18/10/2022
The question of whether an applicant is required to amend the description of their patent application such that it conforms to the claims (i.e., to remove or explicitly disclaim embodiments or examples that do not, or no longer, fall within the scope of the claims) has recently been considered in a number of EPO decisions.
T1989/18 was the first decision from the Board of Appeal to thoroughly consider not just how the description should be amended to conform to the claims, but whether in fact there is any basis in the EPC for this requirement at all. However, only one subsequent decision citing T1989/18 has agreed with it: T1444/20 which considered a relatively specific topic (claim like clauses) and had the same legal member as T1989/18.
When compared to the subsequent decisions that have disagreed with T1989/18, three points in particular have emerged where the Boards have diverged. Firstly, there is the question of what it means for the claims to be supported by the description. It is on this point that T1024/18 (and subsequently T0121/20 and T1516/20 refer to T1024/18) as well as T2293/18 disagree with T1989/18. The second point of contention is whether the description can render otherwise clear claims unclear, discussed in T2766/17. The final point, also arising in T1024/18, is whether A. 69(1) EPC implies a general principle that the description should be taken into account when interpreting the claims.
What does it mean for the claims to be “supported by the description”?
With respect to the support requirement, T1989/18 was relatively brief, stating that this means that the subject matter of the claims must be taken from the description:
“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.”
The Board did not explicitly state that the description need not be limited to the subject matter of the claims to be supported. This is implicit in the decision, however, at least from the statement that “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 statement clearly implies, and indeed requires, that it is possible for claims to be supported by a description that contains unclaimed subject matter.
It is on this point in particular that T1024/18 disagrees with T1989/18. In T1024/18, the Board state that:
“Merely providing a part of the description which gives support to the claims appears to be at odds with the wording “supported by the description”.”
A number of arguments are then raised in the following paragraph. Firstly, the Board states that having one part of the description support the claims is at odds with the claims being supported by “the description” but would instead lead to the claims being supported by “a part of the description”. They then say that the view taken in T1989/18 would “in essence negate the general meaning of the words “supported by the description”” and that it would reduce the support requirement to a de minimis requirement. However, just as a number of points are raised by the Board in T1024/18, a number of flaws in their reasoning are also present.
The first point above tries to make a distinction between claims being supported by just a part of the description or the whole description. This line of reasoning clearly fails because the entirety of the description can never support the claims in the manner the Board insist it should. According to R. 42(1)(b) EPC, the description must disclose background art which, by its nature, cannot be claimed. The EPC makes no distinction between the part of the description disclosing the background art and the part of the description disclosing the invention – R. 42 EPC simply states that both must be in the description. Therefore, it is necessarily the case that only a “part” of the description can ever support the claims, and so A. 84 EPC cannot be read as requiring the whole description support the claims.
Turning to the Board’s comment that the stance taken in T1989/18 would lead to a de minimis requirement, no reason is provided as to why this cannot be the case. It must be remembered that the description must also sufficiently disclose the invention, and so together the support and sufficiency requirements would ensure that the description appropriately describes the claimed invention, even were the support requirement only a de minimis requirement. There is, therefore, no fundamental reason why the support requirement cannot be a de minimis requirement.
Finally, and perhaps most tenuously, the Board also refer to the “essence…of the general meaning of the words “supported by the description””, though they do not elaborate on what they consider this to be. In fact, it could well be argued that it is the Board’s take on the words “supported by the description” in T1024/18 that could be considered at odds with their general meaning.
With respect to the Board’s (flawed) argument trying to distinguish between a part of and the whole description, consider the analogy of an object placed on a table. Would it be against the essence of the general meaning of the word support to say that the object is supported by the (whole) table? Is it in fact only correct to say that the object is supported only by that portion of the table on which it rests? Most people would no doubt be happy to say that the table supports the object and would likely find it odd if someone were to insist that only a portion of the table was supporting the object.
One point, though, where the view of the Board in T1024/18 is worth considering to some extent is when it mentions portions of the description having contradictory meaning to the claims. This point was considered in more detail in T2293/18.
In this decision, the claim in question specified that the term “amorphous plastic” could be either a purely amorphous plastic or a mixed amorphous semi-crystalline blend, whereas the claims specified that the term “amorphous plastic” meant purely amorphous and not a mixed amorphous semi-crystalline blend.
In this case, the Board decided that the claims were unsupported by the description because of this contradiction. The Board stated that “Although they may contain different information according to their different function, as is apparent from the EPC, they must not contradict each other.” In this case, the contradiction is a technical contradiction in the definition of a term.
However, upon closer consideration, such a technical contradiction does not really exist. The description states that the term “amorphous plastic” may cover purely amorphous plastics, or both purely amorphous and mixed blends. This is in the context of the description which describes the general art and implementation of the invention, but it does not define the subject matter for which protection is sought. This is the job of the claims, as per A. 84 EPC, and hence it is in this context that the term “amorphous plastic” is given the more limited meaning.
The Board concludes its reasoning as to why the claim is unsupported by the description by stating “Consequently, there is a discrepancy between claim 1 and parts of the description because the skilled person is given the impression that the description discloses ways of carrying out the invention but which do not fall within the wording of the claim.” However, there is no reason here why the claim is, therefore, unsupported. Indeed, as discussed in detail below, according to A. 84 EPC the claims do not relate to the “invention”, but rather to the “matter for which protection is sought”. Hence, the description may well describe ways of performing the invention which are not claimed.
It appears, therefore, that whilst a popular view within the Boards, the idea that unclaimed subject matter can lead to a lack of support still fails to have any clear and unambiguous basis in the EPC. Rather, tenuous or clearly flawed arguments are so far the best support yet provided.
Can the description render otherwise clear claims unclear?
This point was considered in T1989/18 which answered in the negative, and T2766/17 which answered in the affirmative.
In T1989/18, the Board use the same well-established reasoning as to why the description cannot render unclear claims clear to argue the reverse. Essentially, the reasoning is that because A. 84 EPC doesn’t mention the description with respect to the clarity of the claims, the description cannot affect the clarity of the claims.
T2766/17, on the other hand, concludes that statements in the description contradicting the plain claim wording may cast doubts as to the intended meaning of this wording, and that under such circumstances, an objection under A. 84 EPC has to be raised. The Board states that “if the description cannot be relied upon to resolve a clarity issue in a claim, this does not imply that, a contrario, clarity of the claim cannot be affected if the description contains statements contradicting the plain wording of the claim.” However, no argument is given against the underlying reasoning behind both views (that the description is not mentioned with respect to the clarity requirement).
Notwithstanding this, the reasoning of T2766/17 is tied specifically to the case where a patent gives a term a special technical meaning, “so that the patent specification becomes its own dictionary”. In this case, it might be understood why the description could render a claim unclear in some cases where a term usually having one meaning was given another by the description. However, this should only be in the case whereby the description is technically inconsistent or unclear in a manner undermines the claims (e.g., provides teaching that would imply the claims would not work), rather than just comprising unclaimed subject matter. Indeed, as the claims do not even specifically relate to the “invention” (an undefined term in the EPC, as discussed below), even phrases such as “the invention is…” do not necessarily contradict the claims, even if relating to unclaimed subject matter.
Hence, whilst this decision does disagree in part with the reasoning provided in T1989/18, it cannot be said to provide support for the general principle of requiring the description to be conformed to the claims. Rather, it states that in specific cases the claims could be rendered unclear if the description has given a term a specific technical meaning.
Does A. 69(1) EPC imply the description should be taken into account when interpreting the claims?
On this point, the Board in T1024/18 state that because A. 69(1) EPC, second sentence, states that “the description and drawings shall be used to interpret the claims”, this implies that the description should always be taken into account (including for clarity purposes). They state that “Inconsistencies between the claims and the description could thus – in particular in national proceedings – be the source of diverging interpretations as regards the scope of the claims”.
However, it is not clear that this is the case, nor that this is a problem. National courts already apply different methodologies for interpreting claims, and so may come to different conclusions regardless of the description. Further, patent applications are known to be drafted without knowing the full state of the art, and that it is exceedingly common for the claims to be narrowed during prosecution. Therefore, that some subject matter in the description may not fall within the scope of the claims would come as no surprise to anyone who might be reviewing a patent application during court proceedings.
It is also a great stretch for the EPO to be considering how national court proceedings may play out, a matter well outside their competence. When one considers that the courts in a number of jurisdictions apply some variation of the equivalence principle, embodiments which an EPO examiner believes may not fall literally within the scope of the claims (and so, according to them should be deleted) may nonetheless be considered a valid equivalent that is in fact within the scope of the claims.
This is a point implicitly acknowledged in T1989/18 where the board state that the extent of protection, to which A. 69 EPC relates, is determined by “by whoever is competent to do so”. The Board also note that A. 69 EPC does not relate to requirements of the Convention for a patent to be granted, and states that even if it were it cannot be seen how this could lead an otherwise clear claim to be rendered unclear by the description.
These points, made in T1989/18, appear much more salient and in particular acknowledge some of the problems with the approach being pushed by the EPO when it comes to amending the description. The EPO is not competent to judge the scope of protection of claims, and nor should they be weighing in on national court proceedings. A. 84 EPC only requires that the subject matter for which protection is sought is suitably defined in the claims, but national judges must determine the actual scope of protection – for example considering due equivalents.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking any action in reliance on it.
