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-TechBytesBot/#techbytes-ipkitten.blogspot.com | Can amending the description to summarize the prior art add matter to the patent application as filed? (T 0471/20) - The IPKat

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Rose, I love reading your stuff and would encourage you to keep posting with undiminished energy, promptitude and thoughtfulness. In this item though, I got a bit confused.

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From your text, I took it that the TBA had revoked the patent but I see now that it disagreed with the OD, found no added matter, instead remitted, and instructed the OD to get on with its job and look at the grounds of attack under Art 100(a) and 100(b) EPC. Hooray for the Board!

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Your report prompted me to wonder whether the claim in suit was a 2-parter relative to D8. It is an interesting practice point whether doubt about whether D8 does or does not disclose a "robot" is enough to resist the imposition of a c-i-t form of claim. Is that what happened here, I wonder.

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Rose HughesWednesday, 5 January 2022 at 10:30:00 GMT

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Thanks MaxDrei, your comments always provide some food for thought. I take your point in this case (perhaps I was guilty of journalistic tactics to encourage you to read to the end!). I have adding some clarification.

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Patent RobotWednesday, 5 January 2022 at 11:27:00 GMT

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The EPC does not require to amend the description to cite the prior art found after the filing date, so the EPO should finally stop requesting these amendments, especially now that you can find the whole file history, including the relevant prior art, in the EPO Register.

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Amending the description is useless and may even lead to Art. 123(2) issues.

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AnonymousWednesday, 5 January 2022 at 14:52:00 GMT

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On a wider point, the EPC does not require several things, but the meanings and limits of each article/rule have to be considered by the BoAs and EB.

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On your specific point, Rule 42(1)(b) EPC would suggest otherwise. It does not expressly say when this should happen but it certainly doesn't preclude adding prior art identified after filing.

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A blanket refusal to amend the description is not helpful.

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Amending the claims is useless and may even lead to Art. 123(2) issues. Just construe them in a way that they are patentable.

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Amending poor quality hand drawn figures is useless and may even lead to Art. 123(2) issues. The public has no right to see that for which a monopoly has been granted.

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Amending unclear claims is useless and may even lead to Art. 123(2) issues. Let's ignore Article 84 EPC and the public can start guessing what the monopoly covers.

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Most 123(2) issues often arise from a poorly drafted application. But of course, drafting better applications would never be the solution for some. Just blame everyone else and their pesky rules.

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AnonymousThursday, 6 January 2022 at 10:13:00 GMT

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Your comment is quite naïve when you consider T 0471/20. This article is about a patent that was revoked for the way the prior art was acknowledged. This is a formality and it is hard to imagine many other patent offices reaching this decision. Admittedly, the decision was overturned on appeal, but these decisions are commonplace from opposition divisions, which are frequently revoking perfectly good patents on technicalities. When you see

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decisions like this, is it really any wonder that some representatives are unwilling to amend the description? Any safe European practitioner avoids amending the claims and the description unnecessarily.

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Rule 42 actually says that certain background art shall "preferably" be cited in the description. The EPO's practice is that it is mandatory to do so and examiners will refuse applications for not doing so. This is an unusual interpretation of “preferably”. If it is actually mandatory to do so, perhaps Rule 42 should be amended to remove "preferably" so that the EPO's practice is supported by the EPC. I hope that you see the irony.

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AnonymousThursday, 6 January 2022 at 12:20:00 GMT

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My comment has be taken in the context of there being supposedly no legal basis in the EPC to reference prior art. Between the Rule itself and the settled law (thanks DXT) it is wrong to say this is not required.

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The same criticism could be levelled at any article/rule. Article 54 says nothing about how to assess what is new in the prior art. Article 123 says nothing about how to assess extended SM.

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As to the decision, the issue arose from the applicant's chosen wording to describe D8, not the requirement to reference D8. This opened the door to added-matter problems via Art. 69 (this point is not settled). But of course place all the blame on the pointless formality and OD who were misguided by a rogue practitioner, and not the applicant who freely chose to describe D8 as a non-robot. Referencing D8 by its title alone would have been enough,

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something a safe practitioner would do.

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It's irrelevant whether other patent offices would decide differently. The EPC is its own system. When you play the game at the EPO, you are bound by their rules, and you can only bend them so far.

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I agree that claims and description should not be amended unnecessarily. When is it necessary? For some, the only justification to amend the application (and only the claims at that) is to address patentability, with no regard to added-matter, clarity, etc. That cannot be the correct. We can't just wish Articles 84 and 123 EPC away.

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AnonymousThursday, 6 January 2022 at 13:42:00 GMT

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Finally, Rule 42(1)(b) EPC requires the description to indicate the background art. Doing this by citation is indeed said to be preferable, but that does not negate the requirement to indicate relevant art.

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MaxDreiWednesday, 5 January 2022 at 17:59:00 GMT

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That last comment from "anonymous" falls into the category: any problem encountered by Applicant at the EPO is 100% self-inflicted by "poor drafting", and therefore nobody's fault but theirs.

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Such comments remind me of the uttereances one hears from time to time from within the EPO. One suspects they come from people who have never gone through the experience of seeing their own claims and specification undergo prosecution at the EPO, and then post-issue opposition. It isn't as easy as some within the Ivory Tower suppose, to secure for the client a scope of protection commensurate with the client's contribution to the art, when the EPO

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applies unimaginatively and brutally its by now unassailable "Gold Standard". One would hope for more minds within the EPO open to, and "willing to understand", the real world of the person skilled in the art.

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AnonymousWednesday, 5 January 2022 at 20:42:00 GMT

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I am the same ‘anonymous’ to whom you refer.

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May I suggest you are projecting. It is never 100% anyone’s fault. There is surely a middle ground between perfect specs that will meet the gold standard 100% of the time and actual poor drafting that defines each feature so vaguely to be meaningless, and yet optional. Then there is the issue of coming up with entirely new features altogether during prosecution to the extent intermediate generalisation case law is of no use.

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Anyone who has a basic understanding of the relevant technology should have a rough idea of what might be covered by a patent when reading it. They should not have to come up with all permutations of features themselves. It’s really not a lot to ask for a 20 year monopoly.

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My response to patent robot was to illustrate the absurdity in their position that amending descriptions is useless, whilst seemingly concerned with 123(2) compliance.

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For the record, I am actually a practitioner and have both won and lost on 123(2). I can in all honesty say all findings were correct. It may be a harsh rule, but it gives you and the public a reasonable level of certainty.

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MaxDreiThursday, 6 January 2022 at 10:31:00 GMT

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Well said, that anonymous. I too am a practitioner who has won and lost on 123(2). I too find the Gold Standard "harsh" but that's of course just fine and dandy in those cases when I'm representing the Opponent. As a representative, one is always at risk of being convinced by the power of one's own arguments. Better to attend oral proceedings as a interested member of the public, disinterested in the outcome, to assess the fairness of the EPO's

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harsh Gold Standard in actual practice.

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The benefit for legal certainty is evident, as soon as it is a US law firm from which one takes one's instructions. In the USA, it is often intimated that the patent system is a lottery. In my experience, US lawyers are bemused by the confidence with which experienced European patent attorneys (thanks to the Gold Standard) assess from the get go whether i) matter has been added ii) D1 destroys novelty or iii) Paris Convention priority is or is not

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there.

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Much criticism of the EPO's people and established jurisprudence is unfair, emanating from representatives who have lost an important case and need to convince their client that it is the EPO to blame, not them.

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DXThomasWednesday, 5 January 2022 at 18:46:00 GMT

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Again, in my humble opinion, a big upheaval for nothing much.

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The question whether the prior art has to be acknowledged is not in dispute and cannot be considered adding subject-matter provided the acknowledgement is purely factual.

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The case was settled in the 80ties.

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I refer to Point V of the headnote in T 11/82:

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V. The mere addition to the description of a reference to prior art cannot reasonably be interpreted as the addition of "subject- matter", contrary to Article 123(2) EPC. Nor is it inevitable that the addition of a discussion of the advantages of the invention with reference to such prior art would constitute a contravention of that Article. Whether it did so would clearly depend on the actual language used and the circumstances of the case.

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I also refer to T 276/07 in which it was held that the amendment to the description to add an acknowledgement of the prior art does not bring any new content to the disclosure of the invention, even if it could be considered to put the invention in a different light.

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Any effect or advantages linked with the “new” prior art can however be considered as adding subject-matter if the effect emphasised is not deductible by a person skilled in art from the application as filed. For the same token, acknowledgement of the prior art revealed by the search report may only be factual, cf. F-II, 4.3.

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It should also not be forgotten that the passages relating to background art in the application as filed cannot serve as a basis for an amendment during examination/opposition. See e.g. T 1084/06, T 912/08 or T 1652/06.

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The present decision is simply putting matters straight and the OD was ill inspired when it considered the amendment introducing D8 adding subject-matter.

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I would also allow myself to add that the document acknowledged as closest prior art in the description of the patent is always part of the opposition proceedings, cf. T 536/88, T 541/98, T 454/02, T 86/03.

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The whole system foreseen by case law and the upheaval created by T 1989/18 is taking proportions which are well beyond belief.

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To sum it up: adding a mention of the prior art and especially indicating the closest prior art does not infringe Art 123(2). That in some jurisdictions, e.g. in the US it might have consequences is irrelevant for the EPO which is only bound by the EPC.

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francis hagelThursday, 6 January 2022 at 14:50:00 GMT

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I fully agree with Patent Robot. Amending the description to mention a prior art document is useless since the entire file history is available online and opens up 123(2) issues as clear from this case. Ths is sheer waste of time and money for the EPO and the applicant, this is just shooting in one's foot. The applicant should resist an ED request to amend the description whenever this could raise a 123(2) issue.

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AnonymousThursday, 6 January 2022 at 15:12:00 GMT

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Amending the claims to overcome a prior art document is useless since the entire file history is available online and opens up 123(2) issues. Everyone can clearly figure out the patentable bit.

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The applicant in this case just didn’t mention the prior art, they incorrectly characterised it. It takes no meaningful time or money to cite a document.

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Patent RobotThursday, 6 January 2022 at 16:26:00 GMT

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Rule 42(1)(b) EPC: The description shall indicate the background art which, AS FAR AS IS KNOW TO THE APPLICANT, can be regarded as useful to understand the invention, draw up the European search report and examine the European patent application, and, preferably, cite the documents reflecting such art.

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Therefore, once an applicant indicates in the application the background art KNOWN TO HIM AT THE FILING DATE, there is nothing in the EPC which should force him to add the background art found BY THE EPO.

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The EPO tradition of adding the citation of the prior art in the description comes from the time where the file wrapper was hard to obtain but nowadays the cited documents and the discussion on their relevance can be found in real time in the online Register, so that amending the description just for this purpose is totally useless, a waste of time and money. Moreover, it may even create 123(2) issues, as we have seen here, and further formal issues

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(e.g. due to the page renumbering).

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P.S.: which other patent office has the same requirement?

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AnonymousThursday, 6 January 2022 at 18:11:00 GMT

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"AT THE FILING DATE" is not in Rule 42(1)(b) EPC. Cited art is known to the applicant.

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In any case, the EPC doesn't expressly require lots of things, and the meanings have been clarified by the BoAs and EB, the same with any other legal system.

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One's dislike for this requirement does not make it go away. For it to go away, Rule 42(1)(b) EPC needs to be deleted. Pointing to a conflict with Article 123(2) is tenuous at best, as found by the Board in this case.

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Other patent offices' requirements are irrelevant.

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FragenderThursday, 6 January 2022 at 20:00:00 GMT

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In German patent law there is § 34 Abs. 7:

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"Auf Verlangen des Deutschen Patent- und Markenamts hat der Anmelder den Stand der Technik nach seinem besten Wissen vollständig und wahrheitsgemäß anzugeben und in die Beschreibung (Absatz 3) aufzunehmen."

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Rough translation: On request of the DPMA the applicant has to state the state of the art to his best knowledge completely and truthfully and include it in the description.

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There is a corresponding paragraph in the PatV (§ 10 Abs. 2 lit. 2) requiring this (for the initial description).

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Many applicants don't name any state of the art (if the examiner finds state of the art by that very applicant often § 124 - duty to truthfulness - is mentioned...).

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Examiners usually require the state of the art found during examination to be added to the description. Using § 34 Abs. 7, a refusal to do so will lead to a rejection of the application. Often, this is a nice shortcut for examiners and also the BPatG, when an applicant gives up on the application but a written decision is necessary, as this is usually the shortest possible decision.

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Patent RobotFriday, 7 January 2022 at 08:52:00 GMT

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Ok, you have convinced me: it is now time to cancel or at least amend Rule 42(1)(b) EPC and the corresponding German rule so that applicants do not have to USELESSLY amend the description.

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FragenderFriday, 7 January 2022 at 10:46:00 GMT

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@Patent Robot

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I see this differently. In German patent proceedings, the claims are construed using the patent publication. The prosecution file could be used only in exceptional cases. So while the public may be informed about the state of the art, the court would not necessarily consider this.

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And, actually, putting the state of the art into the description can be helpful to the applicant, as the BGH states the claims should (usually) be construed to not cover the state of the art, from which the applicant tries to differ. So, without mentioning the state of the art, the claims might be construed wider and the state of the art then lead to invalidity of their matter. As long as the German courts deal with validity-proceedings for EP-

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patents, I think it would be advisable to mention the state of the art in the description.

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Following from this, I think the description of the state of the art could in extreme cases lead to "added matter". To be honest, unless this is done on purpose, I can not imagine a real world case for this happening.

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AnonymousThursday, 6 January 2022 at 16:53:00 GMT

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It seems to this reader that the best way to acknowledge prior art is for the examiner to cite it such that it appears on the front page of the B-spec, the agent then being free to deal with other matters instead of having to take a case to court to avoid complete revocation over something so minor.

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MaxDreiThursday, 6 January 2022 at 17:52:00 GMT

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All this talk about the online EPO file as the basis of claim construction strikes me as a distraction. The UK Supreme Court, faced with a claim to construe, asks itself what the skilled reader would conclude from the B publication as answer to the question "What was the writer of the claim using the words of the claim to mean". To perform that task, the court takes the B publication as a single coherent document. Accordingly, it strikes me that it

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is not just the EPO that wants to see in the B publication conformity, and the invention set in the context of the prior art, but also the court. It's in the public interest too. A patent is a restraint on free trade. It should be granted only when Applicant presents a case persuasive enough to cancel free trade. Applicant protects an invention in words of their own choosing so they'd better be positively persuasive ones. Applicant lives or dies,

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not by the sword, but by words of their own choosing. Long may it continue to be so.

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Patent RobotFriday, 7 January 2022 at 09:18:00 GMT

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There is no need to amend the description to convince an examiner to grant a patent. A letter and claim amendments are usually sufficient. Introducing the discussion on novelty and inventive step in the description is useless and moreover opens a door to art. 84, 123(2) and (3) EPC issues, considering how strict the EPO is on these provisions.

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IMHO the description should never be amended, unless there are evident mistakes.

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AnonymousFriday, 7 January 2022 at 10:35:00 GMT

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Your comments focus on the way things should be IYHO, not how they are. Some of us have to live in the the real world where the description and Article 84 EPC just cannot be ignored.

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Article 84 EPC needs amended or deleted to achieve your goal. What's stopping you moving this forward yourself? It is you that has the problem with it after all. Perhaps draft and file a test application that will get refused under Article 84 for not amending description, take it to BoA, and request a referral to EB and then explain why Article 84 has been leading us down the garden path for nearly 50 years.

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Patent RobotFriday, 7 January 2022 at 14:06:00 GMT

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As I wrote in the other thread, there is nothing in the EPC that requires the description to be supported by the claims (art. 84 requires the OPPOSITE), therefore the description should not be adapted to the claims and in particular there is no need at all to delete subject-matter not covered by the claims. Such a deletion may even raise issues of art. 123(2) and (3) EPC.

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AnonymousFriday, 7 January 2022 at 15:05:00 GMT

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You clearly have an understanding of the EPC at odds with accepted jurisprudence that the description should correspond to the claims.

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You interpret article 84 literally and ignore all BoA decisions who have interpreted it differently (the recent decision doesn’t even address the contradictory decisions, and has some seriously questionable reasoning) Even your literal interpretation has problems. For the description to support the claims, either the description or the claims can be amended for this to occur. Article 84 EPC is silent on how this can occur. So no, Article 84 EPC

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does not require the “opposite” as you put it.

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AnonymousThursday, 6 January 2022 at 19:33:00 GMT

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Reading this thread makes me wonder what role do practitioners have to play in this?

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Ultimately, this line of attack was advanced by a practitioner. Some might say the rules are there to be exploited. That may be true but the choice to do so is entirely yours however.

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Proof of the puddingFriday, 7 January 2022 at 12:08:00 GMT

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It is important to stand back and view this case in context. That is, much like T 1989/18, it is just one decision that may or may not be followed by other Boards of Appeal.

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This means that, unless and until the view of the Board in T 0471/20 is established as "settled" case law, it would make sense for applicants to (continue to) take care not to add any text to even the "Background" section of the description that could arguably be viewed as introducing a subjective interpretation of the disclosures of a prior art document.

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It also means that, despite the ruling in T 1989/18 (and despite how convincing one might find the reasoning of that decision), there is as yet no clear reason for the EPO to abandon its long-established practice of requiring the description to be brought into line with the claims as allowed.

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Lastly, it also means that, despite the issuance of Board of Appeal decisions that demanded a "strict" approach to adaptation of the description, the EPO was under no obligation whatsoever to update its Guidelines for Examination to effectively demand adherence to such a strict approach. The decisions in T 1989/18 and T 0471/20 illustrate perfectly why taking such a hard-line stance was not only legally questionable but also extremely "applicant-

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unfriendly".

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In this regard, it is noteworthy that the EPO did not consult with its users before introducing changes to the Guidelines that have been strongly opposed by the patent profession. One has to question why this happened, especially now that the EPO appears to be prepared to backtrack at the earliest possible opportunity. Based upon the evidence, my conclusion is that the EPO now rules by diktat, unless it is forced to do otherwise. Other evidence

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supporting this includes so-called "consultations" that the EPO has recently conducted (such as that on Art 15a RPBA) ... where it seems that the conclusion is predetermined, and where those expressing different or contradictory views are simply ignored.

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https://ipkitten.blogspot.com/2021/12/breaking-board-of-appeal-finds-no-legal.html?showComment=1641370256032

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-TechBytesBot/#techbytes-ipkitten.blogspot.com | Board of Appeal finds no legal basis for the requirement to amend the description in line with the claims (T 1989/18) - The IPKat

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MaxDreiMonday, 27 December 2021 at 09:22:00 GMT

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For me, this decision is a bolt out of the blue but, on reflection, perhaps we should have been expecting it. Striking out the requirement for strictly conforming the description to the allowed claims will deliver a huge boost (to use the technical term de jour) to efficiency at the EPO. Such a huge uplift in efficiency would clear the way for management to reduce the numbers of highly paid EPo Examiners quite considerably. Besides, the Americans

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don't do it, and their courts can still manage to do patent litigation, so why should we Euro's worry, eh?

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One would have thought that Boards of Appeal are unswayed by thoughts about efficiency. Not any more though. The topic seems to weigh more and more heavily in their delibarations. Perhaps the members of this deciding Board are all still young, in tune with the times, and at this stage of their career within the EPO find thoughts about improving efficiency particularly persuasive.

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Meanwhile, if past performance is any guide to the immediate future, we shall all have to continue delivering strict conformity, that is, until the Examiners' Bible, The Guidelines, suffers its next revision by management.

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Attentive ObserverMonday, 27 December 2021 at 11:19:00 GMT

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Dear Max Drei,

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I can agree with you that it would help if the description would not have to be adapted to the new claims like in the US.

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There are however two conditions to fulfil:

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1) the last sentence of Art 84 should be deleted, and this needs an amendment of the EPC other than by "secondary legislation";

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2) like in the US, the behaviour of the applicant/proprietor during examination should be taken into account.

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The problem is that there is a fluctuating legislation about the doctrine of equivalents. This results to a large part of the refusal of the contracting state to adopt a definition of equivalents in the protocol on Art 69 during the diplomatic conference of 2000. An Art 2 has been added, but the Art 3 about equivalents has been rejected.

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The EPO cannot cater for the various ways equivalents are dealt with by the national jurisdiction and can thus not accept that what is claimed is not really what is claimed but could also be something else.

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By the way the BA in T 1989/18 seems to have confused clarity of the claims as such (first part of Art 84) and support by the description (last sentence of Art 84).

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Last but not least, it is, at least for the time being, a single decision.

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Should the Guidelines be adapted, it might indeed take quite a while.

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How long did it take to remove the purposive selection in the Guidelines?

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The three points test = ex essentiality test is still in the Guidelines in spite of the heavy criticism by the BA.

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AnonymousMonday, 27 December 2021 at 11:27:00 GMT

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There is a lot of discussion on LinkedIn about this decision.

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There are two distinct threads but both are about the same decision:

https://www.linkedin.com/feed/update/urn:li:activity:6880822812777443328/

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-TechBytesBot/#techbytes-www.linkedin.com | Rose Hughes on LinkedIn: Board of Appeal finds no legal basis for the requirement to amend | 106 comments

https://www.linkedin.com/feed/update/urn:li:activity:6880931690655584256/

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-TechBytesBot/#techbytes-www.linkedin.com | Sebastian Roth on LinkedIn: T 1989/18 (Adaptation of the description/HOFFMANN-LA ROCHE) of 16.12.2021

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AnonymousMonday, 27 December 2021 at 14:33:00 GMT

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Shouldn't this pave the way for a further referral by the President to the EBoA? Clearly, conflicting decisions by different Boards concerning a point of fundamental nature.

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Attentive ObserverMonday, 27 December 2021 at 15:26:00 GMT

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There is one decision T 1989/18 which goes against T 1808/06 which is the reference in matters of adaptation of the description.

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Should the president file a referral for every decision which is contrary to another one the legal department of the EPO would only be busy with such matters. This is not reasonable.

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To me there is one referral which could be useful: depending on the BA to which the file goes, the absence of a measuring method is considered sometimes as a matter under under Art 83 which leads to the revocation of the patent. For other BA it is a mere problem of Art 84 which under G 3/14 cannot be discussed in opposition.

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This lottery effect should be brought to an end, and if a BA is not prepared to refer the question to the EBA, then the president should do so.

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The adaptation of the description seems to become kind of fixation that puts representatives in a trance.

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AnonymousMonday, 27 December 2021 at 16:56:00 GMT

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Arguing that we shouldn't seek legal certainty in one area because there are other bigger issues in another area is a fallacy.

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Description amendments put us in a trance because they waste our clients' money and do not improve legal certainty enough to justify the additional costs. When I am prosecuting, description amendments are purely a waste of my time and the client's money. When I am reviewing third parties' patents, it makes essentially no difference to my infringement opinions whether the description has been amended. So what is the point, particularly when the legal

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justification is so weak? Article 84 requires the description to support the claimed invention, but a bridge can support many cars simultaneously.

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MaxDreiMonday, 27 December 2021 at 17:51:00 GMT

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I'm a representative, Attentive, but I'm not one of those put into a trance. I am somwhat equivocal about the whole issue of conforming the description. If we see the description as a historical record of what was filed by the Applicant on the filing date of the application, then any effort to conform it to the allowed claims is misguided. Conversely, if the description of the B publication is to be that which informs the task of construing the

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issued claims, then it should be conformed.

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For me, the more interesting choice is whether to excise passages of the description or, instead, hang on to them but preface them with words indicating that they are not descriptions of subject matter within the ambit of the claim. I find that my decision varies from case to case, often turning on Art 83 EPC considerations. Sometimes I want to hang on to those passages but in other cases I am thinking that the scope of infringement by equivalent is