Key points
- There is currently some controversy between the uses and the EPO persons in charge of the Guidelines as to how (precisely) the description must be adapted to the (amended) claims before grant in particular if non-claimed embodiments must be deleted or prominently marked as not according to the invention.
- Board 3.3.04 takes position in this decision, curiously enough issued with code [D] and without headnote (credits to the DeltaPatents blog; also extensively discussed by IPKat).
- The applicant/appellant (in house counsel) argued that: “The EPC did not require that parts of the description of an application which were no longer covered by the set of amended claims on which an examining division intended to grant a patent had to be marked as "non-related disclosure" or even had to be deleted when adapting the description to those claims.”
- The Examining Division refused the application because the applicant did not adapt the description as required according to the Ex. Div.
- The Board: “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. ... Thus, Article 84 EPC cannot serve as a legal basis for the refusal.”
- “As per Rule 42(1)(c) EPC (Rule 27(1)(d) EPC 1973 and Rule 27(1)(c) EPC 1973, before and as of 1 June 1991, respectively) the description shall disclose the invention, as claimed, in such terms that the technical problem, even if not expressly stated as such, and its solution can be understood, and state any advantageous effects of the invention with reference to the background art. ”
- “However, in the absence of an objection of lack of unity under Article 82 EPC, the board fails to see how the above-mentioned provision could be the legal basis for requiring the applicant, as a general rule, to bring the description in line with claims intended for grant, and to remove passages of the description that disclose embodiments which are not claimed. ”
- “The board has also considered Rule 48(1)(c) EPC (Rule 34(1)(c) EPC 1973) as a possible legal basis requiring the adaptation of the description. Under Rule 48(1)(c) EPC, a European patent application shall not contain any statement or other matter obviously irrelevant or unnecessary under the circumstances. According to both the wording and history of this provision, it is concerned not with the contents of granted patents but with patent applications. ”
- “ 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. The board accordingly concludes that the decision under appeal is erroneous and is to be set aside.”
- As a comment, credits to the applicant for challenging the established first instance practice.
- However, I'm not sure if this decision will become established case law. Let's see if other Boards follow.
- Board 3.3.09 recently in T 1399/17, not cited in the present decision: “ Article 84 EPC requires that the claims be supported by the description. This also applies to claims which have been amended in opposition (Article 101(3)(a) EPC). A mandatory feature of claim 1 is that the dietary fat be a blend of natural fats. However, the specification of the patent as amended in the oral proceedings does not reflect this. Therefore, it casts doubts on the scope of the claim. ... On the basis of this alone, it is manifest that the description of the patent does not comply with the requirement of Article 84 EPC. Consequently, the main request is not allowable.”
- The present decision does not engage with T1808/06, headnote and r.2: "In order to meet the requirement of Article 84 EPC that the claims have to be supported by the description, the adaptation of the description to amended claims must be performed carefully in order to avoid inconsistencies between the claims and the description/drawings which could render the scope of the claims unclear."
T 1989/18 -
Reasons for the Decision
Admissibility of the appeal
1. The appeal complies with the requirements of Article 108 EPC and Rule 99 EPC and is admissible.
source http://justpatentlaw.blogspot.com/2022/01/t-198918-no-need-to-adapt-description.html
