Bringing the description in line with the scope of claims? The potential end of the ‘Angora cat paradox’ & other stories for sleepless nights

C. López Mosquera (ES), European Patent Attorney, BALDER

Rivers of ink have been spilt over the significant changes which have been introduced by the EPO – in particular by means of their most recent annual revisions of the Guidelines for Examination – in respect of amendments to the description of European patent applications prior to grant. By way of illustration, this topic has already been the subject of a previous articleArticle entitled “For discussion: Has the requirement that claims be “supported by the description” been perverted over time?”, provided in epi Information 3|22 (Sept. 2022) and authored by M. Wilming, European Patent Attorney at Hepp Wenger Ryffel AG. published in the epi Information issue 3|22, wherein the connection between those amendments and Art. 84 EPC was thoroughly analysed.

Another aspect worth considering – parallel to the fact that, starting from the 2021 Guidelines, the approach followed by the EPO appears to become consistently more stringent which each passing year – is that there is a growing body of case law relating to the adaptation of the description, its impact on Art. 84 EPC and even its relationship with Art. 69 EPC and its corresponding Protocol on the Interpretation of Art. 69 EPC, which may eventually have wider implications for applicants, patent holders and patent practitioners, than initially foreseen.

The evolution of the Guidelines for Examination (2021-2023)

If we return to the 2021 Guidelines, in particular to section F-IV, 4.3 thereof, we may see how the previous general indication regarding amendments in the description (including an example), namely:

’(iii)
Part of the subject matter of the description and/or drawings is not covered by the claims

For example, the claims all specify an electric circuit employing semiconductor devices but one of the embodiments in the description and drawings employs electronic tubes instead. In such a case, the inconsistency can normally be removed either by broadening the claims (assuming that the description and drawings as a whole provide adequate support for such broadening) or by removing the “excess” subject-matter from the description and drawings.’ (cf. F-IV, 4.3 (iii) EPO Guidelines for Examination 2019)

was extensively amended and developed on the grounds that inconsistencies found in the description “often throw doubt on the scope of protection”:

’(iii)
Part of the subject matter of the description and/or drawings is not covered by the claims

Where parts of the description give the reader the impression that they disclose ways to carry out the invention but are not or, due to amendments to the claims, are no longer encompassed by the wording of the claims, these parts often throw doubt on the scope of protection and therefore render the claims unclear or unsupported under Art. 84, second sentence, or, alternatively, render the claims objectionable under Art. 84, first sentence. The description must be adapted to the claims in order to avoid inconsistencies between the claims and the description.’ (Emphasis added - cf. F-IV, 4.3 (iii) EPO Guidelines for Examination 2021)

In line with this, a clear indication of those parts of the description which do not fall within the scope of the claimed invention would also be more specifically required.

From that moment onwards, claims were made more easily objectionable under Art. 84 EPC, second sentence, on the grounds that they would not be properly supported by the description unless it was not amended in accordance with the claimed subject matter. Furthermore, such description amendments - or rather the absence thereof - were understood to potentially have a negative impact on the definition of the scope of protection sought by the claims.

If we now move on to the 2022 revision of the Guidelines for Examination, we will quickly see that the EPO went one step further with the new amendments of section F-IV, 4.3, more specifically those of section F-IV, 4.3 (iii), which was fully amended, up to its title, to reflect the new situation:

’(iii)
Part of the description and/of drawings is inconsistent with the subject matter for which protection is sought

According to Art. 84, second sentence, the claims must be supported by the description. This means that there must not be inconsistency between the claims and the description. Parts of the description that give the skilled person the impression that they disclose ways to carry out the invention but are not encompassed by the wording of the claims are inconsistent (or contradictory) with the claims. Such inconsistencies may be present in the application as originally filed or may result from amending the claims to such an extent that they are no longer consistent with the description or drawings.’ (Emphasis added - cf. F-IV, 4.3 (iii) EPO Guidelines for Examination 2022)

What had been considered as “often throw(ing) doubt on the scope of protection” in the earlier 2021 version, then appeared to have critically become “inconsistent (or contradictory) with the claims” in the 2022 version. Additionally, section F-IV, 4.3 (iii) was further expanded to provide a more detailed definition of what such “inconsistency” means, including examples such as the following one:

‘For example, an inconsistency may exist due to the presence of an alternative feature which has a broader or different meaning than a feature of the independent claim. Further, an inconsistency arises if the embodiment comprises a feature which is demonstrably incompatible with an independent claim.’ (Emphasis added)

However, in my view, the examples presented therein cast an even longer shadow on how to perform such amendments in the description and how they are to be objectively assessed. For example, who is to set the bar which defines what “a broader or different meaning” is? And what is the basis for making such a decision, from a legal and technical perspective?

Furthermore, conspicuously lacking from the revised Guidelines is an explanation of how to determine whether two features are “demonstrably incompatible” in a clear and objective way during examination proceedings. It must be acknowledged, though, that the EPO provided certain examples thereof in the 2023 Guidelines:

’Further, an inconsistency arises if the embodiment comprises a feature which is demonstrably incompatible with an independent claim.

Examples:

• the independent claim defines a feature as being made of “purely substance X”, whereas the description defines it as being made of a blend of substances “X and Y”;
• the independent claim defines the feature of an article comprising nicotine-free liquid material, whereas the description states that the liquid material may contain nicotine.’ (cf. F-IV, 4.3 (iii) EPO Guidelines for Examination 2023)

The 2021 Guidelines also further developed the topic of claim-like clauses. Nevertheless, instead of still considering that those clauses had to be deleted prior to grant, since they “otherwise may lead to unclarity as to the actual scope of protection”See section F-IV, 4.4 of EPO Guidelines for Examination 2019., the following was then explicitly included:

’Finally, claim-like clauses must also be deleted or amended to avoid claim-like language prior to grant because:

• they are inconsistent with the claimed subject-matter, they lead to unclarity as to the actual scope of protection and hence do not fulfil the requirements of Art. 84 (see F-IV, 4.3(iii));
• they only repeat the claimed subject-matter in a very literal manner, they are an irrelevant and unnecessary reduplication and hence do not fulfil the requirements of Rule 48(1)(c) (see F-II, 7.4).’ (Emphasis added – cf. F-IV, 4.4 (iii) EPO Guidelines for Examination 2021)

Based on these amendments in the Guidelines, one could only assume that claim-like clauses lost the benefit of the doubt regarding clarity interpretation. Even more surprising was the consideration that subject matter provided in claim-like clauses only amounts to a repetition of the claimed subject matter, therefore being an ‘irrelevant and unnecessary reduplication’, which thus contravenes R. 48(1)(c) EPC:

‘Rule 48 Prohibited matter
(1) The European patent application shall not contain: […]
(c) any statement of other matter obviously irrelevant or unnecessary under the circumstances’ (Emphasis added)

In my experience, claim-like clauses are still widely employed nowadays. And, while it is true that sometimes they encompass specific subject matter that is already recited in the claims, more often than not they are used to disclose additional embodiments which may not find an explicit basis in other passages of the description. These clauses, typically also referred to as ‘aspects’, may in fact serve as basis for further amendments during examination proceedings, or even for a new set of claims to be prosecuted in a divisional patent application. Similarly, this subject matter may turn out to be a suitable source for amending the claims during post-grant proceedings.

In any case, we must not forget how that specific passage was subsequently reverted to its previous 2020 version in the 2022 revised Guidelines, therefore again only indicating that ‘claim-like clauses must also be deleted or amended to avoid claim-like language prior to grant’. Since then, this specific part of the Guidelines remains unamended, though meanwhile there have been several Board of Appeal decisions, such as T 1426/21 from March 2023, which clearly support the fact that, under certain circumstances, there is actually no reason to require the deletion of claim-like clauses:

‘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 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.’ (Emphasis added – cf. T 1426/21, r. 2.5 and 2.6)

Notwithstanding the foregoing, are we to still assume that claim-like clauses must always be deleted in accordance with the Guidelines for Examination? Or is there still the risk that, should claim-like clauses be kept in the description, they can be objected over R. 48(1)(c) EPC? Worse still, can the patent application be refused for not deleting claim-like clauses, even if they do not impair either the understanding of the technical problem and the solution provided by the invention, or the determination of the scope defined by claims? It may be worth remembering at this point that decision T 1989/18 stems from a European patent application which initially had been refused by the Examining Division because the subject matter disclosed in the description was broader than the claimed subject matter and so was deemed not compliant with Art. 84 EPC.

It is my belief that there still is much room for debate on all the above-mentioned topics, also given that there is an increasing number of conflicting Board of Appeal decisions related to all these matters, which do not appear to be able to put all these issues to rest in any way…

Ripples in the sand: The diverging 2021-2023 Board of Appeal decisions

In decision T 1399/17, which relates to an appeal filed against the Opposition Division decision to maintain a patent in amended form, we could catch a glimpse of what the new amendments of the 2021 Guidelines could bring about. Claim 1 of the main request on appeal recited that “dietary fat is a blend of natural fats”, whereas there were passages in the description which, according to the Board of Appeal, cast doubt on the scope of the claims because they did not reflect that mandatory feature of claim 1:

‘In paragraph [0040], it is still stated that “[p]referably” the dietary fat composition is a blend of natural fats […]’

‘[0125] While Applicants prefer to avoid use of interesterified fats, such fats may still be used in the present invention […]’It was considered by the Board of Appeal that it would be straightforward for the skilled person that interesterified fats are not natural fats, as confirmed in paragraph [0191] of the patent, wherein it was indicated that ‘The terms “natural fat” and “natural oil” […] does not contain a significant level of triglyceride molecules which have been artificially structurally modified (e.g., by chemical or enzymatic interesterification)’ and also in D11-N (e.g., page 110, left column, third paragraph).

‘[0208] Interesterified dietary fats were prepared by the Stepan Company (Northfield, IL) using random chemical interesterification to combine the following fats or fatty acids and vegetable oils:’ (cf. T 1399/17, r. 2.2)

Additionally, it was explicitly clarified in T 1399/17 that the above-mentioned requirements concerning the adaptation of the description also apply whenever claims are amended during opposition proceedings. On that basis, the main request was immediately deemed not allowable considering it was evident the description of the patent contravened Art. 84 EPC.

Nine months later, decision T 1989/18 appeared to steer away from both T 1399/17 and the stringent approach provided in 2021 Guidelines:

‘However, when assessing clarity, the description cannot be relied upon to resolve a clarity issue in a claim, nor can it give rise to any such issue if the definition of the subject-matter in a claim is clear per se. In particular, if the claims are clear in themselves and supported by the description, their clarity is not affected if the description contains subject-matter which is not claimed’ (Emphasis added – cf. T 1399/17, r. 5)

It was also considered in T 1989/18 that R. 48(1)(c) EPC would not appear to provide a suitable basis for the requirement to adapt the description, thus showing a clear contradiction with 2021 Guidelines for Examination wherein, as previously noted, R. 48(1)(c) EPC had been cited as basis for deleting or amending claim-like clauses:

‘A number of decisions have relied on Rule 48(1)(c) EPC as a (potential) legal basis for requiring the description to be adapted to the subject-matter as claimed (see e.g. decision T 544/88, OJ EPO 1990, 429, point 5; decision T 329/89, point 4.4; decision T 1903/06, point 2; decision T 853/91, point 2; decision T 443/11, point 4). In the board’s judgement, however, the purpose of Rule 48(1)(c) EPC cannot be to keep a patent specification free of unnecessary information and to make sure that its content relates only to what protection is sought, for several reasons.

[…] It is therefore difficult to conceive that the legislator intended to impose more severe sanctions on less offensive matter, in particular to provide a ground for refusal based on the inclusion of merely “irrelevant or unnecessary”’ (Emphasis added - cf. T 1989/18, r. 10 and 11)

On 1 March 2022, the newly revised Guidelines entered into force, and decision T 1024/18 was issued. In those appeal proceedings, auxiliary request 2 was not found allowable because, “at least due to the identified inconsistency between the claims and the description, the claims are not supported by the description” (c.f. point. 3.1.12 of Reasons for the Decision). The Board of Appeal elaborated further on Art. 84 EPC and their understanding thereof, according to which the description should provide full support, and not just support in a part of the description:

‘Merely providing a part of the description which gives support to the claims appears to be at odds with the wording “supported by the description”. Only providing such a part would be rather more akin to the claims having some form of basis in the description or being supported by “part” of the description, whereas the wording of Article 84 EPC requires support by “the description”. To put this into context, to provide only support for the claims in one single passage of the description while the rest of the description might give a different or even contradictory meaning to the claims, would in essence negate the general meaning of the words “support by the description” and in fact would allow it to be reduced to a de minimis requirement of e.g. repetition of the claim wording while allowing the entire remaining description to be left to explain an entirely different invention to the one claimed.’ (Emphasis added - cf. T 1024/18, r. 3.1.8)

Furthermore, in that same decision, the Board of Appeal went on to connect the adaptation of the description with national infringement proceedings:

‘Hence, the Board finds that the requirement in Article 84 EPC of the claims to be supported by the description includes the requirement that the description is consistent with the claims not only in some part but throughout. Considering also Article 84 EPC in the wider context of the EPC, this understanding of the provision seems to be in line with the standard of claim interpretation for national proceedings enshrined in Article 69(1) EPC, according to which the description is also to be taken into account when interpreting the claims. Inconsistencies between the claims and the description could thus - in particular in national proceedings - be the source of diverging interpretations as regards the scope of the claims. Accordingly, misinterpretation could be avoided in particular if inconsistent information contained in the description or drawings is already removed in the proceedings before the EPO. The importance of Article 84 EPC for the interpretation of claims in national proceedings is also documented in the “travaux préparatoires” of the EPC 1973. It emerges from the preparatory documents that a provision corresponding to the current Article 84 EPC, which was originally part of the Implementing Rules, was re-located to the Convention due to its importance for national infringement proceedings (cf. BR/51/70, point 18). Thus, the support requirement of Article 84 EPC also serves the aim to ensure legal certainty for national post-grant proceedings (as do the requirements of clarity and conciseness).’ (Emphasis added - cf. T 1024/18, r. 3.1.9)

At this point, I would like to refer to Art. 69 EPC wherein it is clearly established that the extent of protection conferred by a European patent or patent application shall be determined by the claims, not by the description, though the latter shall be used for the purposes of interpreting the claims:

’Art. 69 Extent of protection

(1) The extent of the protection conferred by a European patent or a European patent application shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims.

(2) For the period up to grant of the European patent, the extent of the protection conferred by the European patent application shall be determined by the claims contained in the application as published. However, the European patent as granted or as amended in opposition, limitation or revocation proceedings shall determine retroactively the protection conferred by the application, in so far as such protection is not thereby extended.’ (Emphasis added)

On considering the wording of Art. 69 EPC, it therefore does not become apparent how it would provide any basis for the requirement to bring the description, as a whole, strictly in line with the claims. However, later Board of Appeal decisions T 0121/20 and T 1516/20 (both issued by the same Board), as well as T 2766/17 and T 1516/20, would also appear to support the criterion that the description in its entirety must be consistent with the claims.

Notably, the recent T 3097/19, issued in November 2022, also connected Art. 84 EPC with the scope of protection and, ultimately, with Art. 69 EPC, in a similar way to T 1024/18, to state the following:

’Often, Article 84 EPC is construed as defining three requirements on the claims, while the introductory clause is taken to merely state the role of the claims. However, the purpose of the claims to define the matter for which protection is sought imparts additional requirements on the application as whole.

The matter for which protection is sought is central for determining, after grant, the extent of protection conferred by the patent (Article 69 EPC). The Board deems it to be an elementary requirement of a patent as a legal title that its extent of protection can be determined precisely. In the Board’s view, the clarity and conciseness requirements in Article 84 ultimately serve that purpose, but they are not sufficient to ensure it. To mark this distinction, the Board prefers to talk about the scope and extent of protection being “precisely determined” rather than being “clear”.’ (Emphasis added - cf. T 3097/19, r. 28)

This decision actually provides further proof of the divergent approaches taken by the different Boards of Appeal since, for example, in this case, the Board even appears to modify Art. 84 EPC itself when connecting it to Art. 69 EPC, thus making its own interpretation thereof. In fact, the Board itself acknowledged the existence of tensions between the interpretations of Art. 84 EPC, though they still insisted on the need to ensure full consistency between description and claims to achieve legal certainty. Furthermore, T 3097/19 may have actually given a glimpse of what the true purpose behind all these adaptation requirements could be, namely, reducing divergence of post-grant jurisprudence:

’The Board also considers that this consistency between the claims and the description is necessary for legal certainty. The skilled person to whom the claims - and the entire application - are addressed (see point 29.1) must not be confronted with contradictory statements when reading the patent application as a whole. Otherwise, they may be left with doubts as to what is the invention sought to be protected. […]

The Board is aware that its interpretation of Article 84 EPC may appear to be in tension with case law of the Boards of Appeal regarding clarity and claim interpretation. In particular, the often expressed requirement that the claims be clear “from the wording of the claims alone” appears to be hardly compatible with the idea that the patent (application) must be read “as a whole”.

The Board does not agree with a verbatim reading of the former requirement, nor, without further qualification, with the statement of T 454/89 (reasons 4.1 (vii) as cited in T 1989/18 (reasons 4) that “Claims must be clear in themselves when being read with the normal skills including the knowledge about the prior art, but not including any knowledge derived from the description of the patent application or the amended patent”. […]

That, however, the claims should be, as far as possible, clear from their wording alone, is an expression of the desire, in the interest of legal certainty (see G 1/04, reasons 5), that the divergence of post-grant jurisprudence be limited (see also T 1817/14, reasons 7.4 and 7.5).’ (Emphasis added - cf. T 3097/19, r. 33, 35 and 36)

Since the 2021 Guidelines entered into force, at least seven of the Board of Appeal decisions issued so far support the strict approach concerning adaptation of the description, with two of them (T 1024/18 and T 3097/19) making a particular connection between national infringement proceedings and Art. 69 EPC interpretation. Besides, four out of those seven decisions were granted “C” distribution status (i.e., decisions to be distributed to board chairmen). However, if we have a look at the emerging body of case law of the Boards of Appeal related to all these topics, we can readily see that divergence is consistently increasing, with four different decisions appearing to support an opposite view to the one presented in the latest versions of the Guidelines, all of them with “D” status (i.e., decisions not to be distributed):

In T 1444/20, the idea that claim-like clauses must be removed by any means was rejected. In fact, usefulness of those clauses was actually acknowledged, while also noting that there is no need to refer to the description to ensure clarity of the claims:

’The claims of a patent application define the matter for which protection is sought. Article 84 EPC requires this definition to be clear. This means that the claims must be clear in themselves for a person skilled in the art with common general knowledge of the technical field in question, without the need to refer to the description (T 412/03, Reasons 2.4.1). Article 84 EPC also requires the claims to be concise and be supported by the description. […]

As an additional remark, the Guidelines for Examination in the EPO (version of 11 November 2019), in point F-IV, 4.4, are inconsistent in that they acknowledge, on the one hand, that claim-like clauses may (or may not) give rise to a lack of clarity, but require, on the other hand, that such claim-like clauses must always be removed. If claim-like clauses in the description do not result in a lack of clarity of the actual claims, Article 84 EPC cannot provide the justification for removing them.

Moreover, the entire section “Specific embodiments of the invention” relates to the same subject-matter (defined by the same method steps) as the current claims and may be taken to provide additional support for the claims in the description, as also required in Article 84 EPC.’ (Emphasis added – cf. T 1444/20, r. 2.1, 2.6 and 2.7)

Such a not-so-strict approach followed by T 1444/20 has also been endorsed recently by T 1426/21, issued in March 2023.

Furthermore, in T 2194/19, the Board of Appeal challenged the requirement that all embodiments of the description had to be covered by the claims, and considered that proper justification about any conflicting embodiment in the description had to be provided by the Examining Division:

‘Secondly, this board takes issue with the conclusion that the requirement that the claims are to be supported by the description (Article 84, second sentence, EPC) necessarily means that all the “embodiments” of the description of a patent application have to be covered by the (independent) claims, i.e. that all the embodiments must fall within the scope of those claims. This conclusion cannot be derived from the EPC. It can also not be derived from the jurisprudence of the Boards of Appeal, according to which merely inconsistencies or contradictions between the claims and the underlying description are to be avoided in that context (see e.g. T 1808/06, Reasons 2; T 2293/18, Reasons 3.3.5). The board considers that it may well be that, in a given case, there is such an inconsistency or contradiction between the claims and an “embodiment” of the description. But this has to be justified by the examining division. The mere indication that the embodiment does not or no longer fall under the respective claim(s) is not sufficient in this regard.’ (Emphasis added – cf. T 2194/19, r. 6.2.2)

What lies ahead? Not-so-great expectations

For the time being, we can only assume that previous practice based on occasional amendments in the description being made before the patent application proceeded to grant is a thing of the past. Such assumptions are reinforced by the fact that, currently, requirements to adapt the description are consistently issued at an earlier stage during examination proceedings, and they are even becoming more and more exhaustive.

Still, one cannot help but imagine what may happen during future opposition proceedings, or even invalidation proceedings, if the topic of the adaptation of the description is not consistently dealt with.

By way of illustration, I recently came across a text intended for grant wherein the Examining Division had deleted a paragraph wherein it was clearly noted that all test standards referenced in the patent application were the most recent standards in effect as of the filing date of the application or of the earliest priority application wherein each test appeared, if priority was claimed. It is known in the art, though, that test standards typically undergo revisions through time. Therefore, what could happen if that amendment were to be accepted by the applicant, but subsequently validity of the patent was challenged in opposition proceedings? Could the patent be attacked on the grounds of Art. 100(b) EPC merely because, due to these new adaptation requirements, the time reference to the applicable version of the test standard had been removed from the description?

What is more, decisions T 1024/18 and T 3097/19 directly appear to intertwine the requirements of full adaptation of the description with Art. 69 EPC interpretation, and this may clearly have ramifications on how the doctrine of equivalents could be applied during national infringement proceedings. Here again we should remember that, for example, according to the Guidelines for Examination, “an inconsistency may exist due to the presence of an alternative feature which has a broader or different meaning than a feature of the independent claim”, although such “broader or different meaning” has so far not been fully clarified.

At this point, this topic may bring to mind the pemetrexed saga based on EP1313508 (Eli Lilly & Co.). During examination proceedings, claim 1 of EP’508 had been objected to for lack of novelty, and also for relating to an extremely large number of possible combinations of compounds, in particular regarding claim 1, as “antifolate” and “methylmalonic acid lowering agent”:

‘1. Use of a methylmalonic acid lowering agent in the preparation of a medicament useful in lowering the mammalian toxicity associated with an antifolate, and the medicament is administered in combination with an antifolate.’

In view of that, the applicant limited the methylmalonic acid lowering agent and the antifolate to pemetrexed and vitamin B12, respectively, but such amendment was refused on considering that there was basis in the description for “pemetrexed disodium”, but not for “pemetrexed”, said compounds being understood as distinct compounds. Eventually, the patent application proceeded to grant with the claims being restricted to “pemetrexed disodium”, which is the active pharmaceutical ingredient of ALIMTA® (Eli Lilly & Co). A significant number of patent infringement litigation proceedings have taken place across Europe over this European patent, wherein the doctrine of equivalents has been duly considered, producing different results in different jurisdictions, but… If we now imagine a different scenario where the description had disclosed pemetrexed in acid form or any salt thereof, but the claims had to be restricted to pemetrexed disodium only because results with ALIMTA® were provided, what could have happened if the description had to be then strictly adapted in accordance with the claimed subject matter? Would have this approach impacted the assessment of equivalents, thus potentially depriving the Angora cat paradoxAccording to this well-known IP paradox, patent holders typically favour a narrow interpretation of the claims during prosecution or invalidity actions in order to better distinguish them from the prior art (thus resembling a wet cat), whereas, during infringement proceedings, they always defend a broader scope of the claims (therefore resembling a dry Angora cat with its long and silky fur). of its fur?

While prosecution history estoppel is typically not accepted by national (European) courts, it cannot be completely disregarded either in certain jurisdictions. Thus, it may be worth considering whether, for example, the deletion of a full paragraph may be preferable over marking it as “outside the subject-matter of the claims” as suggested in the Guidelines, in order to better safeguard the patent holder’s interests, especially if post-grant proceedings are foreseeable.

Besides, in my opinion, certain Board of Appeal decisions mentioned in this article could be understood as potentially trying to influence (or restrict) the claim construction performed by national courts, more particularly, how the doctrine of equivalents may be applied.

In contrast, it must also be noted that other decisions, such as T 1819/89, still appear to support that the adaptation-of-the-description requirements and its consequences on Art. 84 EPC are not linked to Art. 69 EPC:

’When assessing clarity, Article 69 EPC is of no relevance since it is only concerned with the extent of protection conferred as one of the effects of an application or patent (chapter III of the EPC) whenever that extent is to be determined by whoever is competent to do so. Article 69 EPC is not by itself concerned with a requirement of the Convention to be met by an application or patent - in particular, unlike Article 84 EPC it is not concerned with the definition proper of the subject-matter sought to be protected by a claim. Moreover, even if it were possible, for the purpose of Article 84 EPC, to interpret the claims in the light of the description and drawings as provided for in Article 69 EPC in order to establish whether the conditions governing clarity have been satisfied, the board fails to see how that approach could lead to a lack of clarity of the claims (as opposed to a lack of clarity of the description) if the clear terms of the claims did not encompass subject-matter disclosed in the application or patent.’ (Emphasis added – cf. T 1819/89, r. 6)

Taking all these facts into account, it is my understanding that the current situation still calls for particular attention, especially because all these matters remain unresolved, and no question in that regard has been referred to the Enlarged Board of Appeal yet.

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