T 2766/17 - Statements in the description contradicting the plain claim wording

Key points

• "It is established case law that if the patentee amends its claims, it has to bring the description into line with them (see decision T 977/94 [] ).
• "The Board is aware of decision T 1989/18, in which the competent Board considered that the provisions of the EPC did not require the adaptation of the description to the subject-matter as claimed (points 4 to 13 of the Reasons)."
• "The current Board [agrees] that for the purposes of Article 84 EPC, the claims must be clear in themselves. However, if the description cannot be relied upon to resolve a clarity issue in a claim, this does not imply that, a contrario, clarity of the claim cannot be affected if the description contains statements contradicting the plain wording of the claim.
• "A patent specification is a unitary document disclosing and explaining an invention to the person skilled in the art. Article 84 EPC and Rule 42(1)(c) EPC expressly link the claims and the description for the purpose of disclosing the invention. Hence, the patent specification has to be considered as a whole for understanding the claimed invention as a solution to a technical problem."
• "In some cases, the drafter may choose to give a term a special meaning so that the patent specification becomes its own dictionary [internal citation omitted]. Hence, statements in the description contradicting the plain claim wording may cast doubts as to the intended meaning of this wording. It is the Board's view that under such circumstances, an objection under Article 84 EPC has to be raised.
• The Board in the headnote: "Statements in the description contradicting the plain claim wording may cast doubts as to the intended meaning of this wording. Under such circumstances an objection under Article 84 EPC has to be raised."
• Turning to the amended pages of the description at hand: "The amendments bring the description into conformity with the amended claims by making clear the non-optional character of the feature that the cast edible film is self-supporting. This is in compliance with Article 84 EPC."

EPO T 2766/17

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/t172766eu1.html

6. Auxiliary request 7b contains amended pages of the description to bring the description into conformity with the amended claims.

It is established case law that if the patentee amends its claims, it has to bring the description into line with them (see decision T 977/94, point 6 of the Reasons and other decisions cited in Case Law of the Boards of Appeal of the European Patent Office, ninth edition, July 2019, II.A.5.3).

The Board is aware of decision T 1989/18, in which the competent Board considered that the provisions of the EPC did not require the adaptation of the description to the subject-matter as claimed (points 4 to 13 of the Reasons). However, in other recent decisions (T 1024/18 point 3.1 of the Reasons and T 121/20, point 10.2 of the Reasons), the competent Boards reached a different conclusion.

The current Board concurs with decision T 1989/18 and, as a rule, with the cited conclusion drawn in T 454/89 (point 4.1 (vii) of the Reasons), that for the purposes of Article 84 EPC, the claims must be clear in themselves. However, if the description cannot be relied upon to resolve a clarity issue in a claim, this does not imply that, a contrario, clarity of the claim cannot be affected if the description contains statements contradicting the plain wording of the claim.

A patent specification is a unitary document disclosing and explaining an invention to the person skilled in the art. Article 84 EPC and Rule 42(1)(c) EPC expressly link the claims and the description for the purpose of disclosing the invention. Hence, the patent specification has to be considered as a whole for understanding the claimed invention as a solution to a technical problem.

In some cases, the drafter may choose to give a term a special meaning so that the patent specification becomes its own dictionary (see T 523/00, point 2 of the Reasons and other decisions cited in Case Law of the Boards of Appeal of the European Patent Office, ninth edition, July 2019, II.A.6.3.3, fourth paragraph).

Hence, statements in the description contradicting the plain claim wording may cast doubts as to the intended meaning of this wording. It is the Board's view that under such circumstances, an objection under Article 84 EPC has to be raised.