in T 1989/18 (reasons 4) that "Claims must be clear in themselves when being read with the normal skills including the knowledge about the prior art, but not including any knowledge derived from the descrip­tion of the patent application or the amended patent"."
• "The Board considers that these statements cannot literally be correct, for the reasons given above, and rather concurs with the qualification in the Guidelines for Examination, F-IV, 4.1, according to which "the meaning of the terms of a claim must, as far as possible, be clear for the person skilled in the art from the wording of the claim alone".
• "That, however, the claims should be, as far as possible, clear from their wording alone, is an expression of the desire, in the interest of legal certainty (see G 1/04, reasons 5), that the divergence of post-grant jurisprudence be limited (see also T 1817/14, reasons 7.4 and 7.5)."
• "in the case at hand the way the invention is described in the description is inconsistent with the wording of the claims. As a consequence, the Board is convinced that the scope of protection cannot be determined precisely, due in particular to conflicting statements as to which features constitute the invention (see point 23a) and b)) and to the sweeping statement that new embodiments of the invention can be obtained by combining technical means (see 23 c)). Therefore, in the absence of an adapted description, the requirements of Article 84 EPC are not met."
• The Board, in the headnote: "The purpose of the claims to define the matter for which protection is sought (Article 84 EPC) imparts requirements on the application as a whole, in addition to the express requirements that the claims be clear, concise and supported by the description. The Board deems it to be an elementary requirement of a patent as a legal title that its extent of protection can be determined precisely. Whether this is the case for a specific patent application (or an amended patent) can only be decided with due consideration of the description. Claims and description do not precisely define the matter for which protection is sought if they contradict each other"

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/t193097eu1.html

22. Moreover, the summary of the invention (paragraphs 7 to 11) reproduces the original claims and makes, for instance, no reference to the detection of a search window.

23. Thus, in the current application, the description:

(a) summarizes the invention by a set of features which does not include all the claimed features (omitting at least features ii) and iii) (paragraphs 7 to 11);

(b) defines as embodiments of the invention devices which do not contain all the claimed features (see e.g. the first embodiment and paragraph 108)

(c) states that modifications of embodiments or new embodiments obtained by unspecified combinations of technical means remain within the scope of the invention (paragraph 107).

24. The way in which the description defines the invention is thus inconsistent with the words used by the claims. This Board is of the opinion that due to this inconsistency the scope of protection cannot be determined precisely, and that, therefore, auxiliary requests 3 and 4 do not comply with Article 84 EPC.

25. Effectively, the Board finds the third and fourth auxiliary requests not to be allowable because their description was not "adapted" to the amended claims, although it did not have any objections under Article 84 EPC to the claim language on its own (see points 16 and 17 above). With this decision, the Board also takes position vis-à-vis the recent discussion, triggered by T 1989/18, as to whether the description needs to be "adapted" to amended claims and why.

26. The Board notes that the EPC does not expressly provide an obligation for the description to be "adapted", even though this language is commonly used. In principle, amendments under Article 123 EPC concern the entire application or patent, including claims, description and drawings. The issue of "adaptation" is an artefact of the well-established examination practice at the EPO, adopted for efficiency reasons, to accept and discuss claim amendments without giving consideration to the description until allowable claims are arrived at. Strictly speaking though, the application or patent should always be amended as a whole, so that, as is explained below, the description of the invention remains consistent with the claims.

Article 84 EPC and the scope of protection

27. Article 84 EPC states that the claims shall define the matter for which protection is sought and that they shall be clear and concise and be supported by the description.

28. Often, Article 84 EPC is construed as defining three requirements on the claims, while the introductory clause is taken to merely state the role of the claims. However, the purpose of the claims to define the matter for which protection is sought imparts additional requirements on the application as whole.

28.1 The matter for which protection is sought is central for determining, after grant, the extent of protection conferred by the patent (Article 69 EPC). The Board deems it to be an elementary requirement of a patent as a legal title that its extent of protection can be determined precisely. In the Board's view, the clarity and conciseness requirements in Article 84 ultimately serve that purpose, but they are not sufficient to ensure it. To mark this distinction, the Board prefers to talk about the scope and extent of protection being "precisely determined" rather than being "clear".

28.2 As G 2/88 states in reasons 2.5: "Article 84 EPC pro­vides that the claims of a European patent application 'shall define the matter for which protection is sought [...]'. The primary aim of the wording used in a claim must therefore be to satisfy such requirement[...] having regard also to the purpose of such claims. The purpose of claims under the EPC is to enable the pro­tection conferred by the patent (or patent appli­ca­tion) to be determined (Article 69 EPC), and thus the rights of the patent owner within the designated Contracting States (Article 64 EPC), [...]".

29. The claims do not stand on their own. They are part of an application for the grant of a patent (see Article 78(1) EPC), or of a patent, which forms, as has been said (see T 2766/17, reasons 6), a "unitary document" which must be read as a whole (see also T 860/93, reasons 5).

29.1 The Board notes that claims are addressed to, and must be construed by, a person with appropriate and suffi­cient skill in the relevant field, which is determined by the description. It will - and must - be de­ter­mined from the perspective of the skilled addressee how specific terms and formulations are to be interpreted, or whether they have an established meaning in the "art" at all. It is also widely accepted that the description may, at times, define a particular term or formulation used in the claims (see pertinent referen­ces in T 2766/16, reasons 6), and that, therefore, an application may act as its own dictionary ("within rea­son", as T 1151/02 helpfully qualifies in reasons 3).

29.2 Article 69 EPC expresses the same principle, that a patent application (or a patent) must be interpreted as a whole (see, e.g., T 556/02 reasons 5.3, T 1871/09, reasons 3.1, T 1817/14 reasons 7.3).

30. Therefore, under a systematic interpretation of the EPC, the function of the claims, as defined in Article 84 EPC, is only achieved when the potentially conferred scope of protection can be determined precisely. Whe­ther this is the case for a specific patent application (or an amended patent) can only be made with due consideration of the description.

31. In the Board's view, this implies in particular an appre­ciation that under the EPC, a patent, and hence protection, is granted for an invention (Article 1 EPC). What is the claimed scope of protection has thus to be determined on the basis of the claims in conjunction with the description of the invention (Article 78(1)(b) EPC), in consideration of the fact that protection is sought for the invention described.

32. So, if a claim is directed to something which is different than that described to be the invention, then the application for grant is self-contradictory, and it can be questioned for which matter the protection is actually sought. For the scope of protection to be determined precisely, the definition provided by the claims of the matter for which protection is sought must therefore be consistent with the definition of the invention provided by its description.

33. The Board also considers that this consistency between the claims and the description is necessary for legal certainty. The skilled person to whom the claims - and the entire application - are addressed (see point 29.1) must not be confronted with contradictory statements when reading the patent application as a whole. Other­wise, they may be left with doubts as to what is the invention sought to be protected.

34. As mentioned, a series of recent decisions have discussed the necessity, or not, of the "adaptation of the description". On the basis of the above, the Board the Board disagrees with the conclusions in T 1989/18, but rather concurs with the conclusions expressed in, especially, T 1024/18 and T 2766/17. It also disagrees with the conclusions of T 2194/19 (catchword), inasmuch as it considers necessary that embodiments said to be "of the invention" must fall within the scope of the claims.

Some comments on claim interpretation and clarity

35. The Board is aware that its interpretation of Article 84 EPC may appear to be in tension with case law of the Boards of Appeal regarding clarity and claim interpretation. In particular, the often expressed requirement that the claims be clear "from the wording of the claims alone" appears to be hardly compatible with the idea that the patent (application) must be read "as a whole".

36. The Board does not agree with a verbatim reading of the former requirement, nor, without further qualification, with the statement of T 454/89 (reasons 4.1 (vii) as cited in T 1989/18 (reasons 4) that "Claims must be clear in themselves when being read with the normal skills including the knowledge about the prior art, but not including any knowledge derived from the descrip­tion of the patent application or the amended patent".

36.1 The Board considers that these statements cannot literally be correct, for the reasons given above, and rather concurs with the qualification in the Guidelines for Examination, F-IV, 4.1, according to which "the meaning of the terms of a claim must, as far as possible, be clear for the person skilled in the art from the wording of the claim alone".

36.2 That, however, the claims should be, as far as possible, clear from their wording alone, is an expression of the desire, in the interest of legal certainty (see G 1/04, reasons 5), that the divergence of post-grant jurisprudence be limited (see also T 1817/14, reasons 7.4 and 7.5).

37. The Board underlines again its opinion that the requirement in Article 84 EPC that the claims be clear is different from the purpose of Article 84 EPC according to which it must be possible to determine the scope of protection precisely, although the former serves the latter.

Conclusions for the case at hand

38. As stated above, in the case at hand the way the invention is described in the description is inconsistent with the wording of the claims. As a consequence, the Board is convinced that the scope of protection cannot be determined precisely, due in particular to conflicting statements as to which features constitute the invention (see point 23a) and b)) and to the sweeping statement that new embodiments of the invention can be obtained by combining technical means (see 23 c)). Therefore, in the absence of an adapted description, the requirements of Article 84 EPC are not met.