On topical Article 84 issues

Francis Hagel (FR)

The 2021 revision of the EPO Guidelines F-IV 4.3 (i) - (iii) has made it a requirement to adapt the description after claim amendments to remove “inconsistencies” between the description and the amended claims, based on an expanded interpretation of the support requirement of Article 84 EPC. This has triggered conflicting decisions of the Boards of Appeal, some of them holding that this interpretation is correct, others that it has no basis whatsoever in the EPC. Critical comments have been voiced by users, but the EPO has writ large paid no attention so far, as clear from the recently published draft 2023 Guidelines.

In epi Information 2/2022, Mikael Nyberg has laid out compelling arguments showing that the requirement that unclaimed embodiments be deleted from the description or marked as such has no legal basis in the EPC.

In epi Information 3/2022, Martin Wilming has provided in-depth analysis of the Travaux Préparatoires leading to the 1973 initial text of the EPC and highlighted that the EPO current practice is isolated in Europe and is significantly different from the practice set out in the PCT ISPE Guidelines applicable to the PCT phase of euro-PCT applications.

Boards of Appeal decisions issued after Martin Wilming’s article deserve attention. We will add to a cursory discussion of these decisions some personal views on practical and policy issues and suggestions.

Discussion of recent decisions

T 2194/19 issued on 24 October 2022 disagrees with the requirement as set out in the Guidelines. It equates “inconsistency” and “contradiction” between the description and the claims. It actually relies on the clarity requirement of Article 84 in combination with the support requirement. The requirement for removing “inconsistencies” from the description is then justified only if parts of the description make the language of the claims unclear, it is not justified when the language of the claims is clear in itself.

Another significant element of T 2194/19 is that the burden of proof is on the Examining Division, which must explain why the inconsistency it requires the applicant to remove would make the language of the claims unclear. The fact that an embodiment or alternative option disclosed in the description is not covered by the claims is not a sufficient motivation, absent a specific showing by the Division that this makes the language of the claims unclear.

The reasoning of this decision parallels the sensible approach of the PCT ISPE Guidelines section 5.29 mentioned in Martin Wilming’s article. The requirement for removing inconsistencies is not justified by reference to hypotheticals, i.e. if the inconsistency could cause doubt. In that case, it can be overlooked. It is only justified if the inconsistency causes doubt (in the present tense, i.e. if it does cause doubt).

It is of note that the PCT ISPE Guidelines are applicable to the PCT phase of PCT applications, including those in which the EPO is the ISA. For practitioners, it would clearly be an improvement if the EPO practice regarding the EPO phase was brought in line with the PCT Guidelines.

T 3097/19 issued on 16 November 2022 increases the confusion resulting from previous conflicting decisions. In essence, it shifts the rationale for the requirement to adapt the description, from the initial argument relying on the support prong of Article 84 to a “creative” interpretation of the first sentence of Article 84, supposedly calling for a “precise determination” of the scope of protection.

This shift seems to reflect a view of the Board that the reliance on the support requirement in previous decisions does not justify the requirement to adapt the description to claim amendments and has no basis in the EPC. It is a fairly extraordinary development – and we dare say an embarrassing one for the Boards and the EPO as a whole – when those Boards of Appeal which support the EPO practice as set out in the Guidelines diverge so clearly over the rationale for this practice. The global picture which emerges is that the adaptation of the description has to be completed, irrespective of the rationale which is put forward to justify it and of whether it has a basis in the EPC.

The Board’s interpretation of the first sentence of Article 84 calling for a “precise determination of the scope of protection” goes far beyond the clarity requirement, which merely requires for the terms of a claim to be clear when taken in their ordinary meaning. It is settled case law of the Boards of Appeal that a claim is allowed to be broad without violating the clarity requirement of Article 84. The call for a « precise determination of the scope of protection » is thus at odds with the compatibility in accordance with settled case law between a broad scope and clarity.

It is also surprising that the Board (Reason 28.1) has ignored the established case law regarding the interpretation of the first sentence of Article 84, i.e. the claim must mention all essential features (GL F-IV 4.3 (ii), citing T 32/82). And this is a requirement for the claims, not for the description. This is not in line with RPBA 2020 Article 20(2) which suggests that the Board shall provide an explanation when it departs from the Guidelines.

This decision also asserts the truly burdensome requirement for the applicant to adapt the description alongside each claim amendment.

Practical and policy issues

1. Generally speaking, the EPO practice of requiring description adaptation after claim amendments appears to contradict the extremely stringent approach of the EPO in the assessment of inadmissible new matter under Article 123(2). The support requirement of Article 84 acts as an effective bulwark against the addition of new matter. Admissibility of amendments is to be assessed by reference to the content of the application as filed, particularly to its description. Amendments to the description, especially substantive amendments, have the potential of creating Article 123(2) issues, particularly in view of the very strict approach of the EPO.

Risks are compounded by the Examining Divisions’ frequent practice of making amendments at the Rule 71(3) stage to speed up the process without prior consultation with applicants. It is clear that the applicant remains responsible for the text as granted and may challenge such amendments, however this is a difficult decision at such a late stage of proceedings, because this entails additional delay and costs.

2. Furthermore, it is apparent that the “legal security” concern alleged by the EPO to justify its practice can be depicted as an attempt to interfere with the competence of national courts as to the interpretation of the claims of granted patents especially in infringement proceedings. This is very explicit from T 1024/18 Reason 3.1.9 and also clear from the EPO’s press release of 7 July 2022https://www.epo.org/news-events/news/2022/20220707.html. Such attempt goes against the established case law and it is an overreach.

It seems in this respect that the EPO’s objective in the deletion of unclaimed embodiments from the description is to create the equivalent of a disclaimer or a prosecution estoppel preventing a patentee to recapture ground. It is significant to note here the UK Supreme Court Pemetrexed decision of 12 July 2017 (Actavis vs Eli Lilly)https://www.supremecourt.uk/cases/docs/uksc-2015-0181-judgment.pdf and the unusual consensus of European national courts (no less than the courts of Switzerland, Italy, Germany, Sweden, Austria, Finland, Denmark, Portugal, Spain, Netherlands (except in the first-level District Court of the Hague) and France) which have followed suit. The consensus of national courts has been that a restrictive amendment of the claims to a specific Pemetrexed salt during examination did not preclude, for the assessment of infringement, a broader scope including another salt, based on equivalents or on the choice of the salt considered a secondary feature, as in the decision of the Paris judiciary court of 11 September 2020https://www.doctrine.fr/d/TJ/Paris/2020/JURITEXT000043759835. In addition, the courts dismissed the argument of a prosecution estoppel linked to the claim restriction, holding that the restriction was only aimed at addressing a formal matter and was not needed for distinguishing over the prior art.

A case in point is also l’Oréal v. RN Ventures, UK Patents Court of 5 February 2018, [2018] EWHC 173 (Pat)https://www.bailii.org/ew/cases/EWHC/Patents/2018/173.html which relates to a case in which the description was adapted to the claims and the prosecution history was cited by the defendant to challenge an interpretation broader than the words of the claims. The court dismissed this argument by referring to the above-cited Pemetrexed UK decision, stating that the consideration of the prosecution history in infringement proceedings was the exception, not the rule.

3. It is also to be stressed that the EPO practice is based on a logical flaw. Article 84 is applicable to the claims of an application and is not a ground for opposition or for challenging the validity of a patent. It is established case law that the interpretation of the claims during examination must be based on the ordinary meaning of the words, provided they are clear to the skilled person. This was once again affirmed in recent decision T 2502/19 issued on 19 December 2022 (Reason 2.2): “…the claims should be taken by themselves, i.e. without relying on the description and drawings, and tested against the broadest possible or objectively reasonable construction which would occur to the skilled reader. This is because Article 84 EPC stipulates that the matter for which protection is sought is defined by the claims. It does not require to rely on any other part of the application documents.“

That being the case, it is illogical to base on Article 84 the requirement to delete unclaimed embodiments, since in the context of Article 84 which is applicable to pending applications, the interpretation of the claims is the broadest possible and does not rely on the description, making description amendments irrelevant. For the EPO’s requirement to delete unclaimed embodiments or remove inconsistencies to have any effect, the context should imply that the claims are interpreted in the light of the description under Article 69 EPC, but this applies to granted patents and is outside the remit of the EPO.

4. Substantive amendments of the description generate undesirable legal insecurity as to the interpretation of claims under Article 69 EPC, for which national courts are competent and which as said above is outside the remit of the EPO (except in the infrequent need for assessment of compliance of post-grant amendments in opposition proceedings with Article 123(3) EPC). According to Article 69, the claims are interpreted in the light of the description. A literal reading implies that the description referred to in Article 69 is the description of the patent, possibly including substantive amendments. But this opens up an inconsistency, since the description to be relied upon in the assessment of the substantive conditions of the EPC is the description of the application as filed. This entails legal insecurity.

5. As pointed out above, amendments of the description fall prey to the new matter trap of Article 123(2) EPC, and this is true for claim amendments as well. This is illustrated in T 1473/19 issued on 30 September 2022. In this case, the Board revoked a granted patent by finding inadmissible new matter for an amendment which had been entered by the Examining Division as part of the Rule71(3) Communication with a seemingly minor oversight (a missing comma). Such mitigating circumstances were not taken into account by the Board, which illustrates how stringent the assessment of new matter can be.

Other typical examples of iatrogenic revocations may arise as a result of the ban of such words as “substantially” and “approximately” required by Guidelines F-IV 4.7. For example, if the Examining Division deletes in a claim the word “substantially” in “substantially vertical” and the description never discloses a strictly vertical geometry, this can considered inadmissible new matter in accordance with the EPO’s very strict approach of compliance with Article 123(2).

It is also of note that national courts may find there is new matter whenever an amendment alters the interpretation of the claims by the court (see UK Manual of patent practice Section 76)https://www.gov.uk/guidance/manual-of-patent-practice-mopp/section-76-amendments-of-applications-and-patents-not-to-include-added-matter.

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