Key points
- In this examination appeal, the Board finds an auxiliary request allowable, but the applicant did not file an adapted description.
- The Board: "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".
- " under a systematic interpretation of the EPC, the function of the claims, as defined in Article 84 EPC, is only achieved when the potentially conferred scope of protection can be determined precisely. Whether this is the case for a specific patent application (or an amended patent) can only be made with due consideration of the description."
- "if a claim is directed to something which is different than that described to be the invention, then the application for grant is self-contradictory, and it can be questioned for which matter the protection is actually sought. For the scope of protection to be determined precisely, the definition provided by the claims of the matter for which protection is sought must therefore be consistent with the definition of the invention provided by its description"
- "the Board disagrees with the conclusions in T 1989/18, but rather concurs with the conclusions expressed in, especially, T 1024/18 and T 2766/17. It also disagrees with the conclusions of T 2194/19 (catchword), inasmuch as it considers necessary that embodiments said to be "of the invention" must fall within the scope of the claims", i.e. (as I understand it) the present Board considers the phrase "embodiments of the invention" in the description to mean, to the skilled person, "embodiments falling within the scope of the claims".
- The Board acknowledges that "the often {but incorrectly, see *} expressed requirement that the claims be clear "from the wording of the claims alone" appears to be hardly compatible with the idea {underlying the Boards reasoning} that the patent (application) must be read "as a whole"" (the curly brackets {} indicating my analysis)
- * - "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"."
- "The Board considers that these statements cannot literally be correct, for the reasons given above, and rather concurs with the qualification in the Guidelines for Examination, F-IV, 4.1, according to which "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".
- "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)."
- "in the case at hand the way the invention is described in the description is inconsistent with the wording of the claims. As a consequence, the Board is convinced that the scope of protection cannot be determined precisely, due in particular to conflicting statements as to which features constitute the invention (see point 23a) and b)) and to the sweeping statement that new embodiments of the invention can be obtained by combining technical means (see 23 c)). Therefore, in the absence of an adapted description, the requirements of Article 84 EPC are not met."
- The Board, in the headnote: "The purpose of the claims to define the matter for which protection is sought (Article 84 EPC) imparts requirements on the application as a whole, in addition to the express requirements that the claims be clear, concise and supported by the description. 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. Whether this is the case for a specific patent application (or an amended patent) can only be decided with due consideration of the description. Claims and description do not precisely define the matter for which protection is sought if they contradict each other"
EPO
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.
source http://justpatentlaw.blogspot.com/2022/11/t-309719-on-need-to-adapt-description.html
