T 0257/24 - Amended description, support under Art. 84

Key points

• A case with description amendments, Art. 123(2) and the support requirement of Art. 84. 
• This is an appeal against a decision to refuse a patent application.
• "The main request was filed with a letter dated 11 August 2021. It includes an added figure 4 which is based figure 3 as originally filed, but in which the parallel inductor/capacitor (LC) resonant circuit is modified to a series LC resonant circuit. The main request further includes amended pages 12 to 14 of the description in which, additionally, new figure 4 is described in a manner identical to originally filed figure 3, albeit replacing parallel LC resonant circuit with series LC resonant circuit."
• "The Board is not persuaded by the appellant's argument that page 13, lines 6 to 11 of the application as filed directly and unambiguously discloses, as an alternative to the embodiment of figure 3, a complete embodiment in which the resonant circuit comprises a capacitor and an inductor connected in series."
• "The Board also does not agree with the appellant that the original application contains an evident error in figure 3 and page 10 whose correction necessarily yields a resonant circuit comprising a capacitor and an inductor connected in series. "
• "It follows that the new figure 4 and description passages of the main request and of auxiliary requests 3, 6, 9, 13 and 14, as well as the claims of auxiliary request 12, insofar as they introduce a concrete series-LC embodiment, add subject-matter extending beyond the content of the application as filed.  
• "Auxiliary request 15 corresponds to the application documents as published. The objections under Article 123(2) EPC directed to added figure 4 and the amended description are therefore irrelevant for that request. However, the objections under Article 84 EPC [see below] remain valid. The published claims still define the grounding merely as comprising a "resonant circuit ... resonating at the first undesired frequency", without specifying the technical features necessary to delimit the claimed solution in a manner supported by the description. Since the description as published discloses only the specific parallel-LC embodiment, auxiliary request 15 likewise lacks support in the description and omits essential features. "
• Regarding Art. 84: "The Board agrees with the examining division that, in the context of the claimed invention, the broad term "resonant circuit" is not supported by the description and that essential technical features are missing from the independent claims, contrary to Article 84 EPC. The application as filed describes only one detailed embodiment of the resonant circuit, namely a circuit with a capacitor and an inductor arranged in parallel. No further concrete example of a resonant circuit at the claimed grounding location is disclosed. The claims, however, are not restricted accordingly and cover an unjustifiably broad range of possible resonant circuits. It is therefore not clear from the claim wording which specific circuit realisation is meant to solve the identified technical problem."
• "Nor can an unduly broad claim be rendered compliant with Article 84 EPC merely if the skilled person disregarded certain embodiments as unsuitable. The requirement of support by the description is not met where the claims extend far beyond what the description teaches as a concrete realisation of the invention."

EPO 

The link to the decision is provided after the jump.

T 0821/24 - Essential features and permitted generalisation

Key points

• The patent application was refused. The applicant appeals. The question is whether claim 1 is clear or lacks essential features.
• The Board: "The Board acknowledges that generalisation in claim drafting is permissible. However, even in a generalised form, an independent claim must still include all features essential to solving the (subjective) technical problem addressed by the application and to achieving the technical effect relied upon, across the whole breadth of the claim. If the claim, by virtue of its general wording, encompasses embodiments that do not achieve that effect or solve the problem, its scope is not clear. In line with established case law of the Boards of Appeal, the claim does not meet the requirements of Article 84 EPC "
• I'm not entirely sure in what sense the term 'technical effect' is used here.
• "The overarching principle is that the applicant is entitled to protection only for the invention disclosed. "The invention", however, is necessarily linked to the solution of a technical problem with reference to the pertinent background art as addressed in or at least understandable from the application, as required by Rule 42(1)(c) EPC. Accordingly, claim generalisation cannot extend to embodiments that do not solve that problem or achieve the stated technical effect, since such embodiments do not belong to "the invention" and thus cannot be the subject-matter of a claim. This basic principle sets the permissible limits for generalisation."
• "The Board notes that a claim must also be clear in itself. If the skilled person must rely on the description merely to work out, within a broadly generalised claim, which features actually achieve the technical problem with which the application is concerned, this indicates a lack of clarity under Article 84 EPC."

EPO 

The link to the decision is provided after the jump.

T 1260/23 - Clarity and preferred features

Key points

• Claim 5 as granted: "5. The method of claim 4, wherein the soil and/or moisture resistant formulation is an aqueous polymer dispersion comprising dispersed particles having average particle sizes ranging from about 50 to about 150 nanometers, preferably wherein the aqueous polymer dispersion comprises from about 10 to about 40 % by dry weight of resin particles or solids selected from the group of polyurethane resins, polyether-urethane resins, urethane-acrylic resins, and mixtures thereof." 
• Claim 4 as granted " The method of claim 1, wherein the soil and/or moisture resistant formulation is an aqueous formulation containing one or more thermoplastic resins selected from the group of resins having an ester bond, polyurethane resins, functionalized polyurethane resins, and copolymers and mixtures thereof."
• Is the preferred feature of claim 5 open to the examination of clarity in opposition?
• The OD considered claim 1, amended with the mandatory and the preferred feature of claim 5 (and the feature of claim 4), to be unclear.  " The objection was based on an alleged ambiguity arising from the definition of two lists of polymers in claim 1, with the first including a broad reference to "resins having an ester bond" [i.e., former claim 4], and the second focusing on more specific chemical groups [i.e., the preferred list of claim 5]. According to the decision, it was unclear whether the second list was intended to limit the scope of all the groups in the first list, or simply to propose specific forms for some of them"
• The Board:  "the introduction of certain features by means of the term "preferably" merely indicates that they are optional, thereby rendering the defined subject-matter equivalent to that of an additional dependent claim. As argued by the proprietor, this corresponds to the case described in Reasons 3(a) of G 3/14 (the so-called "Type A(i)" cases), and is therefore not open to clarity objections during opposition or opposition-appeal proceedings."
• It is nice that the Board treats preferred features as "equivalent to that of an additional dependent claim" for the purposes of G 3/14 because you don't have to pay claim fees for preferred features.

EPO 

The link to the decision is provided after the jump.

T 0933/23 - The boundary between functional features and results-to-be-achieved

Key points

• The Examining Division rejected the claims under Art. 84.
• The Board: "The feature of "allowing a radial displacement" in the characterising portion of claim 1 is defined in terms of a function which is close to the technical effects the application seeks to provide. The current case thus concerns the boundary between allowable functional features (dealt with in the Guidelines, F-IV, 6.5, []) and an unallowable definition of the invention in terms of a result-to-be-achieved, amounting in essence to the problem underlying the application (Guidelines, F-IV, 4.10, []), in which case essential features defining the invention are missing (Guidelines, F-IV, 4.5 [])."
• "The Board appreciates the examining division's scrutiny and diligence in this regard (see G 1/24, Reasons 20)."
• In the case at hand, claim 1 of the new main request meets the requirements of Article 84 EPC for the reasons set out in the following.
• "The Board firstly notes that the characterising feature does not relate solely to effects or results to be achieved, but specifies the structural feature of the connection, namely that "the valve element is fixed to the lead nut in axial direction" by a technical means, namely a "spring element". For this reason alone, the subject-matter of the invention in the characterising portion is not solely defined in terms of the problem to be solved."
• "The Board agrees with the examining division that the problems in the prior art (wear due to radial displacement; high costs for precise alignment) are associated with a rigid connection between the drive (train) and the valve element for axial movement of the valve element. The proposed solution resides in the provision of a more flexible connection that transmits axial movement while allowing some radial play (radial displacement). The technical effects of this solution include relaxed positioning demands at manufacture without increasing wear, and the problem could thus be considered to reside in the provision of these effects."
• " the functional feature of the connection "allowing a radial displacement" is directed to an element of the solution (flexible connection), not to the technical effects or the problem underlying the solution, and is thus not defined in terms of an unallowable "result-to-be-achieved"."
  
  
• "It is generally accepted that the definition of a feature in terms of its function is acceptable, if a skilled person understands, without exceeding their normal skills and knowledge and without undue burden but if necessary with reasonable experiments, how to reduce it to practice and if it can be determined without ambiguity whether the claimed functional requirement is satisfied by a given prior art"
• (follows a technical analysis)
• "Hence, the skilled person knows how to put the functional feature into practice. Moreover, the Board has no doubt that it can also be determined without ambiguity whether a given construction fulfils the claimed function. It is thus not decisive whether the functional expression can or could have been formulated differently, e.g. in structural terms."
• "Essential features are those features which are constitutive for the definition of the invention, that is, all features which are necessary for solving the technical problem with which the application and the claim is concerned. In this regard, Article 84 EPC not only requires that the claimed subject-matter is comprehensible, but also that it contains a clear definition of the object of the invention by defining all essential features thereof"
• In the Board's view, the features in the characterising portion are sufficient for defining the invention and for solving the stated problem discussed in point 3.2.3.
• Point 3.2.3, in part: "In the Board's view, the problem of "ensuring a long lifetime with low production costs", as stated in the application (page 1, lines 25 to 26) and submitted by the appellant, is too broad. The Board agrees with the examining division that the problems in the prior art (wear due to radial displacement; high costs for precise alignment) are associated with a rigid connection between the drive (train) and the valve element for axial movement of the valve element."
• The Board does not simply say that it is the applicant who decides what features are "essential". 
• 
  

EPO 

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

T 0697/22 - G 1/25 referral - Adaption of the description

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.

G 1/24 - Annotated

Key points

• Decision G 1/24 was refreshingly short and analysed in many other social posts and blog posts already. I will add my comments to the text below. 
• The EBA held that: "The description and drawings shall always be consulted to interpret the claims when assessing the patentability of an invention under Articles 52 to 57 EPC".
• The EBA did not specify in any way how the information derived from the description must be used when deciding on the scope of the claims. As of yet, the established caselaw seem unaltered that "when taking into account the description of the patent (see e.g. the headnote of G 1/24) - which is not necessarily, and indeed may rarely be, limiting for the claimed subject-matter due to the primacy of the claims which may be broader than particular limited examples and explanations given in the description" (T 161/24).
• Indeed, the EBA derived as the first principle for claim interpretation that "The claims are the starting point and the basis for assessing the patentability of an invention under Articles 52 to 57 EPC." (and could have very well included this in the headnote as well).

EPO 

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

T 0602/24 - Who decides what features are essential?

Key points

• The Board, in translation: "The objection of lack of "essential features" raised by the Examining Division with reference to Article 84 EPC can only be understood to mean that claim 1 of the main request lacks "essential features" within the meaning of the case law"
• "An analysis of the decisions cited in these parts of the CLBA shows that the term "essential features" is not accorded a uniform meaning in case law. This is due not only to the application of different legal bases for such a requirement (clarity of the claim or support by the description), but also to the criteria against which the absence of "essential characteristics" must be assessed"
• " The Examining Division's rejection of the independent claim for lack of essential features with reference to Article 84 EPC is not based on a lack of formal support for claim 1 in the description, but rather evidently on an insufficient disclosure of its subject-matter within the meaning of Article 83 EPC. "
• "Such an objection based on Article 84 EPC is, in the Board’s view, untenable in the light of the purpose of Rule 43 EPC and recent case law, as will be shown below."
• " since, under Article 84 EPC, the claims define the matter for which protection is sought ("l'objet de la demande pour lequel la protection est recherchée"), i.e. the subject-matter formulated by the applicant for which a European patent is sought, the essential features of the invention must, according to Rule 43(3) EPC, be those which the applicant considers to be essential for the patent protection sought and not those which the examining division considers sufficient to satisfy substantive requirements."
• " The possibility of rejecting claims which cannot withstand substantive scrutiny because they are unreasonably broad, for the same reasons under Article 84 EPC, is also not in line with the "travaux préparatoires" of the EPC 1973 and the EPC 2000, as is clear from decisions T 1020/03 and G 3/14" (follows an analysis)
• " In view of the meaning to be given to the expression "essential features" in Rule 43(3) EPC, namely the features which the applicant considers to be essential for obtaining patent protection, and the indication in recent case law relating to the "travaux préparatoires" to the EPC 1973 and the EPC 2000 that the breadth of the claim does not provide a basis for an objection under Article 84 EPC on substantive grounds, the Board concludes that the Examining Division's rejection of the main request on the ground, with reference to Article 84 EPC, that its claim 1 does not contain all the essential features relating to the achievement of a glass transition temperature (Tg) of more than 60°C for the crosslinked composition is not convincing."
• A very welcome decision. Art 84, second sentence, is no bypass to the proper examination of novelty, inventive step, and sufficiency. 
• 
  
• The Board does not remit the case but examines Art. 83 and novelty.
• Claim 1 is directed to a manufacturing process and specifies inter alia that the product   has a glass transition temperature Tg above 60 °C.
• The Board reviews the facts of the case and concludes: "Under these circumstances, the Board is convinced that the skilled person is able, with a few experiments, to adjust the Tg of the cross-linked polymer to a value above 60°C."
  
• "The Examining Division's rejection of the main request is based on the absence of features in claim 1 that enable a crosslinked composition with a Tg above 60°C to be obtained. The fact that not all features defined to satisfy this requirement are present in claim 1 is not sufficient to conclude that the claimed subject-matter is insufficiently disclosed. Rather, it must be examined, taking into account the principle set out in point 4 above, whether the application contains a technical teaching that enables the skilled person to satisfy this functional feature without undue burden."
• Indeed, the nature of the claims is not that of a tutorial.
• Is it all good news for the applicant? No: the Board sets up the novelty/sufficiency squeeze.
• "In view of (...) the teaching of the application according to which the Tg can be influenced via the choice of polyol or polyisocyanate components or the crosslinking density (see point 4.2 above [i.e., the reasoning on sufficiency]), the Board considers it credible that the composition described in Example 3 of D6, which concerns a similar composition with a 2,2'-MDI component and a triol with a molecular weight of 260, necessarily leads to a Tg of the crosslinked composition which is in the claimed range above 60°C."
• " Therefore, in the absence of evidence to the contrary, features (8) and (9) do not constitute a distinguishing feature vis-à-vis D6. Should the applicant provide valid reasons or evidence to the contrary that features (8) and (9) constitute distinguishing features of the claimed process vis-à-vis Example 3 in D6, this would constitute a change of fact, so that the Examining Division would no longer be bound by the board's assessment as to the fulfilment of the two features for the analysis of inventive step, but also as to the feasibility of the present invention with regard to achieving features (8) and (9)."
• Not the subtle difference between res judicata and the binding effect of the ratio decidendi here. 

EPO 

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

T 2279/22 - Misapplied case law developed in the field of chemistry

Key points

• The OD found the patent to be insufficiently disclosed: "The opposition division's view was essentially motivated by its observation that the ambit of the combined claims 1 and 4 covered an embodiment that was nowhere described in the patent. The embodiment in question related to a security booklet where the "another page" and the "further part" formed separate elements (cf. point 2.4.7 of the decision under appeal). The board acknowledges that such an embodiment would indeed be difficult, if not impossible, to realise. Nevertheless, it is the board's view that the assessment whether the patent provides the skilled person with sufficient information to carry out an invention is a purely technical question that is separate from that of what reasonably falls within the ambit of claim wording (T 2773/18, Reasons 3.2)."
• "When assessing sufficiency of disclosure, the skilled person may rely on common general knowledge to supplement the information contained in the patent. In the present case, the above analysis of the embodiment of Figure 4 is proof that a potentially unworkable embodiment does not necessarily impair the skilled person to carry out the invention."
• "In the board's view, by citing a passage from section II.C.5.4 of the book "Case Law of the Boards of Appeal of the European Patent Office" (in its edition of July 2019), the opposition division misapplied case law developed in the field of chemistry for inventions that typically concern a composition having a compound or a parameter associated with a certain range of values (T 2773/18, Reasons 3.2; T 500/20, Reasons 3.6; T 447/22, Reasons 44).
• " Incidentally, the board notes that this passage has its origin in Reasons 3.5 of decision T 409/91 where it is immediately followed by the cautionary statement "However, the question whether the disclosure of one way of performing the invention is sufficient to enable a person skilled in the art to carry out the invention in the whole claimed range is a question of fact that must be answered on the basis of the available evidence, and on the balance of probabilities in each individual case".
• " Apart from being situated in the field of mechanics, the facts of the present case are certainly very different from those of T 409/91. Instead, the present board concurs with T 500/20 [blog post] that, in the field of mechanics, if claimed inventions do not involve ranges or compositions, basing an argument of insufficiency on the "in the whole claimed range"-approach is often inappropriate and can be rejected offhand. In such a case it normally suffices to provide a single detailed example or embodiment to illustrate how the invention can be put into practice, in such a way that the underlying principles can be understood by the relevant skilled person and they can reproduce the claimed invention using their common general knowledge without undue burden (T 500/20, Reasons 3.6)."
• As a comment, the Enlarged Board considered non-working embodiments in G 1/03, r.2.5 (for all technical fields) and said that " If a claim comprises non-working embodiments, this may have different consequences, depending on the circumstances.

  Either there is a large number of conceivable alternatives and the specification contains sufficient information on the relevant criteria for finding appropriate alternatives over the claimed range with reasonable effort. If this is the case, the inclusion of non-working embodiments is of no harm. ... If this is not the case and there is lack of reproducibility of the claimed invention, this may become relevant under the requirements of inventive step or sufficiency of disclosure. If an effect is expressed in a claim, there is lack of sufficient disclosure. Otherwise, ie if the effect is not expressed in a claim but is part of the problem to be solved, there is a problem of inventive step ".

• " The opponent argued that, even when applying the principles established by the case law in the field of mechanics, its conclusion of lack of sufficient disclosure would not change considering that none of the embodiments of the contested patent disclosed all features of the combined subject-matter of claims 1 and 4. 
• "The board disagrees. As set out above, the embodiment of Figure 4 of the patent illustrates how the security booklet of claims 1 and 4 of the main request can be put into practice. The fact that certain terms ("another page", "further part") are not used in a consistent manner in the claims may be a matter of clarity. Similarly, a contradiction between the claims and the embodiments of the description or the drawings of the patent based on a specific reading of the claims would typically result in a lack of support by the description. Such objections need to be considered under Article 84 EPC, which in view of decision G 3/14 is not open for objection in opposition proceedings if, as in the present case, the contested claims are identical to claims of the patent as granted. This is not to say that a lack of clarity or support cannot result in an insufficient disclosure of the invention. However, in such a case it is necessary to show that the lack of clarity (or the lack of support by the description) affects the patent as a whole and that it is such that the skilled person - who can avail themselves of the description and common general knowledge - is hindered from carrying out the invention (T 2290/12, Reasons 3.1). This is not the case here."

EPO 

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

T 1170/20 - Reach through claim and functional definitions

Key points

• Claim 1 is directed to, in translation: "Medium and/or high voltage gas-insulated electrical equipment comprising .... a gas-tight sealed envelope whose interior volume is filled with an electrically insulating gas comprising at least one fluorinated compound whose global warming potential is less than 3500"
• The Board rejects the claim as a reach-through claim. 
• In translation: "The appellant [opponent] argues that the characteristic "an electrically insulating gas containing at least one fluorinated compound with a global warming potential (GWP) of less than 3500" gives the claim a so-called “reach through” character, namely that the claim relates to a chemical compound defined only in functional terms. The Board agrees with the [opponent]."
• "The claim requires an insulating gas in a medium or high voltage gas-insulated electrical apparatus. The skilled person must find among the broad class of fluorinated compounds those having both a GWP of less than 3500 and a suitability for producing an insulating gas in a medium or high voltage apparatus. The argument that any fluorinated compound would be suitable for electrical insulation of a medium or high voltage apparatus does not convince the Board. The applicant rightly argues that significant efforts are being made to replace SF6 as an insulating gas. It is in fact difficult to find other promising solutions"
• The patent mentions classes of gases. "For these classes, a few individual compounds are disclosed as examples [in the patent]. The Board is satisfied that there are fluoroketones suitable for electrical insulation of electrical apparatus as claimed (see documents A3 and A4). However, the rest of these examples are presented without any proof of their suitability. Some of these examples are clearly erroneous, such as "HFO 1336 mzzzM" or "C7F18O", as the respondent itself argues.
• The Board is of the opinion that it is not sufficient to present a few broad classes of fluorinated compounds and a few individual specific examples with a desired GWP without proof that in essence all members of the classes of compounds satisfy all the criteria for suitability as insulating gases for medium or even high voltage switchgear. "

• "the respondent argued that the invention was not aimed at finding all suitable compounds as low GWP insulating gas. On the contrary, an apparatus using such insulating gas was the background against which the invention was made. The current invention aimed at avoiding heat losses by managing the condensate, ensuring that a sufficient amount of insulating gas is in the gas phase." 

• "The Board cannot accept this argument. The requirement of sufficiency of disclosure concerns the invention in its entirety, and not only that part which the applicant or proprietor considers to be the inventive contribution. If any part of the invention defined in the claims cannot be carried out, then that invention may be the subject of an objection for insufficiency of disclosure. Otherwise, speculative patents may have to be granted because their subject-matter relates in part to construction details which can be carried out even though that subject-matter would not be possible in its entirety."

• "contrary to the respondent's claim, the technical field to which a claim relates is irrelevant when it is characterized as being of the "reach-through" type. The essential idea of ​​not allowing claims of this type is explained in the cited section of the Guidelines as follows:  [F-III,9] [Quote from the English Guidelines added, PJL] "A functional definition of a chemical compound ("reach-through" claim) covers all compounds possessing the activity or effect specified in the claim. It would be an undue burden to isolate and characterise all potential compounds (e.g. agonists/antagonists), without any effective pointer to their identity (see F‑III, 1), or to test every known compound and every conceivable future compound for this activity to see if it falls within the scope of the claim. In effect, the applicant is attempting to patent what has not yet been invented, and the fact that the applicant can test for the effect used to define the compounds does not necessarily confer sufficiency on the claim; in fact it constitutes an invitation for the skilled person to perform a research programme (see T 435/91 (Reasons 2.2.1), followed by T 1063/06 (Headnote II)). "

• "This explanation is extended to the present case. The claim covers all compounds having a GWP of less than 3500 and having the function of an insulating gas for medium and/or high voltages. The patent does not contain any clear indication as to their identity, beyond an indication that these compounds contain fluorine. The board pointed out above that the difficulty lies in finding suitable compounds. The respondent simply states and without providing any evidence that a person skilled in the art could find the suitable compounds using only his ordinary skills and given a suitable compound, the GWP could be determined. However, this is exactly the case described in the Guidelines, namely that in reality the respondent is trying to patent what has not yet been invented, and the fact that the effects used to define compounds can be tested does not mean that the claim sufficiently discloses the invention. The claim is in fact an invitation to carry out a search program."

• 
  

EPO 

The link to the decision and an extract of it can be found after the jump.

T 1311/22 - Result to be achieved (vacuum cleaner quality factor)

Key points

•  Claim 1 of the patent as granted is directed to a vacuum cleaner and specifies, in translation, "a vacuum cleaner with an average power consumption of less than 1200 W and a filter bag with a separation efficiency of the filter bag material greater than 60%, the device for vacuuming having a quality factor for an unfilled filter bag Q(w)un defined by ... which is greater than 25"
• The Board, on sufficiency, in translation: "Claim 1 defines the device by functional characteristics, namely in relation to a result to be achieved, which in turn is expressed by values ​​of the newly defined parameter "quality factor""
• " The peculiarity of the functional definition of a technical feature is that it is defined by its effect. Such a definition refers quite abstractly to an indefinite number of possible alternatives and is permissible as long as all alternatives are available to the person skilled in the art and deliver the desired result; Therefore, it must be checked whether the patent discloses a generalizable technical teaching that makes the entire spectrum of variants that fall under the functional definition accessible to the person skilled in the art."
• " Claim 1 itself only contains minimum values ​​for the two quality factors, but no information as to which structural features of the vacuum cleaner and/or filter bag must be set and adjusted so that these minimum values ​​can be achieved in contrast to the comparative examples. In other words, the scope of protection of the granted claim 1 includes all vacuum-cleaning devices with filter bags and the claimed parameters, completely regardless of the way in which a vacuum loss is reduced in such a way that correspondingly high quality factors are achieved (the only thing excluded is their achievement via a low degree of separation, see above). As explained below, the person skilled in the art cannot deduce from the description how this can basically be accomplished without unreasonable effort, possibly based on a specific exemplary embodiment."
• "These very specific exemplary embodiments also do not give the person skilled in the art any clues as to which of the numerous features and measures - whether all or only certain of them - are crucial for achieving the claimed quality factors, so that he can also determine the subject matter of the claim through a targeted selection of other suitable pairings of filter bags and vacuum cleaner devices "
• "The scope of protection of claim 1 therefore includes any device of the generic type in terms of power consumption, negative pressure in the floor nozzle and degree of separation with an at least slightly better quality factor/efficiency than devices from the prior art, including those with as yet unknown, future components such as new filter bag materials. In contrast, only very specific exemplary embodiments are disclosed, which enable a rather limited improvement in the quality factors to values ​​of up to just over 30% or 25%."
• "the patent does not disclose the invention so clearly and completely that a person skilled in the art can carry it out, Article 100(b) EPC."
• As a comment, T0595/90 permitted a claim to a steel sheet having an "iron loss of less than 0.90 W/kg" (i.e. down to 0.00 W/kg), low iron loss values being the desired feature (but not an unusual parameter as such).  Whether the cases can be distinguished from each other or whether the case law is developing remains to be seen. 

EPO 

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

T 0223/23 - Product claims based on inventive preparation method

Key points

• Application filed in 2021, appeal decision on the grant on 08.01.2024. Things could be improving.
• "Claim 1 of the main request related to:

  "A trace element solution, which comprises at least the following metals: (a) zinc in a concentration of at least 60mg/ml; (b) manganese in a concentration of at least 10mg/ml; (c) selenium in a concentration of at least 5mg/ml; and (d) copper in a concentration of at least 15mg/ml; and which comprises a concentration of the metals of at least 90 mg/ml."

• "The application relates to a solution containing trace elements useful for administration to mineral deficient animals such as livestock. It seeks to address the problem of low concentrations of the minerals in injectable solutions, leading to the injection of large quantities, which causes tissue damage and abscesses at the site of injection. The invention aims at providing solutions with suitable composition with high enough concentrations and sufficient ratios and sufficient concentrations of the various metals"

• The application discloses a rather specific method of making the solution, by adding various salts in a particular order to water, and also adding EDTA in a specific step.

• The closest prior art D1 (see example 6) shows a trace element solution

• The desirability of a higher metal concentration and the ensuing advantages upon injection are known from D1 (see page 1) and are as such obvious. However, it is apparent that, at the date of filing of the application, there was no obvious way to produce a solution as claimed with a metal concentration of at least 90 mg/ml.

• As a quick test, what is the decision you need in such a case?

• "the increased concentration of trace elements in solution is obtained [in the application] in particular by a specific order of adding EDTA. The prior art does not allow the skilled person to anticipate that this particular order of addition would lead to the claimed higher concentrations, nor does it appear to suggest any obvious way leading to such high concentrations."

• "According to established case law, a product which can be envisaged as such with all characteristics determining its identity including its properties in use, i.e. an otherwise obvious entity, might nevertheless become non-obvious and claimable as such, if there is no known way or applicable (analogous) method in the art for making it and the claimed methods for its preparation are therefore the first to achieve this and do so in an inventive manner "

• See T 0595/90 Kawasaki Steel



• These criteria are met.
• "The examining division however found that the criteria of Article 84 EPC were not met"
• "The examining division argued that it was the process of manufacturing, and in particular the specific order of adding EDTA, that provided the trace element in solution.

  As a preliminary remark, claim 1 relates to a product per se. Additionally defining this product in terms of the process used for its preparation, i.e. by a product-by-process feature, could only further characterise the composition insofar as this process gives rise to a distinct and identifiable characteristic of the product. In this sense, the steps of the process cannot themselves be regarded as essential features of the product: at most the technical features imparted by this process to the resulting product could represent such essential features."

• "The Board understands the examining division's conclusions to be motivated by the finding that the preparation of a trace elements solution with the claimed high concentration could not be achieved in the prior art and was part of the problem to be solved mentioned in the application, and that the process disclosed in the application was the first process to allow such a preparation (as explained above, see 3.2). However this situation does not justify that each and every feature imparted by the process shown in the example to the resulting composition be seen as an essential feature. As explained in T 242/92, the mere fact that only one way of carrying out the invention is indicated does not in itself offer grounds for considering that the application is not entitled to broader claims (see point 3 of the reasons). A lack of support would only arise if there are well-founded reasons for believing that the skilled person would be unable to extend the particular teaching of the description to the whole of the field claimed by using routine methods. The Board sees no such reasons in the present case. In particular, the absence of reference in claim 1 to the EDTA used in the example does not lead to a lack of support, considering that the description mentions EDDS as an alternative, and considering the absence of an indication that the skilled person could not use other chelants."

• "For the reasons given above (see 4.1.3), even if, according to the description, the invention aims at providing a highly concentrated trace element solution, and provides for the first time a process allowing the preparation of such a highly concentrated solution, this does not mean that the claims should be limited to that particular process or to a solution defined in terms of that particular process for them to comply with Article 84 EPC."

EPO 

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

T 0712/21 - The inherent limitations of technical language

Key points

• Claim 1 of this examination appeal is directed to "1. A process for producing biofuel or biofuel components, comprising:  .... wherein the feed material is contacted, in at least one catalyst bed..., with a combination of hydrodeoxygenating (HDO) and hydrodewaxing (HDW) catalysts"
• " The examining division argued that Article 84 EPC was not satisfied because the invention was defined in terms of a result to be achieved, namely hydrodeoxygenation (hereinafter "HDO") and hydrodewaxing (hereinafter "HDW") steps, for which no indication was given as to the extension of the desired reactions. According to the examining division, in order to meet the requirements of Article 84 EPC, the claim should define all the essential features for obtaining these results, i.e. for carrying out the HDO and the HDW steps."
• "2.4.2 In the Board's view the features HDO and HDW also meet the requirement of clarity under Article 84 EPC, and in this respect, it is important to emphasise the differences between lack of clarity and breadth of the claims. A feature may be considered to be unclear if its boundaries are diffuse, leaving the reader in doubt as to whether certain embodiments fall within or outside the scope of protection. This generally occurs when the feature is defined in confusing or incomplete terms (e.g. an ill-defined parameter) and/or when it is inherently unsuited for providing a well-defined scope (e.g. relative terms)."
• "On the contrary, features with generally accepted meanings shouldn't be considered unclear just because they are broadly defined. The confusion between breadth and lack of clarity arguably results from the minor ambiguities found at the edge of the scope defined by broad technical terms. For instance, one could question whether the term "furniture" encompasses household accessories or decorative elements. Similar ambiguities can arise with simple terms like "window," which might be difficult to distinguish from certain elements like patio doors with a framed glass."
• "In the present case, it is undisputed that the terms "HDO" and "HDW" have a generally accepted meaning in the underlying technical field. Therefore, although it may be argued that the scope of these features could overlap with that of similar processes (e.g. does a hydrotreating process fall within or outside the scope of HDO?, or does a hydroisomerisation step fall within or outside the scope of HDW?), such challenges arise not due to a faulty or incomplete definition, but because language can't comprehensively capture every detail of real-life objects or processes, an issue which becomes more pronounced when features are broadly defined."
"The Board therefore considers that the basic question to be asked is whether the vagueness of the scope of protection is the result of an incorrect, incomplete or relative feature, or whether it is simply the result of the inherent ambiguity of technical terms. In the present case, the Board concludes that the features HDO and HDW would be clear to a person skilled in the art and that any ambiguity in distinguishing them from other similar processes should be attributed to the inherent limitations of technical language."

EPO 

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

T 0438/22 - Adapting the description to the claims, and wishful thinking

Key points

• An applicant appealed on the issue of adaption of the description. "The examining division decided that the main request was not allowable because pages 30 to 38 of the description comprised claim-like clauses and therefore infringed what was stipulated in the Guidelines F-IV, 4.4 (in the version of March 2021) and lead "to unclarity as to the actual scope of protection (Article 84 EPC)".

Claim-like clauses

• Pages 30 to 38 of the description consist of claim-like clauses.
• Guidelines F-IV, 4.4 provides that such claim-like clauses are not permitted.
• " The board is of the view that examples 1 to 63 described on pages 30 to 38 cannot be mistaken for claims (either by patent professionals, such as patent attorneys, patent examiners or patent judges, or the public) since it is evident that they are a part of the description and because they are not denoted as "claims"." 
• "the examples described on description pages 29 to 38 are to be treated in the same way as any other part of the description. There is no justification for deleting them just because they were drafted as claim-like clauses"
• The Board also includes this as a general headnote 1 and explicitly states that the current Guidelines are not consistent with this case law (and that the Guidelines of March 2023, section F-IV, 4.4 "are contradictory" in always requiring that such clauses are deleted while also stated that such claim-like structures may give rise to a lack of clarity. "It appears, thus, that the Guidelines acknowledge that claim-like clauses do not necessarily and inevitably give rise to a lack of clarity. However, the Guidelines require deleting such clauses or amending them to "avoid claim-like language"."

Adapting the description to the allowed claims

• "The idea that the description is entirely unnecessary for claim interpretation is unrealistic and simply "wishful thinking", just like the case law expecting claims to be clear in themselves."
• The Board confirms established practice, in an extensive reasoning leading to the following headnote 2: It is a general and overarching objective, and as such also a "requirement" of the Convention, that authorities, courts and the public interpreting the claims at a later stage should, as far as possible, arrive at the same understanding of the claimed subject-matter as the EPO bodies deciding on the patentability of the same subject-matter. The only tool for achieving this objective is the patent specification as the expression of a unitary legal title. The description, as an integral part of the patent specification, should therefore also serve this overriding objective, i.e. it should provide a common understanding and interpretation of the claims. If the description contains subject-matter which manifestly impedes a common understanding, it is legitimate to insist on its removal under Articles 84 and 94(3) EPC and Rules 42, 48 and 71(1) EPC.
• "The board approves the practice where instead of a direct removal, i.e. the deletion of the subject-matter not covered by the claims, a "removal" by way of an appropriate statement is made, leaving the technical disclosure unaffected."
• This serves the needs of applicants who need technical information from non-claimed embodiments for the purposes of Art.83.
• "An established way might be to use expressions like "not encompassed by the wording of the claims","
• "The board is also not convinced that the effort required to remove the inconsistencies would be disproportionate. It is the appellant's choice how much matter is included in the claims and how much additional matter is left in the description. Furthermore, it does not seem plausible that the examination would seek to meticulously identify even the smallest inconsistency. Rather, it is to be expected that the applicant will be invited to remove only obvious inconsistencies which have become apparent during the substantive examination of the claims for novelty and inventive step, at a stage when both the examiner and the applicant are likely to be familiar with the application."
• I recommend reading the entire decision, which can be found after the jump (with a few comments added).

EPO 

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

T 1147/21 - Broad but clear claims

Key points

• Broad claims. I suppose they sometimes annoy Examiners who can't find novelty-destroying prior art quickly.
• The Board: "Claim 1 of the first auxiliary request meets the requirements of Article 84 EPC, as opposed to the examining division's conclusion. "
• "the features of claim 1 are perhaps broad, but they are technically sensible and clear for the skilled person."
  "Under established case law, complexity is not equivalent to a lack of clarity"
• "Moreover, a broad claim is not unclear per se []. However, while the scope of the claim is clear, its broadness could have an influence on the assessment of inventive step."
• "The measurement of the oxidised nitrogen concentration is not an essential feature. Instead of being measured, it could also be calculated. The frequency of the measurements is not an essential feature of the invention either. Nor did the examining division provide any evidence."
• "The measurement of the oxidised nitrogen concentration is not an essential feature. Instead of being measured, it could also be calculated. The frequency of the measurements is not an essential feature of the invention either. Nor did the examining division provide any evidence."
• The case is remitted. 

• EPO 

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/en/boards-of-appeal/decisions/t211147eu1

First auxiliary request

The first auxiliary request is identical to that considered in the decision under appeal.

1. Amendments

Claim 1 is based on claims 11 and 15 as well as on the last five lines of paragraph [0004] as originally filed.

Therefore, this request meets the requirements of Article 123(2) EPC.

2. Clarity

Claim 1 of the first auxiliary request meets the requirements of Article 84 EPC, as opposed to the examining division's conclusion.

2.1 In the current case, the features of claim 1 are perhaps broad, but they are technically sensible and clear for the skilled person.

Under established case law, complexity is not equivalent to a lack of clarity (Case Law of the Boards of Appeal of the EPO, 10th edn., II.A.3.1).

Moreover, a broad claim is not unclear per se (Case Law of the Boards of Appeal of the EPO, 10th edn.,

II.A.3.3). However, while the scope of the claim is clear, its broadness could have an influence on the assessment of inventive step.

2.2 The measurement of the oxidised nitrogen concentration is not an essential feature. Instead of being measured, it could also be calculated.

The frequency of the measurements is not an essential feature of the invention either. Nor did the examining division provide any evidence.

2.3 The skilled person knows where and with what frequency the measurements are to be carried out. This belongs to the general knowledge of the skilled person in process engineering.

2.4 The fact that claim 1 allows for the adjustment of three possible variables (i.e. dissolved oxygen, duration of the aerobic period and/or duration of the anaerobic period) to control one of two controlled variables (i.e. the ratio or the sum) perhaps renders claim 1 complex but not unclear.

2.5 The board does not see a reason why the skilled person could not establish whether a given method allows to maintain an "ammonia concentration [...] higher than 1.5 mg/L as nitrogen for more than 75% of the transiently-aerated reactor volume in space or time".

In the current case, the risk of a conflict between the criteria of claim 1 evoked by the examining division is hypothetical and not sufficiently substantiated.

3. Sufficiency of disclosure

Several issues raised by the examining division and mentioned above under point 2. relate instead to the requirements of Article 83 EPC. However, the board sees no reason why the invention according to claim 1 could not be carried out be the skilled person.

The desired effects do not form part of the claim. Thus, Article 83 EPC does not presuppose that such effects are obtained.

It is sufficient that the skilled person change one or more of the three parameters to maintain the ratio or the sum. There is no doubt that they can do this.

Remittal to the examining division

4. Article 111(1) EPC

Article 11 RPBA 2020 stipulates that a case is only to be remitted to the department whose decision was appealed for further prosecution if there are special reasons.

The fact that the decision under appeal does not deal with Articles 54 and 56 EPC qualifies as such special reasons.

Order



For these reasons it is decided that:

1. The decision under appeal is set aside.

2. The case is remitted to the examining division for further prosecution on the basis of the first auxiliary request submitted with the statement setting out the grounds of appeal.

T 1993/21 - Support under Art. 84 and the subjective technical problem

Key points

• Suppose claim 1 of the application is novel, inventive, clear, the same as claim 1 as originally filed, and can be carried out by the skilled person without any difficulties. Can the claim then be rejected under the support requirement of Art. 84?
• "The appellant [applicant] argued that the invention claimed in the main request was fully supported by the description, because the fact that the detailed embodiment included a plurality of magnetic detection devices related to further improvements of the claimed invention, not to the invention actually claimed in claim 1 according to the main request. The board does not agree with the appellant. The application as originally filed defines in paragraph [0015] as its technical problem: "to provide ... a vehicle ... able to detect a rotational position of a rotor with an improved detection accuracy"."
• "Therefore, the subject-matter of claim 1 does not include the technical features necessary for solving the technical problem defined in the application."
• As a comment, what if claim 1 solves some other technical problem, that the applicant could validly rely on under G 2/21?
• "In contrast thereto, the described embodiment, for example according to paragraph [0077], includes such technical features as the use of four magnetic detection devices wherein the magnetic flux input surfaces of the first to third magnetic detection devices are arranged [in some configuration]"
• "The specification does not comprise any other embodiment which would provide the described detection accuracy while using a single magnetic detector whose position relative to the rotor is undefined, as it is in claim 1. "
• "The questions of whether it is evident for the person skilled in the art how to carry out the invention with a different number of magnetic detection devices, as suggested by the appellant, or whether the device according to document D6 requires only a single magnetic detection device, are irrelevant for the question of support under Article 84 EPC because they relate to the requirement of Article 83 EPC, which is not part of the reasoning in the contested decision and is thus not part of the appeal proceedings "
• The auxiliary request addressing the issue is not admitted under Art. 13(2).
• " the objection that claim 1 according to both the main request and the auxiliary request did not include a definition of where the magnetic detection device is positioned had consistently been part of the proceedings since the oral proceedings before the examining division. The fact that the appellant reacted to this objection for the first time during the oral proceedings before the board can thus not be regarded as exceptional circumstances in the sense of Article 13(2) RPBA, justifying admittance of the present auxiliary request."

EPO 

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

T 2391/18 - No need to tidy up the description in opposition

Key points

•  "The allegedly required amendment to paragraph [0017] does not relate to any amendment to the claims during opposition proceedings. Instead, as set out above, this amendment relates to an alleged inconsistency that already existed in respect of a feature present in the granted claims."
• " Such an amendment to the description is not appropriate in opposition proceedings or opposition appeal proceedings. (....) [T]here is no reason for the Board (or the Opposition Division) to come to the conclusion that the requirements of the Convention (in particular the requirements of Article 84 EPC) within the meaning of Article 101(3)(a) EPC are not fulfilled. The reason for this is the conclusion of the Enlarged Board in G 3/14: in considering whether, for the purposes of Article 101(3) EPC, a patent as amended meets the requirements of the EPC, the claims of the patent may be examined for compliance with the requirements of Article 84 EPC only when, and then only to the extent that the amendment introduces non-compliance with Article 84 EPC."
•  "Since in a case such as the present one the amendment to the claims did not introduce an issue of non-compliance with Article 84 EPC, an opposition division or a board of appeal cannot examine the claims of the patent for compliance with the requirements of Article 84 EPC, including the requirement of "support by the description" in the second sentence of this provision. There is thus no reason for the Board to object to the wording of paragraph [0017] of the amended description as filed during the oral proceedings before the Board."

EPO 

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

T 1426/21 - Inconsistencies between the claims and the description

Key points

•  An applicant wishes to have claim-like clauses in the description that are inconsistent with the allowable claims. The applicant let the application be refused and appeals.
• "In their communication pursuant Article 15(1) RPBA, the Board indicated that the claim-like clauses in the description of the main request, the first, second and third auxiliary requests were not consistent with the claims which led to the claims being unclear pursuant to Article 84 EPC (i.e. not supported by the description). However the Board indicated that the amendments made to the description of the fourth auxiliary request met the requirements of Article 123(2) EPC and overcame the inconsistencies between the the description and claims and met the requirements of Article 84 EPC."
• "With letter of 13 March 2023, the appellant made their fourth auxiliary request their main request"
• The Board: "According to Article 84 EPC, the claims define the matter for which protection is sought. They shall be clear and concise and be supported by the description. This means that any inconsistencies between the claims and those parts of the description disclosing ways to carry out the invention need to be removed. This understanding of Article 84 EPC is in line with the standard of claim interpretation for national proceedings enshrined in Article 69(1) EPC, which requires that the description also be taken into account when interpreting the claims."
• "In the present case the "claim-like clauses" do not render the subject-matter for which protection is sought unclear because the text in the description is consistent, and not in contradiction, with the set of claims. Moreover, the Board notes that the "aspects" on pages 11 and 12 [ situated in the middle of the description (at the end of the "summary" of the invention) ] cannot be mistaken for claims. It is obvious that they are part of the description and are not part of the claims defining the protection to be sought."
• Rule 42 EPC does not rule out claim-like clauses in the description. In the present case, the claim-like clauses disclosed as "aspects" on pages 11 and 12 can be considered as embodiments of the invention defined in terms of technical features. These claim-like clauses do not change or impair the understanding of the technical problem and the solution defined in the description. Therefore there is no reason to require their deletion.
• To conclude, the amendments to the description according to the main request remove the inconsistencies between the claim-clause like embodiments and the claims. The claims are thereby supported by the description pursuant to Article 84 EPC.
• The case is remitted with an order to grant a patent with the text as specified.

EPO 

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

T 0149/20 - Broad claims and support

Key points

• The requirement of support of Art.84 is sometimes used by Examining Divisions to refuse claims that are considered "too broad" without a need to find prior art that anticipates the claimed subject-matter or makes it obvious. 
• The present Board: "With regard to the requirement that claims are supported by the description, decision T 630/93 stated the following [] in Reasons 3.2: "[...] it must, however, be kept in mind, that the main purpose of a claim is to set out the scope of protection sought for an invention [...]. Therefore, the function of the essential features, although they normally are expressed in technical terms, is often to define the borders of an invention rather than to define the invention in detail within the borders. The detailed definition is normally made by the additional features, which may concern specific embodiments of the invention, in dependent claims appended to the main claim. [...]". Thus, in view of decision T 630/93, Reasons 3.2, the crucial issue here is whether the features of claim 1 clearly define the borders of the invention as necessary to prosecute the application."
• The cited paragraph of T 630/93 continues with:  "Thus, essential features often can be of a very general character, in extreme cases they could indicate only principles or a new idea. The degree of generalisation is, however, always dependent on the prior art which has been disclosed."
• 
  
• T 630/93 also states: "As explained above, when deciding upon how much detail concerning an invention must be identified in a claim in order to meet requirement (b), it is necessary to relate the invention to the prior art. '
• "To the Board, therefore, it appears that the applica- tion, in fact, discloses a new principle. It has thus not been shown that it is known to determine successive gradients as proposed by the Appellant. Therefore, a claim having a broad scope is justifiable. It is not necessary to identify in detail in which way the said comparison or said speed control is performed. The skilled person will get this information from the description (e.g. corresponding to Figure 6), where a preferred embodiment of the invention is described. However, as has been suggested by the Appellant, the skilled person realises that also other ways of comparison and speed control within the borders of Claim 1 would be possible."
• Turning to inventive step of broad claims:  "It is true that the features of Claim 1 do not in a compulsory way lead to the solution of the problem indicated in the description, i.e. that the overrun amount is reduced by a gradual reduction of the speed. However, the features indicated in the claim give the skilled person the possibility to perform such a control in a manner that leads to that result. Thus, in fact, the objective problem to be solved appears to be more general than indicated in the description, e.g. to achieve an almost continuous and graduated speed control. To establish such a generalised objective problem appears, however, in this case to be of only academic interest. '' 
• 
  

EPO 

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

T 0088/21 - No undisclosed disclaimers for partial priority

Key points

• Claim 1 without the disclaimer enjoys partial priority from D0 because there is a still earlier application D1a, of the (same) applicant, which discloses (in the examples) an embodiment of the present claims without the disclaimer. The still earlier application D1a serves as the priority application for a PCT application D1 that was published in the priority year; the PCT application is also a Euro-PCT application which forms a prior right for the part of the claim for which the priority is valid. 
• I'm aware that the above paragraph is perhaps a bit concise summary. The Board sets out the relevant facts very clearly. 
• So, for the claims without the disclaimer, D1 is novelty destroying prior art under Article 54(2). For the claims with the disclaimer, D1 is a prior right under Art. 54(3) and not novelty-destroying because the overlapping subject-matter is disclaimed.
• An undisclosed disclaimer was accepted in such a case in T1872/14 which was, however, issued before G1/15 on partial priority.
• The Board:  "the criteria developed in G 1/03, together with G 1/16, are not fulfilled, and the disclaimer in claim 1 of the main request violates Article 123(2) EPC."
• " This line of argument [of the applicant] is based on the incorrect assumption that the claim with (i.e. after the inclusion of) the disclaimer was decisive in the given context. This is, however, not in accordance with the principles developed in G 1/03 and G 1/16."
• The Board agrees with the concise reasoning in T 0311/18: "The requirements of Article 123(2) EPC are not met for the following reasons: The disclaimer introduced in claim 1 is not allowable since, for the subject-matter disclaimed, D5 is not prior art under Article 54(3) EPC, but rather it is the first application within the meaning of Article 87(1)(b) (see T 282/12, Reasons 2). Consequently the patent in this case does not validly claim priority for said subject-matter and D5 is prior art under Article 54(2) EPC for the disclaimed subject-matter. The requirements for a disclaimer to be allowable, as set out in G 1/16, OJ EPO 2018, A70, in combination with G 1/03, OJ EPO 2004, 413, are therefore not met."
• The present Board: "The concept of G 1/15 that alternative subject-matter encompassed by a generic claim may enjoy partial priority is beneficial [for applicants] in some situations, namely when it is to be assessed whether a priority document relates to the same invention. But it may be disadvantageous in other situations, namely when the nature of a priority document as the first application is at stake in view of an even earlier application by the same applicant."
• "G 2/98 advocates a "narrow or strict interpretation" of the concept of the same invention and the right to priority (see Reasons 9 and T 1222/11, Reasons 9.1)."
• As a comment, G 2/98 only uses the phrase "narrow or strict interpretation" in relation to the concept of the same invention, not in relation to priority in general.
• "Moreover, the appellant already knew the content of their documents D1a/D1 at the time of filing the current application, and it was in their hands for the current situation not to occur. It rests with an applicant to manage their patent portfolio in line with the provisions of the EPC they want to avail themselves of, however large this portfolio may be, not least in the interest of legal certainty for third parties."
• This reasoning does not convince me. G 2/03 permits undisclosed disclaimers in case the prior right originates from the same applicant and is hence not based on reasons of culpability. On the other hand, in the present case of a priority gap, it is incidental that the cited document is a patent application of the same applicant. Even though a priority gap is always caused by a still earlier application or the same applicant, that still earlier publication does not need to be published, let alone in the priority year; it is also possible that the cited document is a publication of a third party in the priority year. 
• As a comment, I leave it as a question to the reader whether G2/03 expressly or implicitly says the list of cases permitting undisclosed disclaimers given therein is exhaustive and whether we should take it "as carved in stone" (cf. G 3/19). 
• I note that G 2/03 r.2.6.3 considered the case of "a lack-of-novelty objection raised under Article 54(3) EPC [which] becomes an anticipation under Article 54(2) EPC because the application-in-suit turns out not to enjoy the claimed right of priority, either because it was not valid from the outset, or because it was lost following a further amendment, additional to the disclaimer, not disclosed in the priority application."
• I note that G 2/03 seems to provide an equitable solution, at least refers to "unfairness" in r. 2.1.1 and 2.2.1. 
  
  
• Interestingly, the disclaimer was drafted by reference to D1: "with the proviso that the glass article (300) is not a glass article according to Examples 4A, 4B, 4C, 4D or 5A of EP 3 204 338 A2." The Board needs to comment on whether such a formulation meets Art.84.
   

EPO 

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

T 2685/19 - On the need to adapt the description

Key points

• Board 3.5.02, in machine translation: "Based on decision T 1989/18, Reasons No. 5, the appellant argues that if the claims do not have a problem of clarity, the description cannot give rise to an ambiguity of the claimed subject-matter."
• "The board does not agree"
• "According to the settled case law of the Boards of Appeal, the description must therefore be adapted to the amended claims, as has apparently already been requested in the present case by the opposition division with regard to the request on which the decision under appeal is based. This means, among other things, that embodiments no longer covered by the amended wording of the claim are to be identified as such in the description. This is not the case for the description submitted with auxiliary request IIIbis. ... Therefore, all embodiments that only have a two-part structure at the end area no longer fall under claim 1 and are to be marked accordingly. In the present case, as can already be gathered from the version on which the contested decision is based, only the embodiment according to FIG. 5 has a three-part structure at the end area."
• "Since the description submitted with auxiliary request IIIbis does not clarify that the claimed invention concerns only the embodiment corresponding to the subject-matter of the claims, there is a contradiction between the claims and the description, as a result of which the claims, contrary to the requirement of Article 84, second sentence, EPC, are not supported by the description."
• "The weighting of the criteria specified in Article 84, second sentence, EPC in favor of the clarity of the claims, which was the basis in decision T 1989/18, cannot be inferred from Article 84 EPC. Rather, the board follows the established case law of the boards of appeal in this regard, as recently found in decisions T 1516/20, reasons for decision no. 5, T 1024/18, reasons for decision no. 3.1, and T 2293/18, reasons for decision no. 3.3 has been confirmed. In the decisions mentioned, it has been shown very clearly and convincingly that the criterion for the claims being supported by the description in Article 84, second sentence, EPC is an independent criterion which is not subordinate to the clarity of the claims."

EPO 

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