Key points
- An applicant appealed on the issue of adaption of the description. "The examining division decided that the main request was not allowable because pages 30 to 38 of the description comprised claim-like clauses and therefore infringed what was stipulated in the Guidelines F-IV, 4.4 (in the version of March 2021) and lead "to unclarity as to the actual scope of protection (Article 84 EPC)".
- Pages 30 to 38 of the description consist of claim-like clauses.
- Guidelines F-IV, 4.4 provides that such claim-like clauses are not permitted.
- " The board is of the view that examples 1 to 63 described on pages 30 to 38 cannot be mistaken for claims (either by patent professionals, such as patent attorneys, patent examiners or patent judges, or the public) since it is evident that they are a part of the description and because they are not denoted as "claims"."
- "the examples described on description pages 29 to 38 are to be treated in the same way as any other part of the description. There is no justification for deleting them just because they were drafted as claim-like clauses"
- The Board also includes this as a general headnote 1 and explicitly states that the current Guidelines are not consistent with this case law (and that the Guidelines of March 2023, section F-IV, 4.4 "are contradictory" in always requiring that such clauses are deleted while also stated that such claim-like structures may give rise to a lack of clarity. "It appears, thus, that the Guidelines acknowledge that claim-like clauses do not necessarily and inevitably give rise to a lack of clarity. However, the Guidelines require deleting such clauses or amending them to "avoid claim-like language"."
- "The idea that the description is entirely unnecessary for claim interpretation is unrealistic and simply "wishful thinking", just like the case law expecting claims to be clear in themselves."
- The Board confirms established practice, in an extensive reasoning leading to the following headnote 2: It is a general and overarching objective, and as such also a "requirement" of the Convention, that authorities, courts and the public interpreting the claims at a later stage should, as far as possible, arrive at the same understanding of the claimed subject-matter as the EPO bodies deciding on the patentability of the same subject-matter. The only tool for achieving this objective is the patent specification as the expression of a unitary legal title. The description, as an integral part of the patent specification, should therefore also serve this overriding objective, i.e. it should provide a common understanding and interpretation of the claims. If the description contains subject-matter which manifestly impedes a common understanding, it is legitimate to insist on its removal under Articles 84 and 94(3) EPC and Rules 42, 48 and 71(1) EPC.
- "The board approves the practice where instead of a direct removal, i.e. the deletion of the subject-matter not covered by the claims, a "removal" by way of an appropriate statement is made, leaving the technical disclosure unaffected."
- This serves the needs of applicants who need technical information from non-claimed embodiments for the purposes of Art.83.
- "An established way might be to use expressions like "not encompassed by the wording of the claims","
- "The board is also not convinced that the effort required to remove the inconsistencies would be disproportionate. It is the appellant's choice how much matter is included in the claims and how much additional matter is left in the description. Furthermore, it does not seem plausible that the examination would seek to meticulously identify even the smallest inconsistency. Rather, it is to be expected that the applicant will be invited to remove only obvious inconsistencies which have become apparent during the substantive examination of the claims for novelty and inventive step, at a stage when both the examiner and the applicant are likely to be familiar with the application."
- I recommend reading the entire decision, which can be found after the jump (with a few comments added).
EPO
The link to the decision is provided after the jump, as well as (an extract of) the decision text.
source http://justpatentlaw.blogspot.com/2024/01/t-043822-adapting-description-to-claims.html
