T 0953/22 - Correcting a drawing leads to an inescapable trap

Key points

• During the grant procedure, the applicant filed a replacement Figure 4 with the reply under Rule 161(1) to correct a mistake in it (link), in particular to show that the "length" was based on an overlay weld that extends on both sides of a girth weld, not on only one side.
• The opponent argues that "Figure 4 of the patent as granted was not clearly and unambiguously disclosed in the application as filed. Figure 4 of the application as filed disclosed what the length was [the length is specified in the claim to be within a certain range]. Changing this length in Figure 4 of the patent as granted resulted in added subject-matter under Article 100(c) EPC. There was no basis in the application as filed for changing the measurement of L2 to what was shown in Figure 4 of the patent as granted. In view of this figure, the skilled person would take a different interpretation from that of the application as filed."
• The Board agrees.
• The request for correction of the application as filed under Rule 139(3) is refused.
• Auxiliary request 1 is an amendment of the figure (I suppose back to the original figure).
• The Board: "In decision T 142/05, point 4 of the Reasons, the board held that amendments to the description and drawings could modify the content of the claims and possibly extend the scope of protection under Article 69(1) EPC 1973, even where the wording of the claims was clear and remained unamended."
• "the description and drawings are also taken into account for the purposes of Article 123(3) EPC if the claims are clear and unambiguous, so they are not only consulted to fill gaps."
• "In view of its amended Figure 4, the protection conferred by the patent as amended according to the appellant's 1**(st) auxiliary request has been extended compared to the protection conferred by the patent as granted, as can be seen from the above considerations on an arrangement with a total length of the overlay welds of 160 mm."
• " In the case in hand, neither feature 1C nor the other features of claim 1 as granted define how the length of the overlay welds is to be understood. It is only by using the description and the drawings, in particular Figure 4 as granted, or, in the case of the 1**(st) auxiliary request, Figure 4 as amended, that the extent of protection for the purposes of Article 123(3) EPC can be determined. Figure 4 as granted or amended is thus not used to read limiting features into claim 1 that are not present in this claim but to determine the extent of the protection conferred by the patent as granted or by the patent as amended, respectively."
• "the protection conferred by the patent as amended according to the appellant's 1**(st) auxiliary request extends beyond that of the patent as granted. "
• The patent is revoked. 
• As a comment, a concern of applicants could be that any amendment of the description, how minor it could seem when making the amendment, may lead to a similar situation. On the other hand, the amendment did not concern a formality but the technical meaning of the drawing.

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

https://www.epo.org/en/boards-of-appeal/decisions/t220953eu1

2. Patent as granted - Ground for opposition under Article 100(c) EPC

The appellant submits that the patent as granted "reduced" the subject-matter disclosed in the application as filed. Figure 4 of the patent as granted limited the subject-matter to one of the interpretations possible in the application as filed. Hence, nothing new had been added in Figure 4 of the patent as granted in comparison to Figure 4 as filed.

As set out above, the last paragraph on page 11 can be understood, when read in isolation, as defining that L2 is the length of a single overlay weld or the (total) length of the combined overlay welds. However, the former interpretation contradicts the depiction of L2 in Figure 4 as filed where L2 extends on both sides of the girth weld. Hence, in view of the application as filed as a whole, and in particular the reference to Figure 4 in the last paragraph on page 11, the only interpretation possible is that L2 is the total length of the overlay welds. In contrast to the appellant's view, Figure 4 of the patent as granted does not merely show that L2 is larger than L1. This figure also depicts L2 as extending on one side of the girth weld only. For the reasons set out above, such an interpretation does not have a basis in the application as filed. In view of Figure 4 of the patent as granted, the subject-matter of the patent thus extends beyond the content of the application as filed.

The ground for opposition under Article 100(c) EPC therefore prejudices the maintenance of the patent as granted.

3. The appellant's 1**(st) auxiliary request - Objection under Article 123(3) EPC

3.1 According to Article 123(3) EPC, the European patent may not be amended in such a way as to extend the protection it confers. For the purposes of Article 123(3) EPC, Article 69(1) EPC and the Protocol on the Interpretation of Article 69 EPC (the Protocol) are relevant (see Case law, II.E.2.3.1; see also decision T 2475/18, point 2.3 of the Reasons). Article 69(1) EPC provides that the extent of the protection conferred by a European patent or a European patent application is determined by the claims. Nevertheless, the description and drawings are used to interpret the claims.

The board notes that the wording of Article 123(3) EPC is not identical to the wording of Article 123(3) EPC 1973, which reads: "The claims of the European patent may not be amended during opposition proceedings in such a way as to extend the protection conferred." (emphasis added by the board). However, the case law on Article 123(3) EPC 1973 makes it clear that the extent of protection under Article 69 EPC 1973 and the Protocol is determined by the wording of the claims, taking into account the description and drawings, and that amendments to the description and drawings may therefore also extend the protection under Article 69(1) EPC 1973 (see e.g. G 2/88, OJ EPO 1990, 93, point 4 of the Reasons; G 1/93, OJ EPO 1994, 541, point 11 of the Reasons; T 1149/97, OJ EPO 2000, 259, point 6.1.10 of the Reasons and T 142/05). For this reason, the basic principles analysed in the case law on Article 123(3) EPC 1973 are applicable to Article 123(3) EPC as well. In decision T 142/05, point 4 of the Reasons, the board held that amendments to the description and drawings could modify the content of the claims and possibly extend the scope of protection under Article 69(1) EPC 1973, even where the wording of the claims was clear and remained unamended.

3.2 In the case in hand, claim 1 of the appellant's 1**(st) auxiliary request is identical to claim 1 as granted. Feature 1C of that claim defines that "the ends of each pipe joint terminate with overlay welds of a length in the range of Lmin = 100 mm and Lmax = 4DH". In view of the case law cited above, the description and drawings are used to determine both the extent of the protection conferred by the patent as granted and the extent of the protection conferred by the patent as amended according to the 1**(st) auxiliary request.

Paragraph [0039] of the description of the patent as granted discloses that the length of the overlay welds is shown as L2 in Figure 4. According to the appellant's 1**(st) auxiliary request, paragraph [0039] remains unamended. However, Figure 4 of the appellant's 1**(st) auxiliary request differs from Figure 4 of the patent as granted. In Figure 4 of the patent as granted, length L2 of the overlay welds is depicted as extending on only one side of the girth weld. In contrast, in Figure 4 of the appellant's 1**(st) auxiliary request, length L2 of the overlay welds is depicted as the total length of the overlay welds on both sides of the girth weld. The extent of the protection conferred by the patent as amended according to the appellant's 1**(st) auxiliary request thus differs from the extent of the protection conferred by the patent as granted.

Using Figure 4 of the patent as granted to determine the extent of protection, an arrangement with a total length of the overlay welds of 160 mm, i.e. 80 mm on either side of the girth weld, (see the respondent's sketch attached as Annex 2 to the minutes of the oral proceedings before the board) is not within the extent of the protection conferred by the patent as granted. However, the same arrangement lies within the extent of the protection conferred by the patent as amended according to the appellant's 1**(st) auxiliary request, which is determined using Figure 4 of the appellant's 1**(st) auxiliary request.

In decision G 2/88, the Enlarged Board of Appeal held: "In the case of a change in the technical features of the invention, if the technical features of the claimed invention after amendment are more narrowly defined, the extent of the protection conferred is less; and if such technical features are less narrowly defined as a result of amendment, the protection conferred is therefore extended." (point 4.1 of the Reasons).

In view of its amended Figure 4, the protection conferred by the patent as amended according to the appellant's 1**(st) auxiliary request has been extended compared to the protection conferred by the patent as granted, as can be seen from the above considerations on an arrangement with a total length of the overlay welds of 160 mm.

3.3 The appellant's counter-arguments are not convincing for the following reasons.

3.3.1 The appellant submits that the skilled person knew that Figure 4 of the 1st auxiliary request was wrong, so they would not use this figure to interpret the claims. However, as set out above in point 1., the skilled person would not immediately recognise Figure 4 of the appellant's 1**(st) auxiliary request (which is identical to Figure 4 as filed) as being incorrect. The question of whether a figure can be used to determine the extent of protection if the skilled person immediately recognises that figure to be incorrect can therefore be left open.

3.3.2 The appellant argues that a discrepancy between the claims and the description was not a valid reason to ignore the clear linguistic structure of a claim and to interpret it differently or to give a different meaning to a claim feature which in itself imparted a clear credible technical teaching to the skilled reader. It referred to decisions T 431/03, T 2221/10 and T 1473/19, point 3.16.1 of the Reasons.

In accordance with the basic principles of the case law cited above (see point 3.1), the description and drawings are also taken into account for the purposes of Article 123(3) EPC if the claims are clear and unambiguous, so they are not only consulted to fill gaps.

3.3.3 Neither decision T 431/03 nor decision T 2221/10 are concerned with Article 123(3) EPC or Article 69 EPC or how the extent of protection is to be determined. These decisions are therefore not relevant to the case in hand.

3.3.4 Decision T 1473/19, point 3.16.1 of the Reasons, reads: "Hence, although Article 69(1), second sentence, EPC requires that generally account be taken of the description and the drawings when interpreting a patent claim, the primacy of the claims under Article 69(1), first sentence, EPC limits the extent to which the meaning of a certain claim feature may be affected by the description and the drawings. The established case law of the Boards of Appeal that limiting features which are only present in the description but not in the claim cannot be read into a patent claim is thus fully compatible with relying on Article 69 EPC in conjunction with Article 1 of the Protocol as a legal basis for determining a patent claim's subject-matter."(emphasis added by the board).

The board does not consider the aforementioned statement in decision T 1473/19 to be fully applicable to the case in hand.

Firstly, in light of Article 1 of the Protocol and the case law of the Enlarged Board of Appeal, the board, while also recognising the primacy of the claims under Article 69(1) EPC, would not in the case in hand go so far as to say that the disclosure of the description and the figures could not be read into the patent claim. Under Article 1, first sentence, of the Protocol, "Article 69 EPC should not be interpreted as meaning that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims". Nor should Article 69 EPC "be taken to mean that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patent proprietor has contemplated" (Article 1, second sentence, of the Protocol). Article 69 EPC "is to be interpreted as defining a position between these extremes which combines a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties" (Article 1, third sentence, of the Protocol). The Enlarged Board of Appeal found that the "object of the Protocol is clearly to avoid too much emphasis on the literal wording of the claims when considered in isolation from the remainder of the text of the patent in which they appear; and also to avoid too much emphasis upon the general inventive concept disclosed in the text of the patent as compared to the relevant prior art, without sufficient regard also to the wording of the claims as a means of definition" (see G 2/88, point 4 of the Reasons). In its decision G 1/93, the Enlarged Board of Appeal confirmed the key role of the claims but also the necessity of using the description and drawings to determine the extent of protection when applying Article 123(3) EPC: "In principle, it does not matter whether the addition concerns the claims, the description or the drawings, since the protection conferred by the patent has to be determined by all these elements in accordance with Article 69 EPC and the Protocol on the interpretation of this provision. However, the claims are no doubt the most important element in this respect." (point 11 of the Reasons).

Secondly, the facts in case T 1473/19 are different from those in the case in hand since in the former the objection under Article 123(3) EPC was raised against a request with claims that were amended compared to the patent as granted, whereas in the latter the amendment is only to one of the figures of the patent as granted. In the case in hand, neither feature 1C nor the other features of claim 1 as granted define how the length of the overlay welds is to be understood. It is only by using the description and the drawings, in particular Figure 4 as granted, or, in the case of the 1**(st) auxiliary request, Figure 4 as amended, that the extent of protection for the purposes of Article 123(3) EPC can be determined. Figure 4 as granted or amended is thus not used to read limiting features into claim 1 that are not present in this claim but to determine the extent of the protection conferred by the patent as granted or by the patent as amended, respectively.

3.4 In view of the above, the protection conferred by the patent as amended according to the appellant's 1**(st) auxiliary request extends beyond that of the patent as granted. The patent as amended according to the appellant's 1**(st) auxiliary request therefore does not comply with Article 123(3) EPC.