T 1024/18 - Description must be amended to be consistent with amended claims

Key points

•  "One of the requirements of Article 84 EPC is that the "claims ... shall be ... supported by the description". According to long established case law of the Boards of Appeal, this has been interpreted as requiring the entirety of the description to be consistent with any claims found to meet the requirements of the EPC"" 
• "The Board concurs with the appellant's [opponent] contention presented at oral proceedings that the sole description on file was not consistent with the claims of auxiliary request 2. " The patentee did not attend the oral proceedings.
• "In the recent decision T 1989/18 [of Board 3.3.04] (see particularly Reasons 5) addressing a similar issue to the present case of support of the claims by the description, the Board in that case found that inconsistencies in the description could not affect clarity of the claims since, according to Article 84 EPC, these in themselves had to be clear."
• "According to the present Board, the criterion that the claims be "supported by the description" is not in any way subordinate to the requirement of "clarity" of the claims, but is a requirement of its own (as is conciseness of the claims)."
• "to provide only support for the claims in one single passage of the description while the rest of the description might give a different or even contradictory meaning to the claims, would in essence negate the general meaning of the words "support by the description" and in fact would allow it to be reduced to a de minimis requirement of e.g. repetition of the claim wording while allowing the entire remaining description to be left to explain an entirely different invention to the one claimed."
• "Hence, the Board finds that the requirement in Article 84 EPC of the claims to be supported by the description includes the requirement that the description is consistent with the claims not only in some part but throughout. "
• "Thus, when amendments are made to the claims (amendment to the granted claims in the present case), the description must be made consistent therewith in the sense that a reader is not presented with any information conflicting with the wording of the claims. Embodiments of the invention which are not consistent with the claims must therefore be deleted or must be clearly identifiable to the reader, for example by rewording of relevant passages to indicate that such passages are not, or are no longer, part of the invention. All of the latter adaptations are indeed common practice when making claim amendments."
• "Considering also Article 84 EPC in the wider context of the EPC, this understanding of the provision seems to be in line with the standard of claim interpretation for national proceedings enshrined in Article 69(1) EPC, according to which the description is also to be taken into account when interpreting the claims. Inconsistencies between the claims and the description could thus - in particular in national proceedings - be the source of diverging interpretations as regards the scope of the claims. Accordingly, misinterpretation could be avoided in particular if inconsistent information contained in the description or drawings is already removed in the proceedings before the EPO. The importance of Article 84 EPC for the interpretation of claims in national proceedings is also documented in the "travaux préparatoires" of the EPC 1973. It emerges from the preparatory documents that a provision corresponding to the current Article 84 EPC, which was originally part of the Implementing Rules, was re-located to the Convention due to its importance for national infringement proceedings (cf. BR/51/70, point 18). Thus, the support requirement of Article 84 EPC also serves the aim to ensure legal certainty for national post-grant proceedings (as do the requirements of clarity and conciseness)."
  
  
• The Board's reasoning makes sense to me.
• I suppose the ball is now in Board 3.3.04's court to make a referral to the Enlarged Board when a suitable case comes by.

EPO T 1024/18

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/t181024eu1.html

3. Auxiliary request 2

3.1 Article 84 EPC

3.1.1 One of the requirements of Article 84 EPC is that the "claims ... shall be ... supported by the description". According to long established case law of the Boards of Appeal, this has been interpreted as requiring the entirety of the description to be consistent with any claims found to meet the requirements of the EPC. In this context see, for example: T0977/94, Reasons 6.1; T 0300/04, Reasons 5; T 1808/06, Reasons 2, first paragraph.

3.1.2 That this is the established case law of the Boards can also be gleaned from the Rules of Procedure of the Boards of Appeal (RPBA 2020) where, with regard to Article 11 thereof, the explanatory remarks (see the second paragraph thereof) deal with the case where remittal to the department of first instance is still provided for the purpose of adaptation of the description.

3.1.3 In its preliminary opinion (see item 3.2), the Board indicated that the subject-matter of claim 1 of auxiliary request 2 appeared to involve an inventive step. The respondent subsequently stated that it would not attend the scheduled oral proceedings. In view of this, the Board indicated in its further communication of 25 November 2021 that a description adapted to the claims of auxiliary request 2 had not been filed and that the respondent may wish to consider the advisability of filing such a description. No adapted description was filed by the respondent in reply to that communication.

3.1.4 In view of the facts of the present case, not least that the respondent was explicitly given the opportunity to file an adapted description, the Board, having regard to the principle of procedural economy, did not find it appropriate to remit the case to the opposition division for the purpose of adaptation of the description (Article 111 EPC).

3.1.5 The Board concurs with the appellant's contention presented at oral proceedings that the sole description on file was not consistent with the claims of auxiliary request 2. As indicated by the appellant, claim 1 of auxiliary request 2 defined a non-woven web atop which a first continuous core was formed and a further non-woven web atop which a second continuous core was formed. In contrast to this, the first embodiment of the invention disclosed in paragraphs [0047] to [0051] of the description did not form the first or second continuous core atop a respective non-woven web, rather formed these on a 'screen' (see col. 9, line 37). Consequently at least this portion of the description is inconsistent with the claims of auxiliary request 2 i.e. the claims are not supported by the description as required by Article 84 EPC.

3.1.6 In the recent decision T 1989/18 (see particularly Reasons 5) addressing a similar issue to the present case of support of the claims by the description, the Board in that case found that inconsistencies in the description could not affect clarity of the claims since, according to Article 84 EPC, these in themselves had to be clear.

3.1.7 The present Board concurs that according to Article 84 EPC, claims must be clear in themselves. However, it is important to note that Article 84 EPC is not entitled "clarity of the claims", on which the Board in case T 1989/18 however put its emphasis, but simply "claims". Thus the provision relates to claims in general and actually covers three distinct requirements on claims, namely their clarity, their conciseness and their support by the description. According to the present Board, the criterion that the claims be "supported by the description" is not in any way subordinate to the requirement of "clarity" of the claims, but is a requirement of its own (as is conciseness of the claims).

3.1.8 Merely providing a part of the description which gives support to the claims appears to be at odds with the wording "supported by the description". Only providing such a part would be rather more akin to the claims having some form of basis in the description or being supported by "part" of the description, whereas the wording of Article 84 EPC requires support by "the description". To put this into context, to provide only support for the claims in one single passage of the description while the rest of the description might give a different or even contradictory meaning to the claims, would in essence negate the general meaning of the words "support by the description" and in fact would allow it to be reduced to a de minimis requirement of e.g. repetition of the claim wording while allowing the entire remaining description to be left to explain an entirely different invention to the one claimed.

3.1.9 Hence, the Board finds that the requirement in Article 84 EPC of the claims to be supported by the description includes the requirement that the description is consistent with the claims not only in some part but throughout. Considering also Article 84 EPC in the wider context of the EPC, this understanding of the provision seems to be in line with the standard of claim interpretation for national proceedings enshrined in Article 69(1) EPC, according to which the description is also to be taken into account when interpreting the claims. Inconsistencies between the claims and the description could thus - in particular in national proceedings - be the source of diverging interpretations as regards the scope of the claims. Accordingly, misinterpretation could be avoided in particular if inconsistent information contained in the description or drawings is already removed in the proceedings before the EPO. The importance of Article 84 EPC for the interpretation of claims in national proceedings is also documented in the "travaux préparatoires" of the EPC 1973. It emerges from the preparatory documents that a provision corresponding to the current Article 84 EPC, which was originally part of the Implementing Rules, was re-located to the Convention due to its importance for national infringement proceedings (cf. BR/51/70, point 18). Thus, the support requirement of Article 84 EPC also serves the aim to ensure legal certainty for national post-grant proceedings (as do the requirements of clarity and conciseness).

3.1.10 Thus, when amendments are made to the claims (amendment to the granted claims in the present case), the description must be made consistent therewith in the sense that a reader is not presented with any information conflicting with the wording of the claims. Embodiments of the invention which are not consistent with the claims must therefore be deleted or must be clearly identifiable to the reader, for example by rewording of relevant passages to indicate that such passages are not, or are no longer, part of the invention. All of the latter adaptations are indeed common practice when making claim amendments.

3.1.11 When such issues can be addressed it therefore makes sense, even if only from a practical point of view, that such issues be addressed. Indeed, G 10/91 (see Reasons 19) requires that any amendments to a patent are compatible with the requirements of the EPC and does not simply look at the claims being allowable.

3.1.12 The Board thus finds that, at least due to the identified inconsistency between the claims and the description, the claims are not supported by the description. Consequently the requirement of Article 84 EPC that the claims be supported by the description is not met. Auxiliary request 2 is therefore not allowable.