Abstract

In its granting procedures, the European Patent Office often requests that the patent description conforms to the claims granted. Amendments to the description are regularly motivated to comply with Art. 84 EPC, which requires support of the description.

Decisions T 1024/18 and T 1989/18 form two prominent polar opposites of narrow and wide interpretation of the description support criterion according to Art. 84 EPC. T 1024/18 argues that support of the description should not involve a reader being confronted with any information conflicting with the wording of the claims. This means that embodiments of the invention which are not consistent with the claims must therefore be deleted. In this context, additional information of a further non-covered embodiment is regarded as conflicting information. However, any of these reactive amendments can give rise to various legal problems that could even lead to a later revocation of the patent.

In contrast, the wide interpretation of T 1989/18 of the description support criterion does not require any post-grant amendments to the description and does not cause these legal problems.

I. Introduction

It is often postulated that the specification of a granted patent must conform to the granted claims. Amendments to the original description are frequently requested to help achieve this conformity. These amendments to the description are regularly motivated by the idea of compliance with Art. 84 EPC. Surprisingly, in the past the adaptation of the description was not considered necessary and was handled more liberally. Since Art. 84 EPC of year 1973 has never been changed in its wording, obviously a new modern interpretation of this article must have evolved over time.

Further, it is argued that later amendments to the description could also resolve the so-called ‘Angora Cat Problem’. This alleged difficulty results from the behavior of patent owners trying to favor a narrow interpretation of the claims during prosecution or invalidity actions to better distinguish them from the prior art (thus resembling a wet cat). However, during infringement proceedings they always defend a broader scope of the claims (therefore resembling a dry Angora cat with its long and silky fur).1

However, reactive amendments of a patent’s description can cause many problems. Firstly, every deletion of subject-matter – like every other amendment – can potentially amend the application in such a way that it contains subject-matter which extends beyond the content of the application as filed. Secondly, amending the description could cause a different interpretation when the patent is infringed under the doctrine of equivalents. Finally, explicitly rewording inconsistent passages to indicate that those passages are not part of the invention could be interpreted as an abandonment with substantive effect. This article discusses the most recent decisions of the Board of Appeal of the European Patents Office (EPO) on support of the description, classifies them, and highlights resulting inconsistencies and legal problems.

II. Article 84 EPC

The wording of Art. 84 EPC has been unchanged for 50 years. It stipulates that the claims must be clear, concise, and supported by the description. Clear and concise claims ideally do not rely on any description. The current Guidelines for Examination in the European Patent Office say that clarity applies to independent and dependent claims alike, and also to the claims as a whole. The clarity of the claims is of 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, i.e. without further reliance on any description.2

In doing so, each claim must be read giving the words the meaning and scope which they normally have in the relevant art. However, in particular cases the description may give the words a special meaning, by explicit definition or otherwise. If such a special meaning applies, it is required that the claim (i.e. not the description) is amended so that its meaning is again clear from the wording of the claim alone. This is important because it is only the claims of the European patent, not the description, which will be published in all the official languages of the EPO. The claim in itself must also be read with an attempt to make technical sense out of it. Such a reading may also involve a departure from the strict literal meaning of the wording of the claims. However, Art. 69 EPC and its Protocol do not provide a basis for excluding what is literally covered by the terms of the claims (see T 223/05).3

In this context, an interesting question is what applies if the description contains multiple differing definitions for the same feature. Could the applicant pick the one that best fits their purpose, include it in the claim, and neglect the others? By doing so, the applicant would automatically bring the amended claim in contradiction to the remaining description. The only stringent solution to this problem is that none of the multiple definitions is allowed to be included and the initial claim has again to be read giving the words the meaning and scope which they normally have in the relevant art.4

So far – according to the EPC – there might be a possible requirement for adapting the claims, but not for adapting the underlying description. However, Art. 84 EPC further requires that the claims are supported by the description.

III. Support of the description

1. History

The European Patent Convention (EPC) of October 5, 1973, provides an autonomous legal system according to which European patents are granted. Art. 84 of the EPC defines the claim requirements and is based on earlier Art. 6 PCT.5

PCT: Article 6 – The Claims

‘The claim or claims shall define the matter for which protection is sought. Claims shall be clear and concise. They shall be fully supported by the description.’

Initially it was intended to implement the PCT requirements concerning the description support criterion (as well as concerning clarity and conciseness) into the EPC Implementing Regulations, but to use a different wording that no claim may concern a matter not present in the description.6 Later – obviously in an attempt to better correspond to the original PCT wording – the sub-committee proposed the adoption of exactly the same wording of Art. 6 PCT and to move it from the Implementing Regulations to the Convention part itself.7 Then, most organizations regarded the full description support as an overly restrictive measure and asked the Working Party to examine deletion of the term ‘fully’ and replace it with less restrictive wording.8 This finally led to the current wording of Art. 84 within the EPC itself.9

EPC Art. 84 – Claims

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

Although the term ‘fully’ was not explicitly replaced by another term, there is no doubt about the legislator’s intent to prevent the description support criterion from being interpreted as narrowly as in the initial draft.10 Other documents regarding the PCT also do not teach how the description support criterion could be interpreted in a more specific way.11 Article 84 EPC has remained unchanged since that time. From history it remains unclear what support of the description specifically means.

2. Decisions

In the following all decisions of the European Patent Office from recent years addressing the construction of the description support criterion according to Art. 84 EPC are discussed. On the one hand there are decisions favoring a broad interpretation of the criterion that does not require particular adaptation of the description. On the other there are decisions that argue for a narrow interpretation of the criterion in which all inconsistent information is to be removed from the description. These different decisions give rise to the current controversy.

a) Broad interpretation

T 1989/18:

Decision T 1989/1812 addressed the question of how support of the description according to Art. 84 EPC should be interpreted. In this decision, the Board of Appeal had to investigate whether there was any legal basis for demanding an adaptation of the specification at all.13 The patent owner argued that the EPC does not require that parts of the description of an application which were no longer covered by grantable but amended claims must be marked as ‘non-related disclosure’ or even had to be deleted when adapting the description to those claims.14

The Board of Appeal decided that Art. 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, and it is inadmissible to claim any subject-matter which is not described. However, when assessing clarity, the description can neither 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.15 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. This view corresponds to what is currently expressed by the Guidelines for Examination in the EPO.16

Consequently, the Board ruled that Art. 84 EPC cannot serve as a legal basis for refusal. In addition, the Board did not find any other legal basis in R. 48(1)(c) EPC (R. 34(1)(c) EPC 1973) or R. 42(1)(c) EPC (R. 27(1)(d) EPC 1973 and R. 27(1)(c) EPC 1973, before and as of 1 June 1991, respectively) for refusing the application either.17 Accordingly, the Board allowed the appeal and remitted the case to the Examining Division with an order to grant the patent without any amendment of the description. This interpretation was also adopted in later decision T 1444/20.

T 1444/20:

In decision T 1444/2018 it was stated that the claims of a patent application define the matter for which protection is sought. This means that the claims must be clear in themselves for a person skilled in the art with common general knowledge of the technical field in question, without the need to refer to the description (T 412/03, Reasons 2.4.1). Article 84 EPC also requires the claims to be concise and be supported by the description.

The description must disclose the invention as claimed in such terms that the technical problem and its solution can be understood, and state any advantageous effects of the invention with reference to the background art. In line with the concept of a technical invention on which the EPC is founded, the first half-sentence requires the description to disclose how the invention can be understood as the solution to a technical problem.19 However, in the absence of an objection of lack of unity under Art. 82 EPC, this does not translate into a requirement to bring the description in line with claims intended for grant, and the removal of passages of the description that disclose embodiments which are not claimed.20

b) Narrow interpretation

T 1024/18:

Decision T 1024/1821 took a different view. Here the applicant was absent in the oral proceedings and previously filed an auxiliary request (auxiliary request II) but not a description adapted to this. The auxiliary request was considered as grantable in the oral proceedings.22 However, in the pending description a particular embodiment of the invention was disclosed that was not covered by the claims of this auxiliary request. The Board decided that at least this portion of the description would be inconsistent with the claims of auxiliary request, i.e. the claims were not supported by the description as required by Art. 84 EPC.23

The Board ruled that support by the description implies that the entirety of the description must be consistent with any claims (also referring to T0977/94, 6.1; T 0300/04, 5; T 1808/06, 2, first paragraph).24 Article 84 defines three equally relevant distinct requirements on claims, one of them being support by the description. Consequently, support by the description is an independent requirement of its own.25 Accordingly, the description must be consistent with the claims not only in some part but throughout. The Board further inferred that when amendments are made to the claims, the description must be made consistent with them, in the sense that a reader is not presented with any information conflicting with the wording of the claims. Thus, embodiments of the invention which are not consistent with the claims must therefore be deleted or must be clearly identifiable to the reader, for example by rewording of relevant passages to indicate that such passages are not, or are no longer, part of the invention.26 Surprisingly the Board did not find it appropriate to remit the case to the opposition division for the purpose of adapting the description and decided instead to revoke the patent.

An interesting view of the Board in this decision is also that Art. 84 EPC should be considered in the wider context of the EPC. Inconsistencies between the claims and the description could be the source of diverging interpretations regarding the scope of the claims because, according to Art. 69(1) EPC, the description is also to be considered when interpreting the claims in national proceedings. Accordingly, misinterpretation could be avoided if inconsistent information contained in the description or drawings is already removed in the proceedings at the EPO.

It is noted that the importance of Art. 84 EPC for the interpretation of claims in national proceedings is documented in the ‘travaux préparatoires’ of the EPC 1973. From there it emerges that a provision corresponding to the current Art. 84 EPC, which was originally part of the Implementing Rules, was later re-located to the Convention due to its ‘importance’ for national infringement proceedings (cf. BR/51/70, point 18).27 Thus, the description support requirement of Art. 84 EPC also serves to ensure legal certainty for national post-grant proceedings (as do the requirements of clarity and conciseness).28

However, this relocation affected Art. 84 EPC as a whole. Therefore, it cannot be argued that it was the sole intention to consider support by the description as equally important to clarity and conciseness for that purpose.29 Even if this demonstrated the general importance of support by the description, it is still unclear how this support would contribute to legal certainty for claims that should be already sufficiently certain (clear) in themselves.

T 2293/18:

Decision T 2293/1830 also dissented with T 1989/18 in favor of a narrow interpretation. During an appeal to an opposition decision an auxiliary request was filed without adapting the description to the new claims. The new claim referred to an identification mat formed from an injection-molded, amorphous plastic which can be more easily inscribed in contrast to partially crystalline plastic. This claim was considered sufficiently clear in itself in view of Art. 84 EPC.31 In contrast, the description disclosed that an amorphous partially crystalline blend is used as an amorphous plastic. This statement is – of course – contradictory in itself and with respect to the claim amendment since it literally expresses that an amorphous partially crystalline blend is in fact an amorphous plastic. However, according to the claim wording, the partially crystalline plastic should be explicitly excluded from the scope of protection. Thus, the description clearly contradicted the claim. The patent owner argued that amending the description was not required since claims were clear and contradictory description could not render them unclear.

The Board held referring to aforementioned decision T 1024/18 that support by the description is an individual and necessary requirement.32 This means that, within the claim, subject-matter must be claimed that has a basis in the description. This is to ensure that claims only contain subject-matter that a man skilled in the art recognizes as disclosed in the description and that is made available by it (T 409/91, 3.3. to 3.5). Support by the description thus guarantees that the claims represent an effective contribution to the prior art in a way that it can be carried out to the full extent of the claim (T 659/93, 3.4).33

From this it follows that the claims and the description are sections of a unitary document. They may contain differing information but must not contradict each other, since a contradicting description could again lead to unclear claims.34 According to the principle of legal certainty, if contradictions arise, the description must be amended so that all statements are removed that do not explain the (restricted) subject-matter and that are not usable for understanding the invention (T 113/92, 2 and T 636/97, 3). Further, the description must conform to the claims as a whole (referring to T 1024/18 and T 2231/09, 3.1.1 bis 3.1.10). These principles are also discussed in the new Guidelines for Examination, where different categories and examples of contradictions are discussed.35 Therefore, the new claim is not supported by the description as required by Art. 84 EPC.

T 0121/20:

In decision T 0121/2036 the respondent argued that no adaptation would be necessary, according to which inconsistencies in the description could not affect clarity of the claims, because these in themselves had to be clear.37

The Board explicitly agreed with the reasoning set out in decision T 1024/18. The criterion that the claims must be ‘supported by the description’ is not in any way subordinate to the requirement of ‘clarity’ of the claims. This includes the requirement that the description is consistent with the claims not only in some part but throughout. Thus, when amendments are made, the description must be made consistent with them in the sense that a reader is not presented with any information conflicting with the wording of the claims.

T 1516/20:

In decision T 1516/2038 the Board again directly referred to decision T 1024/18. The description must be consistent with the claims not only in some part but throughout. If amendments to the claims are made, the description must be brought in conformity so that a reader is not confronted with diverging information.

T 2766/17:

In decision T 2766/1739 the Board referred to T 977/94 and stated that if the description cannot be relied upon to resolve a clarity issue in a claim, this does not imply that the clarity of the claim cannot be affected if the description contains statements contradicting the plain wording of the claim. Hence, statements in the description contradicting the plain claim wording may cast doubts on the intended meaning of this wording.40

T 0977/94:

In decision T 0977/9441 it was decided that if claims are amended, it is essential that the description will be adapted to the claims due to the fundamental nature of the description. The description consists of a statement of the constituent elements of the invention, whereas the claims are intended to concisely define the matter for which protection is sought. It is therefore necessary to verify that there is identity of invention between the amended claims and the description or, in other words, that the constituent elements of the claimed invention are also described as such in the description.

T 978/16:

Decision T 978/1642 also dissented with T 1989/18. During the appeal proceedings regarding an opposition, a party explicitly requested that the description to the granted claims of the (non-amended) main request be adapted. The Board considered that the claim language must be interpreted in the context given in the claims and the description. However, this does not allow the conclusion that in cases where the claim language is clear and unambiguous but inconsistent with the description, Art. 69(1) EPC would provide a lever to arrive at a different interpretation of this claim language.43 To meet the requirement 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 which could render the scope of the claims unclear. Reference to embodiments no longer covered by amended claims must be deleted, unless these embodiments can reasonably be considered to be useful for highlighting specific aspects of the amended subject-matter. In such a case, the fact that an embodiment is not covered by the claims must be prominently stated.44 However, since the patent was maintained as granted, Art. 84 EPC could not be applied for any adaptation.

c) Different approaches

T 0169/20:

Decision T 0169/2045 followed a completely different approach. Here the support of the description criterion was not discussed in view of amending the description, but as an aid or support for understanding the subject-matter of the claims. From Art. 84 EPC it is implicitly derivable that the support of the description for interpreting the claims should only be resorted to in the exceptional cases where the subject-matter of the invention or its technical context needs to be clarified and may only be applicable when the invention in the description corresponds to the invention as claimed.46 Support of the description should not be used for restricting or modifying the subject-matter of the invention beyond what a person skilled in the art would understand when reading the wording of the claims within the relevant technical context.

While this provision is primarily applied to require that the claims be brought in line with the technical teachings of the description (i.e. due to an essential feature missing from the claim), or that the description be adapted to disclose the same invention as the claims, these issues ultimately seek to eliminate inconsistencies in order to enable the supporting function of the description as an aid for understanding the claims.47 If the wording of a claim is unclear for a person skilled in the art, the description may fulfil its supporting function by illustrating the meaning of the unclear feature/s. Conversely, when the wording of a claim is clear for the skilled person, the supporting role from the description is neither necessary nor justified. In addition, if the invention according to the description is narrower or different from that in the claim, the supporting role of the description under Art. 84 EPC cannot be fulfilled, since an interpretation on this basis would not represent an illustration of the subject-matter of the claim with the aid or support of the description, but instead a restriction or modification of the scope of the invention.

In particular, the wording of this provision explicitly limits the role of the description to an aid for understanding the subject-matter to be assessed under patentability, while implicitly confining this role to the exceptional cases where support of this kind is both necessary and possible. The support of the description should be resorted to only in case of need, since it is the wording of the claims which defines the matter for which protection is sought (i.e. the invention) and it would not be justified to seek help in understanding subject-matter which is in itself clear. Moreover, this support is only possible to the extent that the description and the subject-matter of the claimed invention correspond, so that the technical explanations in the description can serve to illustrate the meaning of the claimed features and not to limit or modify their scope with respect to what a person skilled in the art would understand when reading them.

IV. The Art. 123 EPC Problem (I)

According to Art. 69 EPC the extent of the protection conferred by a European patent shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims. The description and drawings are not only intended for the purpose of resolving an ambiguity found in the claims. However, claims do not serve as a mere guideline either. The actual protection does not extend to what the patent proprietor could have intended from a consideration of the description and drawings.48 Claim interpretation should define a position between these extremes which combines a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties. Consequently, Art. 69 EPC requires the national courts to use the description and drawings of the patent document to interpret the claims, i.e. the B-document.49

However, it is still not decided whether the original publication document can also be used for interpreting the granted claims in national proceedings, i.e. the A-document.50 If this would be the case differing documents could lead to different interpretations of the claims in infringement cases, for example when a restricting definition is removed in the patent document that was contained in the application document.

More importantly, description amendments that change the meaning of the claims could add matter contravening Art. 123(2) EPC.51 A claim having a wording that is essentially identical to a claim as originally filed could contravene the requirements of Art. 123(2) EPC if it contains a feature whose definition has been amended in the description in a non-allowable way. The specific definition of a feature, which according to the description is an overriding requirement of the claimed invention, is applied by a skilled reader to interpret this feature whenever it is mentioned in the patent.52, 53 Thus, if a claim interpretation based on the amended patent document is broader than that based on the originally filed document, a violation of Art. 123 (2) EPC results.54, 55 Every shift or extension of an interpretation with respect to its original understanding results in an Art. 12 (2) EPC problem. This can only be avoided if the new interpretation is in fact equal or narrower.

Consequently, reactively adapting the specification potentially always implies the danger of a differing interpretation of granted claims. Every little amendment – whether it be correcting a comma, rewording a feature, or omitting any information – could in principle lead to such a deviating interpretation.

For example, omitting a narrow, conflicting, or unusual definition of a feature in the description could lead to a broader general understanding of the claims. Thus, if amending the description modifies an interpretation there is a high risk of contravening Art. 123(2) EPC. However, in contrast, if an amendment does not lead to a different understanding of the claimed subject-matter, the amendment is in fact not necessary.

V. The Doctrine of Equivalents Problem (II)

The requirements for an infringement under the doctrine of equivalents (DoE) relevant practice differ in different jurisdictions. For example, German practice analyses the description for assessing an infringement. An infringement under the doctrine of equivalents is excluded when the description discloses several possibilities for achieving a technical effect but only one of these is claimed.56 If the claimed scope of protection is narrower than the content of the description, the public can have faith in a corresponding limitation.57 Features that are described but not claimed are effectively disclaimed. In this case an infringement under the doctrine of equivalents is excluded.

Also, in British Courts it is asked whether the notional addressee would have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention. Although the language of the claim is important, the specification of the patent is not to be excluded.58, 59

Consequently, amending the description in view of granted claims certainly affects the scope under the doctrine of equivalents. Removing non-covered embodiments from the description allows a wider scope of equivalent protection. The famous Pemetrexed decision60 would yield a different result in this case.61

VI. The abandonment problem (III)

Decision T 1024/18 suggests deleting or rewording of inconsistent passages to indicate that such passages are not – or are no longer – part of the invention. This raises the question whether deletion or rewording have to be treated differently. The mere deletion of subject-matter in the parent application is not prejudicial to the later filing of a divisional application. However, when deleting subject-matter, the applicant should avoid any statements which could be interpreted as abandonment with substantive effect, thereby impeding the valid filing of a divisional application for that subject-matter.62 In deleting subject-matter from an application, the applicant should avoid any statement which could be interpreted as abandonment of that subject-matter, because the subject-matter cannot be reinstated.63

Obviously, rewording should explicitly express the applicant’s intent that non-covered embodiments are in fact not part of the invention to comply with the description support criterion. This could again be interpreted as an explicit abandonment of this subject-matter. If such excluding statements are used, it must be asked at which time the excluded embodiments are no longer part of the invention. Does this come into effect retroactively at the date of filing the application, i.e. ex tunc, or at the moment of expressing the intent, i.e. ex nunc? Does this somehow affect filing of divisional applications? Does it make a difference if embodiments are deleted without any further comment?

VII. Narrow versus wide interpretation

Decisions T 1024/18 and T 1989/18 form two prominent poles of narrow and wide interpretation of the description support criterion. T 1024/18 argues that support of the description means that a reader is not confronted with any information conflicting with the wording of the claims. Embodiments of the invention which are not consistent with the claims must therefore be deleted. In this context, additional information of a further non-covered embodiment is obviously already regarded as conflicting information. In contrast, the wide interpretation of T 1989/18 does not require any post-grant amendments to the description.

The question of how to interpret the description support criterion is related to the question of whether claims have ultimate primacy over the description and if clear claims can be rendered unclear by a differing description. However, if it is assumed that the understanding of the claims is somehow influenced by the description, amending it can potentially always cause the aforementioned problems.

The wide interpretation of the description support requirement has worked well in recent years. Many national patent systems do not demand reactive amendments to the description when granting a patent.64, 65 In most cases, the description is essentially maintained as originally filed. For example, in German or US proceedings the patent document regularly corresponds to the filed original document except for the claims and prior art references. Most importantly, a non-amendment of the description definitely cannot lead to an inadmissible extension caused by Art. 123 EPC or alter the outcome of an infringement under the doctrine of equivalents. A persistent interpretation can be guaranteed, although the reader might face some inconsistencies between the claims and the description.

Modern narrow interpretation, in contrast, causes numerous problems and raises unresolved questions. First of all, every amendment to the description is potentially a dangerous operation since it can cause an Art. 123 EPC problem. In addition, infringement under doctrine of equivalents is affected by altering the descriptions in some Member States. Secondly, narrow interpretation of the description support, as discussed in T 1024/1, does not teach how to handle the description either.

Even if it is considered as a criterion that is as important as clarity, what is meant by ‘conflicting’ or ‘inconsistent’ information is not defined. Using the term ‘inconsistent’ information just involves replacing the vague term ‘description support’ with another imprecise one. How do we interpret ‘inconsistent’ or ‘conflicting’ if even additional information is seen as this kind of information? How can we solve the problem if this inconsistent information is embedded in complex text passages that do not coincide with the wording of the claims? From these passages, conflicting information cannot be removed. If this is the case, it is impossible to reactively adapt the description. Consequently, such applications must be refused. Or should one application having a complex description be allowed, while an application structured the other way is refused due to non-compliance with the description support criterion? In the past there were also patents in which none of the described embodiments were literally covered by the claims as granted.66 Is the description to be completely deleted in these cases?

The requirement of removing any conflicting information to a maximum end would require each and every additional feature that is not explicitly covered by the claims to be removed. The description would then ideally correspond more or less identically to the claims. The patent remedy to a description support objection would then be to refile the granted claims once again – but now as an adapted description. Thereby it could always be guaranteed that the patent document does not include any conflicting information. However, claim-like language no longer seems to be allowed either.67

If claims and description coincide, then any other description would be completely irrelevant for claim interpretation. However, aside from formal requirements, the applicant could now also file an explicit statement that the original description is to be disregarded and granted claims should replace the description. And to take it even further, the application could then also be filed without a (irrelevant) description from the very beginning of the granting procedure. Do we need a description that is irrelevant because it corresponds to the claims? The final conclusion from all this could be that any description could be omitted since it could lead to a different interpretation than the claims itself.

VIII. Summary

In view of the above we might ask ‘Why the heck do we have to adapt the specification at all?’68 ‘Why can’t we leave the description support as it was?’ and ‘Why should it be necessary nowadays to mess around with the description?’

Decision T 1024/18 is not the only truth with regard to the description support criterion. This decision is contradictory and inconsistent in itself, since it argues that clear claims can be rendered unclear by an inconsistent description. But this is already the same logical fallacy as stating in the description that an amorphous material could be non-amorphous. Clear claims remain clear claims, even when read in combination with an inconsistent subordinate description. Even if inconsistencies occur, any person skilled in the art – i.e. the reader – can easily identify these. However, unclear claims – i.e. claims that cannot be interpreted – can be fixed by a clear description. To this end the description serves as a backup. Therefore, all decisions favoring the modern interpretation of the description support criterion should not be regarded as somehow relevant for future cases.

Claim interpretation is a mentally exhausting process which requires assessing all relevant and available information. Each court must interpret claims independently in infringement proceedings.69 It is not unusual for different courts to interpret even the same claims based on the same description differently. This problem cannot be solved by presenting the ‘reader’ with a description without any conflicting information. By retroactively amending the description national courts always face the question of whether the granted patent is subject to an inadmissible extension and how to handle infringements under the doctrine of equivalents. Further, it remains unclear what consequences statements have that explicitly mark embodiments as not being part of the technical teaching, i.e. the invention. Modern interpretation of the description support criterion does not improve legal certainty, as was originally intended. Playing around with the description leads to further deterioration.

We should return to the T 1989/18 approach and handle the description as content that should somehow allow an interpretation of the claims. Every claim must have its basis in the description so that a person skilled in the art is able to extend the particular teaching of the description to the whole scope of the claimed invention. Inconsistencies do not harm since a reader can easily identify them and cope with them. Costly adaptation of the description to the claims in contrast harms legal certainty and wastes precious resources.

Concerning the description support criterion, the EPO caused a lot of confusion. On the one hand, the description must be consistent with the claims, while on the other, claim-like language is again prohibited in the description. Consequently, a person skilled in the art nowadays simply does not know which and how any content should be included within the description. Compared with other Patent Offices, the EPO is the wrong-way driver.

Footnotes

1

Cristina López Mosquera, ‘Bringing the description in line with the scope of claims?’ (2/2023) EPI Information 23.

2

Guidelines EPO (March 2023) F‑IV, 4.1.

3

Guidelines EPO (March 2023) F‑IV, 4.2.

4

Oliver Baldus, ʻZur Definition von Begriffen in Patentanmeldungen – Der Mut zur Auslegung’ [2018] Mitteilungen der deutschen Patentanwälte 261-64.

5

TP EPC 1973, BR/GT 1/52 e/70, art 66 (former art 68), No 3, Form and Contents of Claims, p 25 and art 66 (No 3 p 4) p 28.

6

TP EPC 1973, BR/GT 1/52 e/70, Re. art 66 (No 3 p 4) p 28.

7

TP EPC 1973, BR/51 e/70, No 18.

8

TP EPC 1973, BR/168 e/72, No 92, p 35.

9

TP EPC 1973, BR/177 /72, No 42 and BR/125 e/71, No 172.

10

Martin Wilming, ‘Has the requirement that claims be “supported by the description” been perverted over time?’ (3/2022) EPI Information 7.

11

World Intellectual Property Organization (WIPO) Records of the Washington Diplomatic Conference on the Patent Cooperation Treaty 1970.

12

Case T 1989/18 – Adaptation of the Description/HOFFMANN-LA ROCHE ECLI:EP:BA:2021:T198918.20211216.

13

Wilming (n 10) 8.

14

Adaptation of the Description/HOFFMANN-LA ROCHE (n 12) VII.

15

Adaptation of the Description/HOFFMANN-LA ROCHE (n 12) 5.

16

Guidelines EPO (March 2023) F‑IV, 4.1.

17

Adaptation of the Description/HOFFMANN-LA ROCHE (n 12) 8 and 9.

18

Case T 1444/20, 28 April 2022, ECLI:EP:BA:2022:T144420.20220428.

19

ibid 3.2.2.

20

ibid 3.2.3.

21

Case T 1024/18, 1 March 2022, ECLI:EP:BA:2022:T102418.20220301.

22

ibid 3.1.3.

23

ibid 3.1.5.

24

ibid 3.1.1.

25

ibid 3.1.7.

26

ibid 3.1.10.

27

cf Section 3.1 – History.

28

Case T 1024/18 (n 21) 3.1.9.

29

Wilming (n 10) 8.

30

Case T 2293/18, 31 March 2022, ECLI:EP:BA:2022:T229318.20220331.

31

ibid 3.2.

32

ibid 3.3.1 to 3.3.5.

33

ibid 3.3.5.

34

ibid 3.3.5.

35

Guidelines EPO (March 2023) F-IV, 4.3.

36

Case T 0120/20, 11 March 2022, ECLI:EP:BA:2022:T012120.20220311.

37

ibid 10.2.

38

Case T 1516/20, 16 May 2022, ECLI:EP:BA:2022:T151620.20220516.

39

Case T 2766/17, 17 March 2022, ECLI:EP:BA:2022:T276617.20220317.

40

ibid 6.

41

Case T 0977/94, 18 December 1997 – Adaptation de la description/TECHNOGENIA ECLI:EP:BA:1997:T097794.19971218.

42

Case T 0978/16, 7 July 2021, ECLI:EP:BA:2021:T097816.20210707.

43

ibid 2.3.

44

ibid 2.3.

45

Case T 0169/20, 23 January 2023 – Pouch with inner container/RECKIT, ECLI:EP:BA:2023:T016920.20230123.

46

ibid No 2.

47

ibid 1.2.5.

48

Protocol on the Interpretation of art 69 EPC of 5 October 1973 as revised by the Act revising the EPC of 29 November 2000.

49

National principles for interpreting the claims are outlined in Special edition 3 of OJ EPO 2011, pp 168, C. Interpretation of claims – relevance of art 69 EPC.

50

Pro: Georg Benkard, Patentgesetz: PatG (12th edn, CH Beck 2023) § 14, No 37; contra: Thomas Kühnen, ‘Die Erteilungsakte - Verbotenes oder gebotenes Auslegungsmittel bei der Schutzbereichsbestimmung europäischer Patente?ʼ [2012] GRUR 664.

51

Case T 0471/20, 19 October 2021, ECLI:EP:BA:2021:T047120.20211029, 2.4.

52

Case T 0500/01, 12 November 2003 – Humanized Immunoglobulins/PROTEIN DESIGN LABS, INC. ECLI:EP:BA:2021:T047120.20211029, 11 to 15.

53

Case Law of the Boards of Appeal [CLB] (10th edn, July 2022) 1.14.4 Shift in the interpretation of a claim by amendment to the description.

54

German Federal Patent Court (Bundespatentgericht), 13 March 2006 – 1 Ni 10/04 (EU). The Court investigated whether a deletion of parts of the description leads to a broader understanding of a feature. However, in this case no inadmissible extension was found.

55

Ensygnia v Shell [2023] EWHC 1495 (Pat), The Patentee amended the description to state that some of the embodiments and figures were ‘outside the scope of the claims’ to bring the description in line with the amended claims. It was decided by the Court that the statement ‘outside the scope of the claims’ added matter to the application as filed and also extended the scope of protection beyond the patent as granted.

56

Federal Supreme Court (BGH), 10 May 2011 ‒ X ZR 16/09, [2011] GRUR 701 – Okklusionsvorrichtung.

57

Federal Supreme Court (BGH), 31 May 2007 ‒ X ZR 172/04 ‒ Zerfallszeitmessgerät; referring to BGHZ 150, 149, 159 ‒ Schneidmesser I.

58

Actavis UK Limited v Eli Lilly [2017] UKSC 48.

59

Peter Meier-Beck, ‘“Pemetrexed”: Grundstein einer einheitlichen europäischen Äquivalenzdoktrin?’ [2018] GRUR 241.

60

Federal Supreme Court (BGH), 14 June 2016 ‒ X ZR 29/15, [2016] GRUR 921 ‒ Pemetrexed.

61

Mosquera (n 1).

62

Guidelines EPO (March 2023) C‑IX, 1.3.

63

Guidelines EPO (March 2023) H‑III, 2.5; J 15/85, confirmed in G 1/05 and G 1/06.

64

Wilming (n 10) 9.

65

E SCP/22/4, 5 May 2015, Standing Committee on the Law of Patents Twenty-Second Session Geneva, 27 to 31 July 2015, Study on the Sufficiency Of Disclosure, ‘59. The meaning of the term “the claims shall be fully supported by the description” is largely similar in most jurisdictions. In general, the term 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 description and drawings. The examination guidelines of some offices also add that the scope of the claims must not be broader than is justified by ‘the contribution to the art’.

66

Federal Supreme Court (BGH), 14 October 2014 ‒ X ZR 35/11, [2015] GRUR 159 – Zugriffsrechte. Granted Patent EP 1 186 189 claimed subject-matter having the features A, B and C. A first described embodiment included feature A and B. A second described embodiment included feature A and C. In view of the granted claim none of the two embodiments was literally covered. However, in view of the description the German court decided to interpret the claim as a subject-matter that comprised feature A and feature B or C.

67

Guidelines EPO (March 2023) F-IV, 4.4.

68

Martin Wilming, ‘For discussion: Has the requirement that claims be «supported by the description» been perverted over time?’ (patentlitigation, 24 May 2022) <https://www.patentlitigation.ch/for-discussion-has-the-requirement-that-claims-be-supported-by-the-description-been-perverted-over-time/> accessed 15 February 2024.

69

Federal Supreme Court (BGH), 2 June 2015 – X ZR 103/13, [2015] GRUR 972 – Kreuzgestänge.

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