Christmas is a season for rest, family gatherings, warm wishes, hopes and good cheer. These days, children and adults alike may be preparing their wish list for Father Christmas. One of the gifts that patent aficionados are expecting with excitement for 2023 is a clear answer to the questions referred to the EPO Enlarged Board of Appeal (“EBA”) in case T 116/18 (i.e. plausibility). Unless the final answers are clear and consistent with decades of EPO case law, they will do no good to legal certainty, the legal principle the EBA is expected to cherish.
Due to the historical inclination of some of the EPO’s Technical Boards of Appeal (“TBA”) to embark into waters that are uncharted in the European Patent Convention (“EPC”) and/or the Implementing Regulations which, according to article 164 of the EPC, are part of the former, there is a possibility that Father Christmas may bring new referrals for the EBA. These “voyages” might have been charted at the behest of TBA Decision T 2194/19 of 24 October 2022 which, deviating from other TBAs, has highlighted that neither the text of the EPC nor the Implementing Regulations provide a legal basis for requiring the adaptation of the description to the scope of protection of the claim(s) finally granted. Certainly, one could not cite the Guidelines for Examination as an alleged legal basis. This is because, as it is widely known, the Guidelines lack any force of law. A different question is that many applicants may decide to adapt the description to the claim(s) finally granted for reasons of convenience and/or to avoid delays in the examination procedure.
As the TBA highlighted in paragraphs 6.1 to 6.2 of T 2194/19, one thing is that the “invention claimed” (which may not necessarily be the same thing as the “invention”) must have support in the description, but a different thing is that all the “embodiments” of the description have to be covered by the claims as granted. According to the TBA, the latter conclusion “[…] cannot be derived from the EPC“. And it may have a point. So, in view of the divergence of views among several TBAs on this topic, if Father Christmas is making his list (of gifts for patent aficionados) and checking it twice, a referral to the EBA on this topic may top the list.
Until -if and when- that referral arrives, may we wish our readers all the best for the Christmas season and lots of health and good luck in the New Year.
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Father Christmas might bring a nice gift in the form a new referral on the issue of description amendments, provided that the EBoA will follow the EPC and not a political agenda, as it did recently with cases G 2/19, 3/19 and 4/19, in which case the gift could be poisoned.
Merry Christmas and peaceful new year!
It is worrying that the EPO has money and resources to deal with such matters, and the money comes from the applicants’ fees: I would rather lower than wasting them like this. It seems to me just a way of distracting attention from real and substantial quality problems. Are there cases where the description affected a decision at national level? And I am not talking about evident contradictions with the claims which should be in any case ruled out before a patent is granted (and which perhaps even a formality officer or an AI routine could spot …)
The problem is that Board 3.5.03, which drafted decision T 2194/19, is not known for balanced and well thought-out decisions. These folks shoot from the hip. As long as no other Board takes the same line, there is unlikely to be any referral to the Enlarged Board of Appeal, IMHO.
On this topic, recent decision T 3097/19 issued on 16 November 2022 by Board 3.5.06 is to be signalled. It increases the confusion resulting from conflicting decisions to a level which should be considered embarrassing by the EPO. In essence, it shifts the rationale for the requirement to adapt the description from the initial reliance on the support-in- the-description prong to a creative interpretation of the 1st sentence of Article 84, calling for a « precise determination » of the scope of protection.
This seems to reflect a view of the Board that the reliance on the support in the description in previous BOA decisions is a weak argument and indeed, it undermines this argument.
It is also surprising that the Board (Reason 28.1) has ignored the established case law regarding the interpretation of the 1st sentence of Article 84. According to GL F-IV 4.3 (ii), the 1st sentence is to be interpreted as requiring for the claim to mention all essential features. This makes sense. That it is established case law is clear from the reference to T 32/82 (see Reason 15) of 1984, and T 977/94 restates this interpretation. This is a requirement for the claims, not for the description.
Another remark is that the required « precise determination » of the scope of protection is meaningless when expressed in abstract, out of a specific context. The in-depth interpretation or « construction » of claims by national courts in infringement proceedings or other litigation is focused on the specific term(s) of the claim over which the parties disagree as to their meaning. What terms will be disputed before a court cannot be predicted by the EPO, and this is no EPO business. The argument of improving « legal security » for stakeholders is thus illusory.
As to the likelihood of a referral to the EBA, some people more knowledgeable than I am regarding routes to the EBA doubt it will ever happen. And if it happened, this would likely leave the EPO isolated vis-à-vis national patent offices on this issue, to the detriment of European patent applicants.
The level of confusion calls for a reckoning and exploration of alternative solutions to resolve the divide between BOAs, which in itself generates significant legal uncertainty, let alone the risk of new matter potentially raised by amendments to the description.
The EPO’s 2023 objectives include work towards convergence with European patent offices on a number of topics (« Convergence of Practice programme »). It would be desirable to look at the topic of description adaptation within this programme, with the goal of defining a common practice.
In this respect, a valuable source of inspiration is the PCT ISPE Guidelines, section 5.29, which requires adaptation of the description only when inconsistencies cause doubt as to the meaning of the terms of the claims (not just if inconsistencies could cause doubt), and implies that the onus is on the Examining Division to justify an amendment. It is of note that the PCT Guidelines are binding on EPO examiners during the PCT phase of euro-PCT applications, not afterwards.
Dear Mr Montana,
T 2194/19 is one of the three decisions which considered that the description does not have to be adapted to the claims. The two other are T 1989/18 and T 1444/20. The only positive point in T 2194/19 is that the requirements to adapt the description will have to be justified, but this is certainly not a scoop.
T 2194/19 is no more than an interpretation worth any other interpretation as long as it is not backed by a decision of the EBA. Trying to find support for this thesis by referring to G 1/08, which deals with the exceptions under Art 53(b), and G 1/07 which deals with surgical methods under Art 53(c) is an attempt which however fails to convince.
We have thus on the one side three isolated decisions, with on the other side a bulk of decisions to the contrary. As example of this contradictory line of case law, it is possible to quote T 1024/18, Reasons 31.6-3.10. T 1024/18 takes expressly the opposite view of T 1989/18. T 1024/18 is exemplary of what can be considered an established line of case law. There are plenty more decisions of the same kind.
Whether many applicants may decide to adapt the description to the claim(s) finally granted for reasons of convenience and/or to avoid delays in the examination procedure is actually irrelevant. It simply is the way the vast majority see the situation.
Adaptation of the description is not only necessary in examination, but also in opposition. It is not infrequent that a board decides on the wording of the claims in which the patent can be maintained in amended form, but also remits for what? For the adaptation of the description! T 1024/18 is a good example in opposition.
When it comes to a referral, there are only two ways possible. Either a question is referred to the EBA by the president or by a board.
Whilst it can be agreed that the Guidelines are not the law, they express the understanding of the law by the EPO and applies to divisions of first instance. As the present practice is enshrined in the Guidelines and backed by a long line of case law, it is difficult to see the president of the EPO referring a corresponding question to the EBA.
The only possibility for a referral will have to come from a board. I am curious to see whether a board, or better some legal members of the boards will be able to push the other members of a board to refer a corresponding question to the EBA. I do somehow have my doubts.
Even in case of a referral, it has first to be admitted and the reply may depend a lot on the questions, although the EBA has now for quite a while rewritten the questions referred to it. My guess is that the EBA might be prone to follow the long line of case law, rather to put everything upside down. This was for instance the case when it came to adopt undisclosed disclaimers. The EBA simply endorsed the existing line of case law.
Believing in a referral looks more or less believing in Father Christmas. I would say we have passed the age for it.
This does however not withhold me to wish you all the best for the Christmas season and lots of health and good luck in the New Year.
By the way, I have commented T 2194/19 and others, going in the opposite direction in my own blog: https://blog.ipappify.de/
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