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The latest version of the Guidelines – deletion or marking of unclaimed embodiments

M. Nyberg (SE), Senior Patent AttorneyM. Nyberg (SE), Senior Patent Attorney

1 Introduction

The latest version of the Guidelines for Examination in the European Patent Office (GL) entered into force on 1 March 2022.

The first paragraph in the latest version of GL F-IV 4.3 reads:

"Any inconsistency between the description and the claims must be avoided if it could throw doubt on the subject-matter for which protection is sought and therefore render the claim unclear or unsupported under Art. 84, second sentence, or, alternatively, render the claim objectionable under Art. 84, first sentence."

According to the latest version of GL F-IV 4.3 (i)-(iii) an inconsistency exists already if the description discloses an embodiment that is not covered by the matter defined by the claims and it is required that such embodiments are deleted from the description or marked as not falling with in the matter for which protection is sought.The latest version of GL F-IV 4.3 (iii): "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.", underline added.The latest version of GL F-IV 4.3 (iii): "The applicant must remove any inconsistencies by amending the description either by deleting the inconsistent embodiments or marking them as not falling within the subject-matter for which protection is sought. See paragraph (i) above for the case where an inconsistency can be removed by broadening the claims.", underline added. This approach is supported in e.g. T 1808/06.

The latest version of GL F-IV 4.3 refers to Art. 84 EPC, which reads:

"The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description."

As a contrast to the latest version of GL F-IV 4.3 and e.g. T 1808/06 it is argued herein that there is in fact no basis in Art. 84 EPC for requiring deletion or special marking of an embodiment in the description just because the embodiment is not included in the claimed matter for which protection is sought.

2 The claims define the matter for which protection is sought

Art. 84 first sentence EPC states that the matter for which protection is sought is defined by the claims, i.e. not by the description or any other part of the application. The matter for which protection is sought is not necessarily the same as the matter for which protection is granted. Similarly, the matter for which protection is sought is not the same as the extent of protection of a claim as determined under Art. 69 EPC. Indeed, it is stated obiter dicta in G 1/98 that the subject-matter of a claim may not be equated with the scope of protection of a claim in an infringement situation.G 1/98 reasons point 3.1: "Clearly, it is not the wording but the substance of a claim which is decisive in assessing the subject-matter to which the claim is directed. However, it does not follow that the subject-matter of a claim may be equated with the scope of a claim. In assessing the subject-matter of a claim, the underlying invention has to be identified.", underline added.G 1/98 reasons point 3.3: "The referring Board saw no alternative, when examining a claim for the purpose of Article 53(b) EPC, to construing the claim in the same way as when considering novelty and inventive step (Reasons, point 15). For the sake of clarity, it should be noted that the approach taken by the referring Board is not an "infringement test", contrary to the appellant's submissions. In order to exclude from patenting subject-matter which is not novel or inventive, all embodiments within the claims must be examined. In contrast, the question of infringement arises when a specific embodiment is alleged to be within the scope of the claimed invention. In this case, the features of the allegedly-infringing embodiment have to be compared with the features of the relevant claim according to the rules of interpretation applied by the Courts responsible for deciding on infringement cases. This may include examining whether a feature of the claim is realized in equivalent form.", underline added. In addition, G 1/03 refers to the preparatory work of the EPC, which indicates that the EPO is not a competent body to assess the scope of protection of a patent.G 1/03 reasons point 2.1.1: "Although the difference between the approaches may be said to originate from different patent philosophies, evaluating the interests of the earlier and the later applicant, his competitors and the public differently (van Empel, supra, point 100), the final decision opting for the whole contents approach as described above was based on two practical considerations. First, the prior claim approach entails a substantial delay in the examination of the later application, because it can only be applied after the decision giving the final drafting of the claims of the prior application. This was considered to imply an intolerable period of uncertainty, in particular in a system of deferred examination, which was under discussion at the Luxembourg Inter-Governmental Conference (Pfanner, supra, at p. 251). Second, the EPO was not a competent body to assess the scope of protection of the patent, since this had to be determined for the comparison with the later application under the prior claim approach pursuant to the applicable national law.", underline added. In short, Art. 69 EPC is not concerned with the definition of the matter for which protection is sought that is to be examined under the EPC.T 1989/18 reasons point 6: "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.", underline added.See Case Law of the Boards of Appeal of the European Patent Office, Ninth Edition, July 2019 (Case Law) page 314: "T 2/80 (OJ 1981, 431) pointed out that a claim did not comply with the requirement of clarity laid down in Art. 84 EPC 1973 if it was not, per se, free of contradiction. It had to be possible to understand the claims without reference to the description (see also T 412/03, T 129/13). In decision T 454/89 the board shared this view and explained that Art. 84 EPC 1973 requires that claims must be clear in themselves when read using normal skills, including knowledge of the prior art but not any knowledge derived from the description contained in the patent application or the amended patent. While it was true that Art. 69 EPC 1973 allowed the description to be used to interpret the claims, it was only concerned with the extent of protection conferred as one of the effects of an application or patent whenever that extent had to be determined, particularly for third parties. It was not concerned with a claim's definition of the matter for which protection was sought, as was Art. 84 EPC 1973. In the course of the examination of an opposition, therefore, the applicant or patentee could not rely on Art. 69 EPC 1973 as a substitute for an amendment which would be necessary to remedy a lack of clarity. The board took the same line in decision T 760/90.", underline added. Accordingly, the words "extent of protection" in the previous GL F-IV 4.3 have been changed to "subject-matter for which protection is sought" in the latest version of GL F‑IV 4.3, seemingly to avoid any reference to Art. 69 EPC and the language therein.The latest version of GL F-IV 4.3 first paragraph (deletions in strike-through and additions underlined): "Any inconsistency between the description and the claims must be avoided if it could throw doubt on the subject-matter for which protection is sought and therefore render the claim unclear or unsupported under Art. 84, second sentence, or, alternatively, render the claim objectionable under Art. 84, first sentence.”.

Instead, Art. 84 first sentence EPC should rather be understood as an axiomatic definition according to which it is the claims and no other part of the application that define the matter for which protection is sought. In other words, according to Art. 84 EPC it is the claims that define the matter that is to be examined for compliance with the requirements of the EPC.

Thus, even if the claims should amount to pure nonsense it is still the claims and no other part of the application that define the matter for which protection is sought. Of course, no patent will be granted for nonsense claims but this is hardly because the claims do not define the matter for which protection is sought as required in Art. 84 EPC, but rather because other requirements of the EPC are not fulfilled, e.g. that nonsense claims do not define any invention as required in Art. 52(1) EPC and/or that such claims are not clear as required in Art. 84 second sentence EPC and/or that such claims are not drafted in terms of the technical features of the invention as required in Rule 43(1) EPC etc.

In view of the above it is not obvious how an inconsistency between the description and the claims can render the claims objectionable under Art. 84 first sentence EPC for not defining the matter for which protection is sought, as seemingly suggested in the latest version of GL F-IV 4.3.The latest version of GL F-IV 4.3 first paragraph: "Any inconsistency between the description and the claims must be avoided if it could throw doubt on the subject-matter for which protection is sought and therefore render the claim unclear or unsupported under Art. 84, second sentence, or, alternatively, render the claim objectionable under Art. 84, first sentence.", underline added. To the contrary, according to Art. 84 first sentence it seems that the claims per definition always define the matter for which protection is sought regardless of possible deficiencies in the matter defined by the claims and regardless of the content of the description.

3 The claims shall be clear

Art. 84 second sentence EPC states that the claims shall be clear. However, there is no condition in Art. 84 EPC that associates the clarity requirement with the description. To the contrary, Art. 84 EPC only mentions the description for the additional requirement that the claims must also be supported by the description.T 1989/18 reasons point 5: "Article 84 EPC only mentions the description in the context of the additional requirement that it must support the claims. Under this requirement, the subject-matter of the claim must be taken from the description, it being inadmissible to claim any subject-matter which is not described.", underline added.

This is seemingly in line with Rule 43(6) EPC stating that: "Except where absolutely necessary, claims shall not rely on references to the description or drawings in specifying the technical features of the invention.".

This is seemingly confirmed by G 1/04 stating that the features of a claim should be clear for the person skilled in the art from the wording of the claim alone, i.e. without any reference to the description.G 1/04 reason point 6.2: "In the present context, it is further to be considered that Article 84 EPC requires that the claims define the subject-matter for which patent protection is sought, and that they must be clear. It signifies that an independent claim within the meaning of Rule 29 EPC should explicitly specify all of the essential features needed to define the invention, and that the meaning of these features should be clear for the person skilled in the art from the wording of the claim alone.".

This is further supported by several T-decisions.T 1989/18 reasons point 4: "First and foremost, Article 84 EPC requires that the claims are clear, i.e. that they properly define and delimit the subject-matter for which protection is sought in understandable and unambiguous terms. 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 (see e.g. decision T 454/89, Reasons, point 4.1 (vii)).", underline added.See Case Law of the Boards of Appeal of the European Patent Office, Ninth Edition, July 2019 (Case Law) page 314: "T 2/80 (OJ 1981, 431) pointed out that a claim did not comply with the requirement of clarity laid down in Art. 84 EPC 1973 if it was not, per se, free of contradiction. It had to be possible to understand the claims without reference to the description (see also T 412/03, T 129/13). In decision T 454/89 the board shared this view and explained that Art. 84 EPC 1973 requires that claims must be clear in themselves when read using normal skills, including knowledge of the prior art but not any knowledge derived from the description contained in the patent application or the amended patent. While it was true that Art. 69 EPC 1973 allowed the description to be used to interpret the claims, it was only concerned with the extent of protection conferred as one of the effects of an application or patent whenever that extent had to be determined, particularly for third parties. It was not concerned with a claim's definition of the matter for which protection was sought, as was Art. 84 EPC 1973. In the course of the examination of an opposition, therefore, the applicant or patentee could not rely on Art. 69 EPC 1973 as a substitute for an amendment which would be necessary to remedy a lack of clarity. The board took the same line in decision T 760/90.", underline added.See Case Law of the Boards of Appeal of the European Patent Office, Ninth Edition, July 2019 (Case Law) page 314: "In T 1129/97 (OJ 2001, 273), the board held that the mere fact that the precise meaning of an unclear term ("low alkyl") was expressly disclosed in the description but not in the claims did not mean that the latter met the clarity requirement. The clarity stipulation under Art. 84 EPC 1973 concerned only the claims, and therefore - according to the established case law of the EPO boards of appeal - required that they be clear in themselves, without there being any need for the skilled person to refer to the description. True, under Art. 69(1) EPC 1973 the description was to be used to interpret the claims. But Art. 69 EPC 1973 concerned only the extent of protection where this was at issue, e.g. with third parties, and not (as in Art. 84 EPC 1973) the definition of the matter to be protected by a claim. Confirmed in T 56/04, T 64/03, T 1265/13.", underline added.

Support for this approach can also be found in GL F-IV 4.1."GL F-IV 4.1 Clarity
The requirement that the claims must be clear applies to individual claims, i.e. to independent and dependent claims alike, and also to the claims as a whole. The clarity of the claims is of the utmost importance in view of their function in defining the matter for which protection is sought. Therefore, the meaning of the terms of a claim must, as far as possible, be clear for the person skilled in the art from the wording of the claim alone (see also F-IV, 4.2). In view of the differences in the scope of protection which may be attached to the various categories of claims, the division must ensure that the wording of a claim leaves no doubt as to its category.", underline added.

For example, assume that an embodiment A is defined by a claim that is fully clear to a person skilled in the art from the wording of the claim alone. Also, assume that embodiment A is disclosed in the description. It is then doubted that the claim becomes unclear simply because the description discloses an additional embodiment B that is not covered by the claim, as seemingly suggested in the latest version of GL F-IV 4.3 (iii).The latest version of GL F-IV 4.3 (iii): "The applicant must remove any inconsistencies by amending the description either by deleting the inconsistent embodiments or marking them as not falling within the subject-matter for which protection is sought. See paragraph (i) above for the case where an inconsistency can be removed by broadening the claims.", underline added. Similarly, if a feature Ax in a claim is clear from the wording of the claim alone, then it is doubted that this claim-feature becomes unclear simply because Ax is described in the description using words like "preferably", "may" or "optionally" or similar, as seemingly suggested in GL F-IV 4.3 (iii).GL F-IV 4.3 (iii): "Moreover, features required by the independent claims may not be described in the description as being optional using wording such as "preferably", "may" or "optionally". The description must be amended to remove such terms if they make a mandatory feature of an independent claim appear as being optional.", underline added. Indeed, if a claim clearly defines embodiment A with feature Ax it seems equally clear that embodiment A is to be examined for compliance with the requirements of the EPC, not some other additional embodiment B that may also be disclosed in the description. Of course, there may be situations where the extent of protection as determined under Art. 69 EPC may be negatively or positively affected by the presence of an additional embodiment B in the description that is not covered by the claims. However, as noted in section 2 above, Art. 69 EPC is not concerned with the definition of the matter for which protection is sought that is to be examined for compliance with the requirements of the EPC, as is the case with Art. 84 EPC.See footnotes 6 and 7 above.

Thus, a mere inconsistency between a claim and the description as indicated above should not be enough in itself to affect the clarity of the claim, except possibly in some special cases. This understanding of clarity and inconsistencies (discrepancies) between a clear claim and the description is seemingly confirmed in case law.T 1989/18 reasons point 5: "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.", underline added.See Case Law of the Boards of Appeal of the European Patent Office, Ninth Edition, July 2019 (Case Law) page 310: "A discrepancy between the claims and the description is not a valid reason to ignore the clear linguistic structure of a claim and to interpret it differently (T 431/03) or to give a different meaning to a claim feature which in itself imparts a clear credible technical teaching to the skilled reader (T 1018/02, T 1395/07, T 1456/14).", underline added.See Case Law of the Boards of Appeal of the European Patent Office, Ninth Edition, July 2019 (Case Law) page 310: "In T 2221/10 the board referred to established case law according to which the description can be used as the patent's "dictionary" to assess the correct meaning of ambiguous terms used in claims (see in this chapter II.A.6.3.3). However, if a term used in a claim has a clear technical meaning, the description cannot be used to interpret such a term in a different way. In case of a discrepancy between the claims and the description, the unambiguous claim wording must be interpreted as it would be understood by the person skilled in the art without the help of the description.", underline added.See Case Law of the Boards of Appeal of the European Patent Office, Ninth Edition, July 2019 (Case Law) page 310: "In T 197/10 the board explained that if the claims are worded so clearly and unambiguously as to be understood without difficulty by the person skilled in the art, there is no need to use the description to interpret the claims. In the event of a discrepancy between the claims and the description, the unambiguous claim wording must be interpreted as it would be understood by the person skilled in the art without the help of the description. Thus, in the event of a discrepancy between clearly defined claims and the description, those elements of the description not reflected in the claims are not, as a rule, to be taken into account for the examination of novelty and inventive step.", underline added. After all, as noted at the beginning of this section 3, there is nothing in Art. 84 EPC that associates the clarity requirement with the description. Consequently, it seems that the clarity requirement in Art. 84 EPC cannot be invoked for requiring deletion or special marking of additional embodiments in the description simply because the embodiments are not included in the matter defined by the claims, as is seemingly mandated in the latest version of GL F-IV 4.3 (iii).The latest version of GL F-IV 4.3 (iii): "The applicant must remove any inconsistencies by amending the description either by deleting the inconsistent embodiments or marking them as not falling within the subject-matter for which protection is sought. See paragraph (i) above for the case where an inconsistency can be removed by broadening the claims.", underline added.

The above relates to clear claims. If a claim is not clear to a person skilled in the art from the wording of the claim alone then the description may indeed come into play, e.g. to interpret the claim and/or to support possible claim amendments etc. However, it seems reasonable to assume that a claim shall be clear to a person skilled in the art using common general knowledge and that any minor doubt or remote interpretation of a claim or claim feature should not render the claim unclear.

4 The claims shall be supported by the description

Art. 84 second sentence EPC states that the claims shall be supported by the description. As noted in section 2 above, the claims define the matter for which protection is sough and this is the matter that is to be examined for compliance with the requirements of the EPC, not the extent of protection of a claim as determined under Art. 69 EPC.

  • safe-guards that the claims do not cover any subject-matter which, after reading the description, would still not be at the disposal of the person skilled in the art.T 26/81 reasons point 4: "Starting with the interpretation of Article 84 EPC, it must be remembered that this article states a requirement in respect of the claims and not of the description. Since most claims are generalisations of examples disclosed in the description, the purpose of this provision must be seen as safe-guarding that the claims do not cover any subject-matter which, after reading the description, still would not be at the disposal of a skilled person. Undoubtedly, there may be cases where the lack of disclosure of a technical problem could lead to the conclusion that the claims lack support by the description.", underline added.
  • ensures that the monopoly given by a granted patent generally corresponds to the invention which has been described in the application, and that the claims are not drafted so broadly that they dominate activities which are not dependent upon the invention which has been described in the application.T 133/85 reasons point 5: "Thus, the requirement in Article 84 EPC that the claims shall be supported by the description is of importance in ensuring that the monopoly given by a granted patent generally corresponds to the invention which has been described in the application, and that the claims are not drafted so broadly that they dominate activities which are not dependent upon the invention which has been described in the application.", underline added.
  • is concerned with the permissible width of the claims having regard to the disclosure in the description.T 301/87 reasons point 3.3: "As regards (ii), Article 84 EPC reads: "The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description". This requirement is on its face quite distinct from the requirement of Article 83 EPC discussed above. Essentially, this requirement under Article 84 EPC is concerned with the permissible width of the claims having regard to the disclosure of the patent in its description.", underline added.
  • requires that the subject-matter of the claims must be taken from the description and that it is inadmissible to claim any subject-matter which is not described.T 1989/18 reasons point 5: "Article 84 EPC only mentions the description in the context of the additional requirement that it must support the claims. Under this requirement, the subject-matter of the claim must be taken from the description, it being inadmissible to claim any subject-matter which is not described.", underline added.

The above cited case law is also reflected in GL F-IV 6.1 and GL F-IV 6.3.GL F-IV 6.1: "The claims must be supported by the description. This means that there must be a basis in the description for the subject-matter of every claim and that the scope of the claims must not be broader than is justified by the extent of the description and drawings and also the contribution to the art (see T 409/91).", underline added.GL F-IV 6.3: "As a general rule, a claim is regarded as supported by the description unless there are well-founded reasons for believing that the skilled person would be unable, on the basis of the information given in the application as filed, to extend the particular teaching of the description to the whole of the field claimed by using routine methods of experimentation or analysis.", underline added.

For simplicity, the case law and the GL referred to above may be summarized as in T 26/81 stating that: "... the claims are not allowed to cover any subject-matter which, after reading the description, would still not be at the disposal of the person skilled in the art".See footnote 24 above.

In view of the reason behind the support requirement in Art. 84 EPC as indicated in case law and in the GL referred to above it seems that the extent of the description can be wider than the width of the claim without affecting the support for the claim.

For example, assume that an embodiment with an electrical motor is defined by a clear claim that is supported by the description, since the description fully discloses the embodiment with an electrical motor. It is then doubted that the claim becomes unsupported simply because an additional embodiment with a combustion engine is also disclosed in the description, as seemingly suggested in the latest version of GL F-IV 4.3 (iii).The latest version of GL F-IV 4.3 (iii): "Example: Independent claim defines a vehicle with a broad feature of a "motor", together with other features. The description and the drawings comprise Embodiment 1, in which the vehicle has an electric motor, and Embodiment 2, in which the vehicle has a combustion engine. During the prosecution, in order to fulfil the requirements of inventive step, the independent claim is amended to specify a vehicle employing an electric motor since the combination of claimed features using a combustion engine was anticipated by the prior art. Embodiment 2 is no longer consistent with the independent claim, unless it can be inferred from this embodiment that the combustion engine is used in combination with the electric motor. This inconsistency can be rectified either by removing Embodiment 2 from the description and drawings or by marking Embodiment 2 as not being covered by the claimed subject-matter (e.g. "Embodiment 2 is not covered by the subject-matter of the claims" or similar wording).". To the contrary, it seems that the embodiment with the electrical motor is expressly disclosed in the description as an alternative at the disposal for the skilled person. It is hardly the case that the embodiment with an electric motor is not at the disposal for the skilled person simply because an additional embodiment with a combustion engine is also disclosed in the description. Similarly, if a claim defines feature Ax it is doubted that Ax becomes unsupported just because Ax is described in the description using words like "preferably", "may" or "optionally" or similar, as seemingly suggested in GL F-IV 4.3 (iii).GL F-IV 4.3 (iii): "Moreover, features required by the independent claims may not be described in the description as being optional using wording such as "preferably", "may" or "optionally". The description must be amended to remove such terms if they make a mandatory feature of an independent claim appear as being optional.", underline added. To the contrary, it seems that Ax is expressly disclosed in the description as an alternative at the disposal for the skilled person.

Thus, a mere inconsistency between a claim and the description as indicated above should not be enough in itself to affect the support of the claim, except possibly in some special cases. After all, it is the claims that shall be supported by the description, not the description that shall be supported by the claims. Thus, there seems to be no basis in Art 84 EPC for requiring that every embodiment that is disclosed in the description must be included in the matter defined by the claims.T 1989/18 reasons point 13: "In view of the above considerations, the board fails to see how the aforementioned provisions of the EPC, or any others, can lead to the requirement that embodiments disclosed in the description of an application which are of a more general nature than the subject-matter of a given independent claim must constitute potential subject-matter of a claim dependent on that independent claim.", underline added. Conversely, if a clear claim is supported by the description as indicated above there seems to be no basis in Art. 84 EPC for requiring any deletion or special marking of additional embodiments in the description simply because they are not included in the matter defined by the claim, as is seemingly mandated in the latest version of GL F-IV 4.3 (iii).The latest version of GL F-IV 4.3 (iii): "The applicant must remove any inconsistencies by amending the description either by deleting the inconsistent embodiments or marking them as not falling within the subject-matter for which protection is sought. See paragraph (i) above for the case where an inconsistency can be removed by broadening the claims.", underline added.

However, even if a mere inconsistency between a claim and the description as indicated above should generally not be enough in itself to affect the support of the claim, the claim may nevertheless be unsupported by the description if there are other issues, for example:

  • if the claim is contradicted by the description (e.g. the description specifies that the invention can be used in a first data network but not in a second data network, but the second data network is nevertheless claimed);
  • if the claim defines an embodiment that is presented in the description as not being part of the invention (e.g. the embodiment is described as belonging to the state of the art or as a comparative example for understanding the invention);
  • if the claim lacks a feature that is presented in the description as essential for the invention;See e.g. T 133/85, T 409/91, T 939/92, T 322/93, T 556/93, T 583/93, T 659/93, T 482/95, T 616/95, T 586/97, T 687/98, T 1076/00, T 637/03.
  • if there is a lack of disclosure of a technical problem;T 26/81 reasons point 4: "Starting with the interpretation of Article 84 EPC, it must be remembered that this article states a requirement in respect of the claims and not of the description. Since most claims are generalisations of examples disclosed in the description, the purpose of this provision must be seen as safe-guarding that the claims do not cover any subject-matter which, after reading the description, still would not be at the disposal of a skilled person. Undoubtedly, there may be cases where the lack of disclosure of a technical problem could lead to the conclusion that the claims lack support by the description.", underline added.
  • etc.

5 Summary and Conclusions

In section 2 above it was argued that Art. 84 EPC specifies that the claims always define the matter for which protection is sought regardless of possible deficiencies in the matter defined by the claims and regardless of the content of the description. Thus, it was questioned how any inconsistency between the description and the claims can have the effect that the claims do not define the matter for which protection is sought?

In section 3 above it was noted that Art. 84 EPC does not associate the clarity requirement with the description. It was argued that the claims shall be clear to a person skilled in the art from the wording of the claims alone and that a claim will not become unclear simply because the description contains additional embodiments that are not encompassed by the claimed matter. It was concluded that the clarity requirement in Art. 84 EPC cannot be invoked for generally requiring deletion or special marking of embodiments in the description that is not covered by the claimed matter.

In section 4 above it was argued that for the claims to be supported by the description they are not allowed to cover any matter which, after reading the description, would still not be at the disposal of the person skilled in the art. It was further argued that a claim will not become unsupported simply because the description contains additional embodiments that are not encompassed by the claimed matter. It was concluded that the support requirement in art. 84 EPC cannot be invoked for generally requiring deletion or special marking of embodiments in the description that is not covered by the claimed matter.

It should be added that a general deletion or special marking of embodiments in the description that are not covered by the claims may result in extensive and difficult amendments with considerable work for the applicant and the EPO examiners. Indeed, embodiments and their features are often described in an entangled manner making it difficult to clearly separate one embodiment from another and/or to isolate a feature to a particular embodiment. Thus, there is a significant risk that a general deletion or marking of uncovered embodiments creates new combinations (e.g. intermediate generalizations) and/or contexts and/or meaning of terms or features that are not previously disclosed in the application, thus violating Art. 123(2) EPC under which the application (i.e. not only the claims but also the description and the drawings) cannot be amended such that it contains subject-matter which extends beyond the content of the application as filed. Also, a general deletion or marking of uncovered embodiments at examination may have undesirable implications post grant. The matter for which protection is sought under Art. 84 EPC is not the same as the extent of protection as determined under Art. 69 EPC, with the effect that embodiments that are not covered by the mere "wording" of the claims under Art. 84 EPC may still fall within the extent of protection under Art. 69 EPC. If such embodiments are deleted or marked as "not part of the invention" or similar at examination it may be hard to later argue that such embodiments nevertheless fall within the extent of protection, which then may be unduly restricted.

It is proposed that GL F-IV 4.3 is revised once more.

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