IRC: #techbytes @ FreeNode: Monday, February 08, 2021

-TechBytesBot/#techbytes-patentblog.kluweriplaw.com | Top 5 changes to the 2021 EPO Guidelines for Examination - Kluwer Patent Blog

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So it seems that the EPO has decided that it can now refuse to grant an application unless and until any subject matter retained in the description is clearly indicated as being either within or without the scope of the claims.

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Why is it not enough for the applicant to clearly indicate that the invention relates solely to the subject matter defined by the claims? Why effectively force the applicant to make a binding and irrevocable decision on the extent of protection of the claims? If certain subject matter is stated as not representing the invention, would that not tie the hands of the national courts when interpreting the claims (ie effectively prevent them

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from affording the claims a broader interpretation that they might otherwise feel is justified)?

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And what about the protection afforded to equivalents? Can application of the Protocol to Article 69 EPC afford protection for embodiments that have either been deleted or marked as not forming part of the invention? Is the EPO even competent to decide upon which embodiments can be retained on the grounds of being “equivalent” to subject matter falling within the literal scope of the claims?

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Questions such as those above are just the tip of the iceberg when it comes to potentially serious, permanent and unjustified harm to patentees that could be caused by the EPO’s new approach to bringing the description into line with the claims. By way of contrast, the “harm” that could be caused by sticking to the previous, more liberal approach seems very tame indeed … namely the need for third parties to seek professional

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advice before they can be certain that their proposed activities do not fall within the scope of the claims of a patent.

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Whilst the new approach no doubt reflects the decision in T 1808/06, why act now when that decision was issued more than a decade ago (and has been cited in only four subsequent decisions)? All of this strongly suggests that the EPO has not thought through the potential implications of their change of approach … and has certainly not assessed whether that change is justified based upon a balance of relative benefits and harms.

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MaxDrei

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February 2, 2021 at 7:29 pm

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These days, I have the feeling that, inside the EPO, management doesn’t give a toss about the law or the extent of protection given to the customers. All that interests them is “efficiency”, driving down cost and driving up profit. The writer of this useful blog post surmises that EPO management saw the high rate of rejection of Examiners’ scribbled amendments in the Druckexemplar as a drag on efficiency and profit, so resolved

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to do something about it.

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What should be our response? Perhaps invite our corporate clients all round the world to complain direct to the EPO about the absurd lengths that EPO managers are driven to go to, to “conform” the description to the claims to the satisfaction of management. Just like with Article 123(2) the situation is getting out of hand, and all because Examiner careers depend on pleasing EPO management, which finds it easier to monitor Examiner

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“quality” under Art 123(2) and 84 than 54 or 56, EPC.

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Anon Y. Mouse

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February 2, 2021 at 9:02 pm

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The change to practice with regard to description amendments feels to me like a solution in search of a problem. What on earth could be the justification for this?

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While it is well known that the EPO does not concern itself with matters of infringement, the management must surely be aware that claim interpretation is absolutely critical and that national courts may take different approaches. An embodiment falling outside the claims may not seem to the Examiner to be “useful for highlighting specific aspects of the amended subject-matter”, or for better understanding the invention, but it may

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turn out to be critical at some later stage in national litigation in the face of prior art which was unknown to the Patentee or the EPO at the time of grant. Indeed, this could potentially become problematic during EPO Opposition and Appeal proceedings too.

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This change has either not been thought through, or has been taken with a profound lack of care or interest in what happens outside the EPO, not to mention what might happen even within the EPO during Opposition and Appeal proceedings.

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Max Masni

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February 2, 2021 at 10:24 pm

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“All that interests them is “efficiency”, driving down cost and driving up profit. ”

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EPO is driven by profit and self-financed, like the future UPC court.

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That’s why the EPO has a notation system, to push examiners to grant and get money out of renewal fees.

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It’s a fraudulent institution.

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One of those...

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February 4, 2021 at 1:45 pm

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Yet, the renewal fees the EPO gets has been reducing.

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Due to the earlier grants, the member states now get a large share of the renewal fees.

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Less internal (pre-grant) renewal fees, slightly offset by a small increase in the external (post-grant) renewal fees.

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One of the reasons why the EPO “management” is ignoring any arguments against their “reforms” regarding employee remuneration, work pressure, increase in “efficiency”,…

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(The EPO foresees a much larger drop in renewal fees income the next years.)

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On top, “management” has to increase member states incomes, or loose their own generous bonuses.

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And guess who decides on their bonuses? The member states.

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The renewal fees for pending applications going solely to the EPO was also seen as reducing any incentive to grant early, as it would reduce the EPO’s share of the renewal fees.

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The pendency had to be reduced though, as that caused different issues again.

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There is no fair system, apparently.

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Attentive Observer

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February 2, 2021 at 11:21 pm

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The writers of the blog have to be thanked for their work! However, the proposed amendments to the Guidelines discussed in the blog lead to some comments.

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Whilst I fully understand the preceding comments, I would like to give a more differentiated view on the required amendments to the description. I am however not sure that the present management of the EPO, in its quest for efficiency and production figures, realised what those amendments of the Guidelines mean.

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Updated F-IV, 4.3(iii) will have the effect to make it more difficult for applicants/proprietors to refuse amending their description in order for later claiming much more than they have contributed to the art at the time of filing.

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Nothing against infringement by equivalents, but the original description needs to be in line with the requirements of the EPC. To take the example of “pemetrexed” there were no embodiments which had either to be deleted or marked as not forming part of the invention, as there was only a single one relating to pemetrexed disodium. It is the barely adapted description which allowed the proprietor of the pemetrexed patent to later

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claim things he had not realised on the day of filing. It is good that the screws are tightened in this respect.

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T 1806/06 might be an older decision, but it is in my eyes a good decision. It is also not an isolated decision as there are more recent ones requiring a correct amendment of the description:

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– T 1883/11 See Point 5),

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– T 1177/11 (see last § of Point 4.3, the claims were clear but the description needs to be adapted),

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– T 305/14, although the ED committed a SPV, the BA acknowledged that where an objection concerning an inconsistency between the claims on the one hand, and the description or the drawings on the other hand, has been raised in a communication from the EPO, failure to overcome that objection is as much a valid ground for a subsequent refusal as failure to comply with any other requirement of the EPC.

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T 1694/12 made clear that the claims have to be supported by the description; here the claims were broader than allowed by the description. The same applies in T 200/09.

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It is true that there is a “relatively small proportion of European patents that end up in infringement proceedings” but this is not a reason not to abide by the valid regulations at grant. One never knows in advance which patent will be opposed at the EPO or litigated later at national level.

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From all the cars leaving a manufacturer how many will end up in an accident? Probably very few, but this is not a reason not to abide there as well by the valid regulations.

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When the “pemetrexed” decision of the UKSC came out, the screams of horror from the profession about the near impossibility to make a FTO evaluation were hard to overhear. The “need for third parties to seek professional advice before they can be certain that their proposed activities do not fall within the scope of the claims of a patent” was always present, but was rendered much more complicated by this decision.

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The proportion of rejected texts intended for grant does not come as surprise. It has always been the lever used by ED to twist the arm of applicants so that a file could be closed by issuing the AGRA and the requested production marks achieved. I fear that summoning to OP, even in form of ViCos, will not really change the situation. Pressure will just be transferred to another place.

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In view of the RPBA 2020, not filing an AR, which on top has to be admitted in the procedure under R 137(3) and allowing a grant, might end up with a refusal in the absence of an agreed text and in appeal to the irrevocable death of the application.

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It is nothing new that every feature in an independent claim cannot be left as merely optional in the description. Such a claim would offend Art 84 and is not allowable. It is good that this point has been clarified. It is too easy to later claim that this feature might be in the claim but not essential and hence allow a much broader interpretation of the claim. See above.

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It should also not come as a surprise that “The technical field and the summary of invention must correspond to the amended set of claims”. Description and claims have to be coherent.

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Methods of using a medical device are more than often a disguised way to claim a medical method. It is absolutely correct to ensure that none of those claims are left at grant or after opposition. But this is nothing new either!

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Claim-like clauses have always been a nuisance and it is good that it now perfectly clear that ought to be deleted. It was again, an attempt to give some different interpretation to granted claims as very often the clauses were not amended, even if the claims were.

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The amendment in F-IV, 3.9.2 “Cases where method steps define additional devices and/or specific data processing means” deserves more than an honourable mention. The amendment specifies that “These method steps may not always be fully performed by the computer and the method claim may recite specific technical means for carrying out some of the steps”.

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“In such a case, defining a computer program claim as in F-IV, 3.9.1(iii), will normally lead to an objection under Art. 84 if the step carried out by the specific technical means cannot be carried out by a generic data processing means. The examples given when a general purpose computer can be used or not are very clear (method of determining oxygen saturation in blood).

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Such claims are quite common, and have a problem. Such a program cannot be carried out on a general-purpose computer which is not connected with the controlling means necessary to carry out the method, for instance actuators and position detectors.

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Another example, based on EQE paper C 2004 could be as follows.

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1. A method for the layerwise construction of an object (4), comprising:

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(a) selecting and irradiating portions of a solidifiable liquid (2) to form a solidified layer (4a),

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(b) moving the solidified layer (4a) to enable liquid (2) to fill the space left by the movement of the solidified layer (4a) and

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2. The method of claim 1…..

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3. The method of claim 2 wherein….

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4. A computer program directly loadable into the memory of a computer for controlling the steps of claim 1 when said program is run on a computer.

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Just try to stick the program in your laptop and look whether you can carry out the method of claim1 and obtain an object constructed layerwise. Good luck! In that case I would even claim that the provisions of Art 83 are not fulfilled.

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As digitalisation makes inroads in lots of technical domains and contributory infringement is not something to be belittled, but we should be aware of the corresponding difficulties when merely claiming computer programs or carrier for a program.

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It is difficult to understand why it is necessary to complain that patents to be granted should abide by the valid regulations, even when it comes to the adaptation of the description. i

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Concerned observer

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February 3, 2021 at 12:09 pm

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Attentive,

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Well, it seems that you and I are just going to have to agree to differ on this point.

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I can understand the appeal of (potentially) increased certainty that may flow from the applicant explicitly identifying the embodiments of the description that are within the scope of the subject matter claimed (“the invention”), and those that are without that scope. However, it is important to remember that it will likely be impossible for any applicant to be 100% confident that all of their “in” and “out” allocations

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are correct. This is because it is almost always the case that the wording of the claims will be open to various different interpretations. It is also possible that the claim language deemed allowable by the EPO includes wording that is completely unclear, even (or especially) to subject matter experts.

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In my personal experience, there is also another issue that routinely crops up in connection with the exercise of adapting the description to the claims as allowed. That is: what to do with those passages that encompass both claimed and non-claimed embodiments? Especially where such passages use generic language that does not precisely map on to the wording used in the claims, it is not always easy (or even possible) to make

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amendments that identify those embodiments that fall within the claims and those that do not. Further, where amendments are possible, they often risk adding subject matter.

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So why force applicants to choose between deleting (partially) supportive subject matter and making amendments that could generate grounds for revocation (including, potentially, an inescapable 123(2) / 123(3) “trap”)? More to the point, why be so strict on “support” under Article 84 when it is almost certain that there will be doubts regarding the interpretation of the claims?

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Personally, I would be a lot happier if the EPO instead shifted its focus to the clarity aspect of Article 84 EPC … even if that would result in fewer oppositions.

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Patent robot

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February 3, 2021 at 10:23 am

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The EPO and also some commenters of this blog suffer from the “excessive prohibition” virus (quite contagious nowadays). The EPO (executive power) cannot “interpret” the EPC to create new prohibitions which are not there.

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Does the EPC prohibit from leaving unclaimed matter in the description? Is this prohibition present also in other patent laws?

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MaxDrei

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February 3, 2021 at 12:44 pm

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Thanks, Attentive. I am one of those representatives who takes care to satisfy Art 84 EPC by myself conforming the description to the claims. I really don’t like it when Examiners, thinking they are making further amendments necessary to meet the objective of “clarity”, make further and different amendments to the description, in the worst cases replacing my amendments with their own, which detract from clarity rather than

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enhancing it. When clients and Applicants see a Druckexemplar in which my carefully composed amendments are excised and replaced, they suppose I am incompetent, or ignorant of the law or the practice at the EPO, and that their payments to me for my time were a waste of money. I want to get to grant with a description and claims that I have written, in my own first language, not some EPO Examiner using English as a foreign language. Do

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you see why I find this behaviour by Examiners insulting, why it makes me so angry.

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Rightly or wrongly, i think they do this to signal to the in-house Quality Police how assiduous they are, how painstaking they are about compliance with Art 84, EPC.

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I accept the general objective, under Art 84, EPC, of conformity between what the claims define as the invention and what the description announces as “the invention”. But, quite frankly, some EPO Examiners are taking this to absurd lengths. Why is this, if it is not to please management?

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Patent robot

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February 3, 2021 at 1:46 pm

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I wrongly thought that under Art. 84 EPC the claims had to be supported by the description.

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Since when the description shall be supported by the claims?

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francis hagel

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February 3, 2021 at 2:49 pm

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Insightful comments have been provided esp. by Max Drei, Attentive Observer and Concerned Observer. I agree with Concerned Observer that the requirement to amend the description in line with the claims as accepte creates issues of its own making. Best can be the enemy of good when it involves additional complexity, time delays and legal expenses for no clear benefits .

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When several embodiments are disclosed as optional in the original application and then some are deleted to satisfy the requirement, this involves some change in substance and a potential 123(2) issue since the preference for the embodiment covered by the claim was missing in the original application. In addition i do not see a clear basis in the EPC for compelling the applicant to delete embodiments which are not covered by the

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accepted claims.

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I also see minor benefit in the addition in the application of a mention and discussion of the “closest prior art”, when the entire examination file is easily and freely accessible to the public and is way more informative than the addition in the description.

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I am frequently critical of some aspects of US rules and practices, but regarding amendments of the description, i prefer the US approach because of its simplicity.

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MaxDrei

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February 3, 2021 at 3:24 pm

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The Wolff reforms of civil litigation procedure (CPR) have something in common with the Grundgesetz in Germany. Both begin with an article that sets the tone. In the GG it is that the dignity of the human is inviolable. In the CGR it is that the over-riding priority is to do justice between the parties. My request to the EPO management is to administer Art 84, Art 123(2) and Art 54 EPC (the notorious “Bermuda Triangle “of

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patentability provisions) thoughtfully and realistically, in order to comply with what I always see as an “over-riding priority”, namely the balance of interests set out in the Protocol to Art 69, EPC.

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In other words, in the real world, other than in an Ivory Tower, Applicants should be allowed to achieve protection for their contribution to the art, in proportion to the magnitude of that contribution, even while the public enjoys a reasonable level of legal certainty. A balance is required, like everything in life that is sophisticated, and therefore complicated and a matter of judgement.

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Whenever Examiners (and management) get over- protective, even obsessive, about legal certainty, Applicants get deprived of fair protection because more and more of their otherwise deserving applications fall into that fearsome Bermuda Triangle. Unlike the hypothetical skilled person, real Applicants cannot know all the prior art and so amendment during prosecution is the real world reality. EPO finger-wagging lectures to Applicants

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that they have only themselves to blame because they don’t draft carefully enough are insulting to real world Applicants.

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Obsessive focus on perceived failure to achieve 100% clarity can’t be right. Fact: no specification or claim can ever be so clear that a clever lawyer can find nothing wrong with it. With this fact in mind, the writers of the EPC knew full well what they were doing, excluding Art 84 from the grounds of opposition. Judges, it turns out, are well able to construe patents that exhibit less than 100% clarity. Ask them. In practice they

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never have any alternative despite the best efforts of over-zealous EPO Examiners.

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But that post-issue exclusion is no excuse, no reason, to insist, prior to grant, on impossibly high levels of clarity. To do so will result in international outrage, and condemnation of the level of “service” delivered by the EPO.

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мистер хлеб

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February 3, 2021 at 4:29 pm

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Even tough I fully agree with your criticism of the new Guidelines, your explicit attack on over-zealous examiners is misplaced. The examiners at the EPO have lost all autonomy and execute the very strict orders they are provided with in a myriad of instructions, notices, guidelines, etc. Some examiners may push back, at their own expense. Others just follow the instructions. And certainly, none of them act on their own initiative.

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In the current conditions, that would be suicidal.

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MaxDrei

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February 3, 2021 at 5:01 pm

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The irony lies in management’s idea that “quality” means “consistency” means “mindless adherence to management directives”. Just to be clear, in the field of “patent quality” dumbing down the Examiners till they are little more than automatons is NOT the way to raise levels of “quality”.

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Disillusioned Examiner

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February 4, 2021 at 4:25 pm

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What!!??!

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Quality is easily measured!

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Has the application been granted or refused within the time limit set by the Paris Criteria?

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And treating our stocks within arbitrarily set internal time limits.

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That is what we get measured for, it currently seems to be the major influence to our quality assessment (besides the numbers, high production numbers=high quality – confirmed by ATILO).

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The internal Quality Checks only hamper the file going out, but will not be used for reporting.

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Continuous problems identified by the Quality Department only means you have to discuss with them, instead of getting your point for the file done, and losing time for the next file.

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Hence there are directors who defend their high-producing examiners, up to the point that feedback will not reach the examiner concerned.

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(Since this year this will be done differently, Luckily)

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Franco-belge

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February 4, 2021 at 12:08 am

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English is relatively easy: in a nutshell, only men and women have a gender, everything else (except boats) is neutral. And a new trend is to use ‘they’ even for single persons.

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Waiting for the gender-neutral French version.

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In French, the plural has the same gender as the singular, and a Division or a Board is female. Some ‘neutralisation’ is possible, but a zealous approach will just render the text more difficult to read.

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Peter Parker

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February 4, 2021 at 4:20 pm

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Also, according to my understanding, it is also not crystal clear in all EPC member states whether a post-grant amendment may be based on subject matter that was in the original application documents but not also in the granted patent.

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So deleting or “prominently disclaiming” subject matter might also backfire in post-grant validity matters.

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Attentive Observer

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February 5, 2021 at 7:56 am

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I knew very well that I would stir some controversy when I published my comment.

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It is nothing new that in lots of cases the adaptation of the description was more or less neglected when it came to either grant or maintain a patent in amended form. Rumours has it that in some directorates it was a non-written rule not to spend time on the adaptation of the description. After all in some national systems adaptation of the description is not required.

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At the EPO it is not infrequent to see after some errors the pendulum swaying in the opposite direction. Middle or reasonable way was never something really of importance. The ED apply the instructions, and by insisting on some secondary aspects, it is a good possibility to show that the rules are respected and the production figures are reached. Should the independent claim be new and inventive, and for this it is better not to find

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too relevant prior art, then the dependent claims are not only new and inventive, but also clear and not comprising any added-matter….. What is at stake is more to give the impression of a thorough examination than carrying out a proper examination.

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I do not put the blame on the examiners but on the management. On the other side, the average number of validations does indeed not allow to see a lot of revenues from annual fees. That is one of the reasons for the management to push UP as for those, the level of annual fees is higher. I rather see all the perks given to AC members, think also of the cooperation budget, allowing the tail to wag the dog. Much less the annual fees as

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such.

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On the other hand I have witnessed OP following remittal from a Board in which the opponents and the proprietor were arguing and bickering about the amendments to be carried out starting with deletion of some embodiments and continuing with the way the prior art disclosed during the opposition had to be presented. It is clear that what the parties had in mind was litigation at national level since the opponents were not successful in

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killing the patent.

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In T 1093/17, the opponent appealed the decision of maintaining the patent in amended form as the adaptation of the description was, in his eyes, inducing a problem of sufficiency. The BA held that the “amendments to the description according to the main request merely bring the description into line with the allowed claims”. The BA considered that “the issues at stake raised by the appellant with respect to Article 83 EPC are res

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judicata”, and this conclusion applied mutatis mutandis to the requirements of Art 84.

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In T 2466/ 13 the BA was fully aware that adaptation of the description can have an influence on a possible infringement action. In particular, the opponent/appellant criticised the deletion of expressions indicating the optional nature of characteristics which had been incorporated in the independent claim. The opponent/appellant based its objection under Article 123(2) EPC on the finding that this adaptation of the description would

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be liable to give the proprietor an undue advantage in an infringement action, in particular in relation to infringement by equivalence.

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The Board accepted that for some jurisdictions changes to the subject matter of the patent application during grant proceedings, or to the patent in opposition or limitation proceedings, may have an effect on the way in which infringement by equivalence will be assessed (similar to file-wrapper estoppel in US law). Nevertheless, this is not likely to render changes to the description such as those proposed by the proprietor contrary to

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Art 123(2), by providing an unjustified advantage to the proprietor.

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The BA considered that since the original application has been published and a defendant in an infringement action would still have the possibility of asserting amendments made during the course of the proceedings, by submitting both the patent as granted and/or amended and the original application. The amendment to the description proposed by the proprietor therefore does not have the effect of depriving a defendant in an infringement

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action of the possibility of establishing, on the basis of the facts of the case, the scope of the amendments made during the grant and/or opposition proceedings.

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May be this decision could help to see the whole topic in a less conflictual manner.

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Patent robot

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February 5, 2021 at 10:01 am

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Thank you for the explanation, but still I do not see anything in the EPC prohibiting from leaving unclaimed matter in the description. By the way, this prohibition is not present in any other patent law, AFAIK.

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Furthermore, under Art. 84 EPC the claims shall be supported by the description, not the opposite.

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Therefore, if I want to leave my grandma’s cake receipt at the end of the description of the claimed apparatus, the ED, OD and the BoAs have no right to force me to remove the receipt, do they?

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Patent robot

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February 5, 2021 at 11:25 am

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Actually I found some decisions referring to Rule 48(1)c EPC, however this would prohibit the cake receipt but not subject-matter relating to the claimed invention.

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Attentive Observer

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February 5, 2021 at 3:12 pm

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Dear Patent robot,

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You pre-empted my reply! It follows that an ED can require the adaptation of the description as any statement allowing a different interpretation the claims is a statement or other matter obviously irrelevant under the circumstances.

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Concerned observer

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February 5, 2021 at 7:10 pm

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Attentive,