T 0056/21 - Revisiting the need to adapt the description

Key points

• Board 3.3.04 in the end decided to refer no questions to the Enlarged Board and kept to its view that the description of the application does not need to be adapted to amended claims.
• The decision is lengthy and contains a broad survey of all legal aspects of claim interpretation and many sensible observations, some of a general nature.   I will highlight a few points. The interested reader should certainly read the entire well-written decision. 
• The Board:  "The description may only be taken into consideration in determining the extent of protection of a patent in so far as it refers to a part or element of a claim. Matter disclosed in the description which is not linked to a part or element of a claim, is not to be considered (G 1/93, OJ EPO 1994, 541, point 14 of the Reasons)."
• G 1/93 r.14 "The Enlarged Board also agrees with the opponent that there is no basis under the EPC for a "footnote solution" of the kind referred to in paragraph 6 above. This follows from the mandatory character and effect of Article 123(2) and (3) EPC as discussed in the previous paragraph, as well as from the functions of the description and claims of a patent granted under the European patent system." ... "If a technically meaningful feature is included in a claim of a granted patent, Article 69(1) EPC requires that such feature, in combination with the other technical features of the claim, should be taken into account by a national court when it determines the extent of protection conferred by the patent, during infringement proceedings under national law pursuant to Article 64(3) EPC, for example". The TBA seems to apply an a contrario reasoning.
• "The Board has reservations about the view that there is a link between Articles 84 and 69 EPC which justifies the use of the description to interpret the claims for the purpose of examining an application. In fact, the assessment of patentability, which is a task entrusted to the examining divisions of the EPO alone, should be kept separate from the determination of the extent of protection conferred by a patent, which is a matter for consideration by national courts in infringement proceedings. "
• "Article 69(1) EPC and the Protocol can also not be considered to provide, by analogy, a general methodology for claim construction in grant proceedings. Applying the guidance of the Protocol in grant proceedings would amount to putting the cart before the horse. Indeed, the purpose of the grant proceedings is to arrive at an allowable definition in one or more claims of the matter for which protection is sought, rather than to establish before grant what the appropriate protection derived from such wording might be. Moreover, relying on the description to "interpret" the features in the claims before assessing their compliance with the requirements for patentability of the EPC would serve a different purpose than in the context of Article 69(1) EPC and would also have implications for the relationship between the claims and the description."
• We will see if the pending referral G 1/24 gives us any guidance on this point.
• "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 refusal by the examining division is also based on Rule 48(1)(c) EPC. According to this provision, a European patent application must not contain any statement or other matter obviously irrelevant or unnecessary under the circumstances."
• I understand the rule is based on Article 78 EPC.
• "Rule 48 EPC is about offending, disparaging, or irrelevant statements in a patent application, which statements may be omitted from the publication of the application. This provision is not about the patent specification and even less about purported discrepancies between the description and the claims intended for grant. As is apparent from paragraphs 2 and 3, Rule 48 EPC does not provide for a ground for refusal based on the inclusion of merely "irrelevant or unnecessary" matter. There is simply no room for an argument that irrelevant statements are to be handled more restrictively than statements that offend the public or competitors, and that maintaining such irrelevant statements can even lead to a rejection of the patent application."
• The Board's reasoning is different from the one in T1989/18 (see my post on T1444/20 where I also discussed T1989/18): "Rule 48(2) and (3) seem to indicate an additional measure, in my view, namely omitting the offensive statements from the A publication, in addition to the general sanction of refusal of the patent application when not complying with Rule 48(1) EPC. These measures were added in the course of the drafting, suggesting, in my view, that they are additions to the general sanction of refusal of the application [in case of non-compliance with a requirement specified under Article 78(1)), final clause] (see BR/135 e/71 p.25 / p.18 of the English Travaux to Rule 34 EPC; in view of BR/51 e/70 p.11 / p. 24 of the PDF; admittedly the Travaux are not very clear)" ( the link to the travaux is dead after the EPO's website upgrade and I can no longer link to individual documents in the travaux). 
• The TBA now discusses the history of the PCT provision. In the PCT provision, there is no sanction of refusal, but under the PCT, that can very well be the decision of the designated offices. The institutional set-up is different.
• There is more to say about Rule 48(1) EPC, but that is for another time.  
  
  
• For sure, the Habermassian non-coercive discourse ("herrschaftsfreier Diskurs") between the Boards will now continue (link).

The link to the decision can be found after the jump.

https://www.epo.org/en/boards-of-appeal/decisions/t210056eu1