Key points
- Old news, but for completeness' sake: questions about the need to adapt the description to the allowable amended claims were referred to the Enlarged Board. The referral is pending as case G 1/25 since the end of July 2025.
- The composition of the EBA was recently announced. The EBA shall consist of chairperson Josefsson, legally qualified members Beckedorf, Rogers, R. Arnold (GB) and E. Chatzikos (GR) as 'external members', and Pricolo and Bekkering as technically qualified members.
- Rogers is the rapporteur in the case, as he was also in G 1/24. Let's hope the decision will be as short and favourably received as G 1/24.
- Josefsson and Beckedorf were also on the panel of G 1/24. Pricolo is the Chair of Board 3.2.01 who referred the question in G 1/24.
- The referred questions:
- 1. If the claims of a European patent are amended during opposition proceedings or opposition-appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description of the patent, is it necessary, to comply with the requirements of the EPC, to adapt the description to the amended claims so as to remove the inconsistency?
- 2. If the first question is answered in the affirmative, which requirement(s) of the EPC necessitate(s) such an adaptation?
- 3. Would the answer to questions 1 and 2 be different if the claims of a European patent application are amended during examination proceedings or examination-appeal proceedings, and the amendment introduces an inconsistency between the amended claims and the description of the patent application?"
- The referring decision contains a helpful overview of the case law on these issues.
- Incidentally, the EP entry was in 2009, the grant in 2019 (!).
EPO
The link to the decision can be found below the jump.
Thank you, Peter, for an interesting read. If I see it right, a majority of the seven EBA members are veterans of G1/24, and two of the three newbies are external members. Accordingly, I expect out of G1/25 nothing else but a Decision which dovetails perfectly with G1/24. Indeed, I wonder whether the G1/24 panel wrote its Decision with the foreknowledge that coming down the track in its direction, shortly afterwards (as soon as a case could be found with a fact matrix fitting nicely to the legal problem) , would be a case on the legal problem of "conforming the description).
ReplyDeleteIncidentally, the EPLAW blog has today a nice write-up of a Dutch case which illustrates the legal problem. Here a Link:
https://www.eplaw.org/blog/detail/upc-equivalence-under-the-upc-should-the-court-of-appeal-adopt-the-dutch-test/
Well, we will have the Lord Justice Arnold on the panel, so it will be interesting.
ReplyDeleteThree of the seven members were also on the panel in G 1/24.
Prof. Hoyng writing on equivalents is always interesting. He has won numerous cases for patent proprietors when he was still an active litigator.
Interesting indeed. Oh to be a fly on the wall, when Arnold, LJ utters his opinion on the issue of "conforming" the description.
ReplyDeleteWith the two external members coming from opposite corners of the European land mass, bracketing the entire EU, the in-house members of the EBA will not lack for advice from the courts downstream of the EU, burdened with the consequences of whatever the EPO decides to do, going forwards from where we are today, on "conforming" the description. Up until now, the EPO has seen it as part of its duty of care and service to the downstream courts, to conform the description strictly. Are those courts grateful for that service? I wonder.
Let's not forget the one clamp / two clamps joy of X ZR 16/09 Okklusionsvorrichtung and parallel cases in other countries. Otherwise, I will reserve my opinion for a possible amicus brief.
DeleteI have to take issue with the idea that the EPO is entitled to “conform the description”. The content of the patent is the applicant/patent owner’s responsibility, as was recently stated in T 697/22, the referring decision to G 1/25, Reason 15.1.2 . The Board reasoned : “ the decisions under the second line of case law (i.e.which find no basis in the EPC for the requirement to adapt the description) share the underlying idea that the inconsistent description and the possible consequences are the applicant’s responsibility.”
ReplyDeleteThis « underlying idea » is implemented at the 71(3) stage in GL C-V 1.1 which states that the text the ED intends to use for the grant « may include amendments and corrections that the examining division made on its own initiative and can reasonably expect the applicant to accept. If in doubt as to the applicant’s agreement, the ED should contact them, and the applicant’s agreement should be recorded. Note also that the ED’s lack of consultation with the applicant prior to amendments at the 71(3) stage is considered a quality issue, see the SQAP 2024 report included in the EPO 2024 quality report.
The applicant’s responsibility is consistent with the fact that the EPO has no responsibility, hence no liability, in respect of the content of a granted patent, even if a patent is revoked or held invalid as a result of its own action, e.g. if an amendment entered by the ED at the 71(3) stage violates Art 123(2).
The « underlying idea » emphasised by T 797/22 can justify the applicant’s disagreement with the deletion or disclaimer of embodiments no longer covered by the amended claims.
Hi Francis, you are right that the applicant is the master of the text Article 113(2) EPC. But the EPO can and must refuse the application if the text does not comply with the requirements of the EPC. Which rules may or may not include a prohibition on (severe) inconsistencies between the claims and the description.
ReplyDeleteThere is no question that a refusal may be justified when the inconsistency causes doubt as to the meaning of the claim. This is a clarity issue.
ReplyDeleteBut as to the specific requirement to adapt the description by deleting or disclaiming an embodiment no longer covered by the claim, T 697/22 Reason 14.3 pointedly states in respect of the decisions that find a legal basis for the requirement, called « the first line of case law » by the Board, that « there is no consensus in these decisions on one precise legal basis ». In other words, the proponents of the requirement have several times shifted the goalposts as to the basis to be relied upon. This in itself is a sign of weakness.