●● IRC: #techbytes @ Techrights IRC Network: Sunday, April 10, 2022 ●● ● Apr 10 [00:25] *Despatche_ has quit (Quit: Read error: Connection reset by deer) ● Apr 10 [02:57] *GNUmoon2 has quit (connection closed) ● Apr 10 [05:03] *GNUmoon2 (~GNUmoon@xjmz9dqbmhs6w.irc) has joined #techbytes ● Apr 10 [06:05] *Despatche (~desp@u3xy9z2ifjzci.irc) has joined #techbytes ● Apr 10 [08:51] *u-amarsh04 (~amarsh04@v6xmmrhxmbafc.irc) has joined #techbytes [08:58] *liberty_box has quit (Ping timeout: 2m30s) [08:58] *rianne_ has quit (Ping timeout: 2m30s) [08:59] *liberty_box (~liberty@pumv3cb2rfinu.irc) has joined #techbytes [08:59] *rianne_ (~rianne@pumv3cb2rfinu.irc) has joined #techbytes ● Apr 10 [09:13] *u-amarsh04 has quit (Quit: Konversation terminated!) [09:22] *u-amarsh04 (~amarsh04@v6xmmrhxmbafc.irc) has joined #techbytes ● Apr 10 [11:07] schestowitz https://www.nytimes.com/2022/04/08/world/europe/ukraine-chernobyl.html [11:07] -TechBytesBot/#techbytes-www.nytimes.com | Russian Blunders in Chernobyl: They Came and Did Whatever They Wanted - The New York Times [11:07] schestowitz = [11:07] schestowitz https://www.aljazeera.com/news/2022/4/8/nigeria-families-of-missing-train-passengers-bemoan-govt-silence [11:07] -TechBytesBot/#techbytes-www.aljazeera.com | Nigeria: Families of missing train passengers bemoan govt silence | Armed Groups News | Al Jazeera [11:07] schestowitz = [11:07] schestowitz https://medforth.biz/france-polygamous-islamist-migrant-rapes-29-children/ [11:07] -TechBytesBot/#techbytes-medforth.biz | France: Polygamous Islamist migrant rapes 29 children Allah's Willing Executioners [11:07] schestowitz = [11:07] schestowitz https://www.nytimes.com/2022/04/08/world/europe/ukraine-russia-land-mines.html [11:07] -TechBytesBot/#techbytes-www.nytimes.com | Civilians Near Kharkiv Are Discovering Timed Land Mines - The New York Times [11:07] schestowitz = [11:07] schestowitz https://www.technologyreview.com/2022/04/08/1049107/real-covid-toll-africa-morgue/ [11:07] -TechBytesBot/#techbytes-www.technologyreview.com | How a Zambian morgue is exposing the real covid toll in Africa | MIT Technology Review [11:07] schestowitz = [11:07] schestowitz https://www.telesurenglish.net/news/World-Food-Prices-Soar-to-Record-High-With-Ukraine-Conflict-20220408-0016.html [11:07] -TechBytesBot/#techbytes-www.telesurenglish.net | World Food Prices Soar to Record High With Ukraine Conflict | News | teleSUR English [11:07] schestowitz = [11:07] schestowitz https://www.rfa.org/english/news/china/shanghai-covid-04082022150542.html [11:07] -TechBytesBot/#techbytes-www.rfa.org | Shanghai warns people against 'rumor-mongering' as online pleas for food grow Radio Free Asia [11:07] schestowitz = [11:07] schestowitz https://www.goodreads.com/quotes/15859-put-on-a-sweater [11:07] -TechBytesBot/#techbytes-www.goodreads.com | Quote by Jimmy Carter: Put on a sweater. [11:07] schestowitz = [11:07] schestowitz https://www.economist.com/europe/finland-is-hurtling-towards-nato-membership/21808705 [11:07] -TechBytesBot/#techbytes-Finland is hurtling towards NATO membership | The Economist [11:07] schestowitz = [11:07] schestowitz https://news.err.ee/1608559990/ppa-revoking-visas-for-border-crossers-showing-hostile-insignia [11:08] schestowitz = [11:08] -TechBytesBot/#techbytes-news.err.ee | PPA revoking visas for border crossers showing hostile insignia | News | ERR [11:08] schestowitz https://www.bbc.co.uk/news/live/world-europe-61032786 [11:08] schestowitz = [11:08] -TechBytesBot/#techbytes-www.bbc.co.uk | Ukraine war: Russia's aggression targets all of Europe - Zelensky - BBC News [11:08] schestowitz https://abcnews.go.com/Health/wireStory/woman-faces-texas-murder-charge-induced-abortion-83982115 [11:08] -TechBytesBot/#techbytes-abcnews.go.com | Woman faces Texas murder charge after self-induced abortion - ABC News [11:08] schestowitz = [11:08] schestowitz https://www.nbcnews.com/news/world/live-blog/russia-ukraine-war-live-updates-moscow-condemned-train-station-strike-rcna23710 [11:08] -TechBytesBot/#techbytes-www.nbcnews.com | Zelenskyy suggests the West's oil addiction enables Russia's aggression ● Apr 10 [12:13] schestowitz https://twitter.com/Retiario/status/1513074304153493507 [12:13] -TechBytesBot/#techbytes-@Retiario: Ojo a esto que ha pillado @gallir sobre Heartbleed: un conflicto de intereses contra OpenSSL https://t.co/74JDEeJzmY [12:13] -TechBytesBot/#techbytes- ( status 400 @ https://t.co/74JDEeJzmY ) ● Apr 10 [13:19] *GNUmoon2 has quit (Ping timeout: 2m30s) [13:21] *GNUmoon2 (~GNUmoon@upfyme5tts22e.irc) has joined #techbytes ● Apr 10 [14:02] *psydroid2 (~psydroid@memzbmehf99re.irc) has joined #techbytes ● Apr 10 [17:30] schestowitz https://ipkitten.blogspot.com/2022/04/epo-board-of-appeal-tows-party-line-on.html?showComment=1649065262453 [17:30] -TechBytesBot/#techbytes-ipkitten.blogspot.com | EPO Board of Appeal toes the party-line on description amendments (T 1024/18) - The IPKat [17:30] schestowitz "" [17:30] schestowitz MaxDreiMonday, 4 April 2022 at 10:41:00 GMT+1 [17:30] schestowitz Rose, if I see it right, in your "party line" case, T1024/18, the Rapporteur is somebody who came to the Boards of Appeal after a successful career in examining applications at the EPO while the Chair came from a successful career in private practive at a well-known, established and respected European patent firm. [17:30] schestowitz As to the maverick decision T1989/18, I don't know anything about its authors, and their backgrounds. Who here does, I wonder. [17:30] schestowitz Reply [17:30] schestowitz PeterMonday, 4 April 2022 at 11:29:00 GMT+1 [17:30] schestowitz Rose, you correctly note that the Guidelines state that: 'However, the EPO Guidelines indicate elsewhere that "[e]ach claim must be read giving the words the meaning and scope which they normally have in the relevant art" and further "require the claim to be amended whereby the meaning is clear from the wording of the claim alone.". However, the present decision focuses on the "support" requirement of Art. 84, not on the "shall be clear" requirement [17:30] schestowitz of Art. 84. Hence the comments in the GL do not diminish the validity of the reasoning of the present Board in any way, in my view. [17:30] schestowitz The same observation can be made for your argument that "does this not demonstrate that the scope of the claims is clear?". [17:30] schestowitz Reply [17:30] schestowitz Attentive ObserverMonday, 4 April 2022 at 11:30:00 GMT+1 [17:30] schestowitz I would like to add [17:30] schestowitz 1) The chair of the board might have come from private when he was appointed as technical member of the boards, but was previously, and for quite a while, himself examiner at the EPO. [17:31] schestowitz 2) the lead legal member in T 1024/18 was, before being appointed at the BA as legal member, member of directorate 5.2 which supports examining and opposition divisions when legal questions arise. [17:31] schestowitz T 1024/18 does thus not come to me as a surprise. [17:31] schestowitz Reply [17:31] schestowitz DXThomasMonday, 4 April 2022 at 15:00:00 GMT+1 [17:31] schestowitz Reply part 1 [17:31] schestowitz I never understood the frenzy that has taken over the profession after the publication of T 1989/18. [17:31] schestowitz A careful look at the case law would have made abundantly clear that the hopes raised in the profession that the description would no longer have to be adapted to the claims was more wishful thinking than a realistic assessment of the situation. [17:31] schestowitz T 1024/18 has set the record straight. It is by far not an isolated decision but there have been many other decisions before, and especially after T 1989/18, which have confirmed the fact that the description must be adapted to the claims. [17:31] schestowitz If boards directly decide grant or maintenance in amended form in the presence of an adapted description or refer back to the first instance for adaptation of the description, they make clear that the description must be adapted to the claims. [17:31] schestowitz The T 1989/18 interlude is over! I think that T 1024/18 was greeted with a sigh of relief at the EPO. [17:31] schestowitz Relying on a referral from the President for a one-off decision that goes against the prevailing jurisprudence is wishful thinking. [17:31] schestowitz I further fail to see why the reasoning of the board has become rather circular. Art 84 has the triple function to insure that the claims are [17:31] schestowitz - clear in the ordinary meaning of the word; [17:31] schestowitz - concise [17:31] schestowitz - supported by the description, which has a specific meaning which was reminded in T 1024/18. [17:31] schestowitz In T 696/16 the ED had argued that there the description did not disclose a way of carrying out the invention claimed, cf. R 42(1,e). For the ED the claims were not supported by the description as in its opinion a link was missing between claims and description. The board disagreed and found that the spray head depicted in the figures met the requirements of R 42(1,e) in that one way of carrying out the invention claimed was disclosed. [17:31] schestowitz In T 758/13 the board held that that the repetition of the wording of the claim in the description does not provide support for claim 1 of the second, third, fourth and fifth auxiliary requests and hence confirmed the refusal of the application. [17:31] schestowitz Those two decisions make clear that description should be in correspondence with the technical teaching of the claims. [17:31] schestowitz Conversely, all decisions according to which the description should be adapted to the claims have the aim to make clear that the description should not allow a different interpretation of the claims than that which directly results from their wording. [17:31] schestowitz The claims ought to be clear as such without recourse to the description, but this does not mean at all that the description could allow a different interpretation of the claims. If this would be considered allowable, it would deprive the last condition in Art 84 of any meaning. [17:31] schestowitz The board was right in T 1024/18, when requiring that the description should be amended so that the reader is not presented with any information conflicting the wording of the claims. Given that the patentee in the case had not filed an amended description in line with the otherwise allowable AR, the patent was revoked. [17:31] schestowitz Reply [17:31] schestowitz DXThomasMonday, 4 April 2022 at 15:01:00 GMT+1 [17:31] schestowitz Reply part 2 [17:31] schestowitz The Boards of Appeal and Examiners are, independently of T 1989/18, well aware of the depth of feeling by EPO users on the issue of description amendments. Contrary to what is said the legal basis is not disputed at all. The legal basis has just been reminded in T 1024/18 whereas T 1989/18 just muddled the issues. But being aware of the depth of feeling of dissatisfaction of the users does not mean that the legal requirements can be ignored. [17:31] schestowitz That some divisions had a rather pedantic approach and other were simply not bothering is not a licence to ignore legal requirements. This was the meaning of the amendments of the Guidelines in 2021 and 2022. [17:31] schestowitz If an applicant/proprietor files new requests and absents himself form the proceedings, the requests should not only comprise new claims, but a description adapted to all the various requests [17:31] schestowitz - the application is refused T 893/01, T 109/02 [17:31] schestowitz - the patent is revoked T 725/00, T 986/00 [17:31] schestowitz Those decisions are exemplary of many more. [17:31] schestowitz There are also boards which remitted to the first instance to adapt the description in spite of the absence of the party at the oral proceedings, for instance T 484/12. [17:31] schestowitz In T 1024/18 the proprietor was absent and the board refused to remit in accordance with previous decisions. [17:31] schestowitz If by any chance the last sentence of Art 84 was to be deleted, then, indeed, there would be no need to adapt the description to the claims. [17:31] schestowitz Should this occur, the applicant's statements during examination would then have to be taken into account in a dispute over the interpretation of the granted claims. In other words, it is not possible to have your cake and eat it. [17:31] schestowitz Reply [17:31] schestowitz Proof of the puddingMonday, 4 April 2022 at 18:11:00 GMT+1 [17:31] schestowitz Point 3.1.9 of the decision in T 1024/18 finally reveals the real reason why, in recent years, the EPO has started insisting upon a very strict standard for adaptation of the description: [17:31] schestowitz "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. Accordingly, misinterpretation could be avoided in particular if inconsistent information contained in the description or drawings is already removed in the proceedings before the EPO". [17:31] schestowitz Thus, the EPO's aim is to ensure consistency of post-grant claim interpretation between different national courts. However, this is not a legitimate objective for the EPO to pursue. [17:31] schestowitz Firstly, the role of the EPO is to grant patents, and not to set into concrete a specific interpretation of the claims of the patents that it grants. To do so would tie the hands of the national courts, making it pointless for them to consider submissions from litigants upon the interpretation of the claims. [17:32] schestowitz Secondly, when it comes to interpreting the claims of an application, EPO examiners never conduct a comprehensive analysis of the language of the claims. Indeed, EPO examiners never seek evidence from persons of ordinary skill in the art with regard to the meaning conveyed by claim wording. They also never consider equivalents. [17:32] schestowitz This second point is very important. No EPO examiner (or OD or Board of Appeal) can possibly know which disclosures of the description are "inconsistent" with the claims if the extent of protection conferred by the claims has never been properly determined, ie in the light of relevant expert evidence, and with full consideration afforded to both articles of the Protocol on the interpretation of Article 69 EPC. [17:32] schestowitz Thus, the EPO's "strict" standard for adapting the description deprives applicants of the full extent of protection to which their inventions are entitled. [17:32] schestowitz Reply [17:32] schestowitz Proof of the puddingMonday, 4 April 2022 at 18:12:00 GMT+1 [17:32] schestowitz Finally, the argument in T 1024/18 that "inconsistencies" in the description could give rise to divergent claim interpretations is itself inconsistent with established case law on claim interpretation. To illustrate, consider the following quotes from the Case Law book. [17:32] schestowitz T 1018/02: "the description could not be used to give a different meaning to a claim feature which in itself imparted a clear, credible technical teaching to the skilled reader". [17:32] schestowitz T 177/08: "the second sentence of Art. 69 EPC did not apply to cases where an unambiguous and generally accepted definition of a term figuring in the claims was to be superseded by a different definition found in the description". [17:32] schestowitz T 1896/11: "the description could not be used to give a different meaning to a claimed method step which in itself imparted a clear, credible, technical teaching to the skilled reader". [17:32] schestowitz T 2563/11: "the appellants had contended that the prohibition on double patenting did not apply because, despite their identically worded independent claims, the parent patent and the divisional application had different descriptions and so each conferred a different extent of protection under Art. 69 EPC. The board observed that the important point for the purposes of the prohibition on double patenting was whether the "same subject-matter" was [17:32] schestowitz claimed. A claim's subject-matter was defined by its category and technical features (Art. 84 EPC and R. 43(1) EPC). The description was therefore irrelevant in establishing whether the same subject-matter was claimed, especially if the claims in question were anyway clear and understandable in themselves". [17:32] schestowitz Therefore, in addition to being nonsensical, the interpretation of Art 84 outlined in T 1024/18 aims at achieving an illegitimate objective (one that usurps the role of the national courts, deprives applicants of their rights and effectively renders otiose Article 69 and its Protocol) and flatly contradicts established EPO case law. For these reasons, a return to a more relaxed (and more sensible) approach to adaptation of the description cannot [17:32] schestowitz come soon enough. [17:32] schestowitz Reply [17:32] schestowitz MaxDreiMonday, 4 April 2022 at 20:03:00 GMT+1 [17:32] schestowitz On Reasons 3.1.9 I have a question for readers: what basis does the Board have for its assertion that, when the patent is litigated, diverging interpretations of the scope of protection will inevitably occur, unless the EPO takes it upon itself to require amendment of the description until it "conforms" 100% to the allowable claims. You see, I don't believe it. It also strikes me as somewhat patronising of the patent judges of the jurisdictions [17:32] schestowitz within the EPC. [17:32] schestowitz Now I do get it, that one important purpose of Art 84 EPC is to allow readers of the grnted patent to work out for themselves what infringes and what does not. Of course the claims should be clear, before they are allowed. The thing is though, I am (still) not convinced that making 100% "conformity" a condition of compliance with Art 84 will do anything much to raise the level of certainty with which we decide what infringes a duly issued claim and [17:32] schestowitz what does not. Where is the basis for this Board to assert that, on the contrary, it will make all the difference? Is it anything more than the commonsense gut feeling of the Board members? [17:32] schestowitz Forcing strict conformity is i) expensive ii) sets up myriad fresh and promising new points under Art 123(2) EPC that can be taken whenever a party wants to put patent validity in dispute, and iii) is liable to put endless numbers of pending patent applications into the Bermuda Triangle (Art 84 vs 123(2) vs 54/56) resulting in loss of protection for deserving inventions, even before the application gets to issue. The EPO retort, that Applicant is [17:32] schestowitz author of its own misfortune, and should have drafted the application more thoughtfully, is understandable but not likely to endear the EPO to its customers, the ones who finance the service the EPO provides to innovative industry. [17:32] schestowitz Perhaps one day the point will go to the TBA, where extenal members who are national judges can help EPO insiders to a view which everybody can accept as pragmatic, fair and efficient. [17:32] schestowitz Reply [17:32] schestowitz DXThomasTuesday, 5 April 2022 at 00:43:00 GMT+1 [17:32] schestowitz Dear Max Drei and dear Proof of the pudding [17:32] schestowitz I have sympathy with your position and understand that you would like the description to be left untouched as much as possible. [17:32] schestowitz According to Art 84 and the corresponding established case law, a claim should be clear by itself without having recourse to the description. This does not mean the any statement in the description which allows a different interpretation of the claims, should necessity arise to look at the description, can be left in the description. [17:32] schestowitz It should not be allowed to leave in the description statements which allow to raise doubts about the interpretation of the claims. This has nothing to do with patronising national courts or not leaving them without any possibility to interpret the claims. [17:32] schestowitz If for instance a claim is limited by an optional feature, the description has to be amended so that the feature ending in the independent claim cannot not any longer be considered as merely optional. [17:32] schestowitz If embodiments are not any longer falling under the granted claims, what harm is there done when specifying this in the description. Whether those embodiments have to be deleted is a different question, and they could well be left in the original description in order to avoid any potential problems under Art 123(2). But simply leaving the description untouched would give a proprietor the possibility to extent the scope of the granted claims to [17:32] schestowitz features which are not covered by the claims. [17:32] schestowitz I fail to see how both those aspects would be limiting the possibility of national courts to decide on the interpretation of a claim? I do not think so. But I understand that the proprietor would like to be able to do so should necessity arises. But this is not what Art 84 provides for. [17:32] schestowitz What is to be criticised is the sometimes pedantic approach taken by some divisions. There is no doubt about this and the amendments to the Guidelines have attempted to limit such excesses. [17:32] schestowitz It is not because the EPO is actually paid by its users that the users should be free to decide what they want to see left in the description. The users have not defined the legal requirements, but the legal requirements are also there to defend an important stakeholder: third parties. Too often this aspect is forgotten. [17:32] schestowitz Claiming that the interpretation of Art 84 outlined in T 1024/18 is nonsensical and aims at achieving an illegitimate objective is at best to be considered as grossly excessive. T 1024/18 is by no means contradicting established EPO case law. The bulk of the case law provides that the description has to be adapted to the claim and it is difficult to understand that this should not be the case for whatever reason brought forward by representatives. [17:32] schestowitz That representatives see the interest of their clients is legitimate, but this is not necessarily the interest of the EPO which has, as said, also to take care of third parties. The monopoly given by a patent should be limited to the actual contribution to the art and not be possibly extended in some obscure way by leaving the description more or less untouched. [17:32] schestowitz In any case there is not generally valid of doctrine of equivalents in all contracting states of the EPC. As long that is not the case, and I fear that this will never occur, the description will have to be brought in conformity with the claims. [17:32] schestowitz The Contracting States did not agree on a definition of equivalents when amending the Protocol on Art 69 during the Diplomatic Conference of 2000, as Art 3 of the protocol proposed by the EPO was scrapped. However, this should not be taken as pretext to leave the description as it was originally filed so that the proprietor can attempt to give an interpretation as broad as possible to claims which by essence have to be clear as such by their wording. [17:32] schestowitz [17:32] schestowitz It reminds of the say of a well know late French lawyer, Me Mathely not to name him: the proprietor discovers his patent on the day of infringement. How true, when I see the frenzy of the profession in matters of adaptation of the description. [17:33] schestowitz Reply [17:33] schestowitz Replies [17:33] schestowitz Proof of the puddingTuesday, 5 April 2022 at 10:31:00 GMT+1 [17:33] schestowitz Daniel, on this occasion we shall just have to agree to differ. [17:33] schestowitz In my view, it should be enough to add a statement along the lines of "the invention relates to the subject matter defined in the attached claims", and to ensure that the description does not describe any (clearly) different or contradictory subject matter as "the invention". Anything going beyond this, which includes the current Guidelines, is reaching into the territory of tagging each and every individual disclosure of the description as relating [17:33] schestowitz to subject matter that is either "in" or "out" of the scope of the claims. This is where the adaptations to the description start to have the negative effects that I previously described. [17:33] schestowitz Frankly, it seems to me that the GL have been written with "simple" inventions in mind ... and certainly not those in the chemical or life science fields. This is because the principles outlined in the GL simply do not work well (or at all) for the myriad of confusing situations (including unclear and/or partial overlap) that can arise when compounds are described in generic terms, for example using Markush formulae. The situation can be especially [17:33] schestowitz difficult for very long descriptions (which are very common in the chemical and life science fields) that, in addition to using generic descriptions / formulae, provide specific (and sometimes complicated) definitions for long lists of terms used in those descriptions / formulae. For such cases, even if one wants to comply with the current GL, finding the right amendments to do so - without generating added matter / other invalidity risks - can be [17:33] schestowitz an absolute nightmare ... for essentially no discernible benefit to the public. [17:33] schestowitz AnonymousTuesday, 5 April 2022 at 12:52:00 GMT+1 [17:33] schestowitz I have a deal of sympathy with much of what you say and am surprised that there seems to so much resistance to amending the description and drawings to conform with the claims. I trained in the 1990s and was taught to do this as a matter of course. It seems to me that if Article 69 EPC is to be followed and the description and drawings are used to interpret the claims, it is particularly unhelpful to have to wade through a load of material [17:33] schestowitz describing 'embodiments' of the invention, that are no longer covered by the claims and not, at least, marked up as such. I have just had to advise on infringement of a European patent in which description of various embodiments that appear to be outside the scope of the amended claims was retained (although this was only about 95% certain because the description was generally speaking unclear) and would very much have appreciated the [17:33] schestowitz applicant being requested to justify retaining the material in question. For me, requiring that the description and drawings are consistent with the claims is entirely reasonable and supported by the requirements of the EPC. [17:33] schestowitz However, I really cannot accept, and have often argued against, the balderdash that Article 84 EPC requires that a claim should be clear by itself without recourse to the description. In reality, the majority of claims simply cannot be understood without recourse to the description and drawings. For example, in the case of many mechanical inventions, parts are specified in the claims that have no recognised name, so are given a name of choice by the [17:33] schestowitz author of the patent. Even in cases in which recognised terms, eg amplifier, are used, it is more often than not impossible to determine what a claim really means without reading the description. A more sensible interpretation of the clarity provision in Article 84 EPC is that a claim should be laid out in a logical manner and not unnecessarily convoluted (but then wait until you've needlessly tried to put it in the two-part form) and that it does [17:33] schestowitz not contain internal inconsistencies. As I often argued, and no doubt many others before me have done likewise, if a claim is supposed to be clear by itself, there is no point to Article 69 EPC and the Protocol, unless of course, the legislator was barmy enough to intended that entirely different standards of clarity apply to examination at the EPO and proceedings before the courts. [17:33] schestowitz Going off on a slight tangent, I have noticed of late, EPO examiners making significant changes to the description when sending out a Rule 71(3) EPC Communication, with only the barest explanation, eg matter irrelevant or casts doubt on the scope of the claims. Applicants/representatives are now required to give chapter and verse explanations of the basis for amendments and I really do not think it unreasonable that examiners making anything more [17:33] schestowitz than an obvious correction should not provide reasoning to support the changes made. As those of us on the representative side of the fence know, if an EPO examiner's amendment gives rise to problems post-grant, it is us that bear the consequences and the examiner will just say 'Your problem, nothing to do with me guv'. [17:33] schestowitz Reply [17:33] schestowitz MaxDreiTuesday, 5 April 2022 at 15:04:00 GMT+1 [17:33] schestowitz This in haste, because I want to get my point in while the thread is active but have not enough time today properly to mull over the thoughtful stuff others have written. So please forgive, if I don't give your writings sufficient deference. [17:33] schestowitz Mr Thomas, you say that the debate about conforming the description "has nothing to do with" patronising national judges who will look into infringement and validity after issue but, for me, that answer is not good enough. If I were a judge, I should prefer to have the case argued in front of me on the basis of i) the claims as issued and ii) the supporting description and drawings as they were on the filing date. That way, the issues are clear, and [17:33] schestowitz not muddied by the presence of a description full of text changes which might or might not comply with Art 123(2) EPC. It is all very well in theory arguing that 100% conformity cn be achieved by changing the text of the description during prosecution but, in practice, that is often not achievable. ED's are then in a bind. Do they refuse for failure to comply with Art 84? Or do they swallow their misgivings in order to let the inventor get [17:33] schestowitz protection for a clearly deserving invention? I think that ED's ought not to be put into this invidious position and I think that inventors should get what they deserve, even when the (first class) EPO search reveals art that confounds even the best efforts of a competent drafter. I admire the EPO for its efforts to deliver to national judges claims that are clear enough in themselves, clearly enabled over their scope, and clearly novel and not [17:33] schestowitz obvious, those claims being within specifications that are clearly free from added matter. But, I still think the EPO's insisting on 100% conformity is i) tantamount to being patronising to the national courts and ii) makes the job of those judges to serve the interests of justice between the parties harder rather than easier. [17:33] schestowitz Reply [17:33] schestowitz MaxDreiTuesday, 5 April 2022 at 17:08:00 GMT+1 [17:33] schestowitz Very quickly, another thought occurs to me, from the "representative" side of the debate. [17:33] schestowitz We are often called upon to construe an A publication and render from it an opinion on infringement and validity, on the basis of which client will (or will not) invest in building a new production facility (or whatever). Millions of dollars hang on that opinion, up to the end of the 20 year patent term. [17:33] schestowitz Years later, a patent juidge will construe the corresponding B publication and then render an opinion on infringement (by the accused embodiment) and validity (including whether matter was added during prosecution at the EPO). [17:33] schestowitz The question is: EPO insistence on amending the description, comprehensively and exhaustively, chasing 100% conformity with the allowable claims; does that render the judge's task any easier? [17:33] schestowitz D X Thomas surmises that it does. I assert that it does not. To the contrary, I think it complicates the judge's task. [17:33] schestowitz Where do other readers stand, on this interesting question. [17:33] schestowitz Reply [17:33] schestowitz MarkTuesday, 5 April 2022 at 17:34:00 GMT+1 [17:33] schestowitz A quick reply to this: [17:33] schestowitz "No other jurisdiction (as far as this Kat is aware) forces applicants to amend the description in line with the allowed claims. It is therefore a mystery to many attorneys why the EPO insists on placing this arguably unnecessary burden on applicants. After all, isn't the monopoly awarded by a patent defined by the claims?" [17:33] schestowitz The UK for one has the same requirement - based, of course on having the same law. [17:33] schestowitz And as others have commented, when it comes to assessing infringement it is a good thing; even before Actavis brought us the joy of equivalents, the principle of purposive construction required reference to the description to understand the terms of the claims, and if the description wasn't aligned with the claims, interpretation became difficult. And of course difficult interpretation leads to less legal certainty. [17:33] schestowitz Reply [17:34] schestowitz Replies [17:34] schestowitz AnonymousThursday, 7 April 2022 at 11:52:00 GMT+1 [17:34] schestowitz I can't recall the last time the UKIPO asked for the description to be updated in the draconian manner being required by the EPO. [17:34] schestowitz The EPO approach makes no sense; as noted in the article, the decided scope of the invention has been defined by the claims, and to suggest that the description would somehow confuse litigants (when it did not confuse the Examiner e.g. when considering Art 123) is patronising. [17:34] schestowitz The biggest issue though is *when* to made these deletions - no one wants to delete possible sources of amendment before an allowable set of claims has been reached - but we only know they are allowable when the Rule 71(3) communication has been issued - but now we have the catch 22 issue that a Rule 71(3) isn't issued until the description is fixed, and we don't know when to fix the description until a rule 71(3) is issued. [17:34] schestowitz It is a ridiculous problem of the EPO's own making and will coast either clients or representatives a lot of money, as well as risking the loss of otherwise valid patents. [17:34] schestowitz PeterThursday, 7 April 2022 at 13:01:00 GMT+1 [17:34] schestowitz The above commenter writes: "no one wants to delete possible sources of amendment before an allowable set of claims has been reached" . I don't understand this point. Article 123(2) is based on the application as filed, not on the application as amended. It is not assumed that applicants irrevocably abandon subject-matter when deleting claims, alternatively a remark with that purport can be made in the accompanying letter when submitting the [17:34] schestowitz amendments. [17:34] schestowitz Patent RobotFriday, 8 April 2022 at 10:42:00 GMT+1 [17:34] schestowitz Peter, can you introduce in the claims subject-matter deleted from the description (i.e. not present at all in the granted patent) during opposition proceedings, without violating Art. 123(3) EPC? [17:34] schestowitz Reply [17:34] schestowitz Francis HagelWednesday, 6 April 2022 at 15:05:00 GMT+1 [17:34] schestowitz Many insightful comments on this thread ! Proof of the Pudding s analysis of T 1024/18 was welcome as well as DX Thomasviews, even if I do not share them. A few personal views of an industrial practitionner : [17:34] schestowitz - When alternative embodiments are deleted in the granted patent, this is a loss of information. One has to compare the granted patent with the published application in order to retrieve the description as filed. Only for this reason, I prefer the US approach of leaving the description untouched. [17:34] schestowitz - Deletion of subject matter entails the risk of distorting the interpretation of the claims on the basis of information acquired after filing. It also requires careful review of Art 123(2) issues by the ED. [17:34] schestowitz - The EPOs focus on adapting the description to the claims as allowed is curious, when at the same time the EPOs unofficial policy is to consider the review of sufficiency under Art 83 as an issue to be left for third parties to raise by Art 115 observations or opposition. Recently, a seasoned examiner told me that in his decades of experience, he had only seen two refusal decisions based on Art 83. [17:34] schestowitz - The BOAs concern in T 1024/18 Reason 3.1.9 about divergence between national courts is difficult to understand considering the broad gaps which subsist between national courts over major issues esp. assessment of inventive step and the doctrine of equivalents. [17:34] schestowitz Reply [17:34] schestowitz Patent RobotThursday, 7 April 2022 at 08:30:00 GMT+1 [17:34] schestowitz The biggest mistake of the EPO is to consider unclaimed subject-matter as an "inconsistency" between the description and the claims. [17:34] schestowitz The EPO is the only patent office in the world requiring the deletion of unclaimed subject-matter, though there is no requirement at all in the EPC in this respect (certainly not in Art. 84). [17:34] schestowitz The only serious analysis has been made in T 18/1989 (if you read e.g. T 1808/06 you will see that it just copies the Guidelines requirement). [17:34] schestowitz Even the Case Law 2019 does not contain any indication in this respect and explains correctly the support requirement: [17:34] schestowitz "5. Claims supported by the description [17:34] schestowitz 5.1. General principles [17:34] schestowitz Art. 84 EPC stipulates that the claims must be supported by the description. This requirement means that the subject-matter of the claim must be taken from the description and it is not [17:34] schestowitz admissible to claim something which is not described." [17:34] schestowitz It is thus time that applicants and proprietors say "no" to the deletion of unclaimed subject-matter. [17:34] schestowitz Reply [17:34] schestowitz DXThomasFriday, 8 April 2022 at 21:18:00 GMT+1 [17:34] schestowitz I will not bother to reply in detail to the comments finding that the description should not be adapted to the claims, and especially to proof of the pudding. [17:34] schestowitz Just one comment: it is actually the lack of a properly adapted description in the pemetrexed case which allowed the proprietor to later claim more than what he had contributed to the prior art that is the combination of pemetrexed disodium and an antifolate like Vitamin B12. [17:34] schestowitz I just wish to draw your attention to two decisions published today 08.04.2022 which show clearly that the boards are not prepared to follow T 1989/18. [17:34] schestowitz In T 2613/18 the board held that a claim which is inconsistent with the description is not supported by the description under Art 84. The requirement of "support by the description" reflects the general legal principle that the extent of the patent monopoly, as defined by the claims, should correspond to the technical contribution to the art in order for it to be supported or justified (see e.g. T 133/85, Headnote 1; T 409/91, Reasons 3.3). [17:34] schestowitz The application was refused for lack of IS, but the refusal was confirmed as claim 1 of the MR was not supported by the description and AR1-4 were not admitted in the proceedings as being late filed. [17:34] schestowitz In T 121/20 the patent could be maintained in amended form according to AR4. Relying on T1989/18 the proprietor considered that there was no general provision in the EPC that required an adaptation of the description. [17:34] schestowitz The board made clear that it did not follow decision T 1989/18. [17:34] schestowitz In this respect the present Board agreed with the reasoning set out in decision T 1024/18 (see point 3.1 of the reasons), that the provision of Art 84 relates to claims in general and actually covers three distinct requirements on claims, namely their clarity, their conciseness and their support by the description. [17:34] schestowitz According to the board, the requirement of "clarity" of the claims, but is a requirement of its own (as is conciseness of the claims). The requirement in Art 84 of the claims to be supported by the description includes the requirement that the description is consistent with the claims not only in some part but throughout. [17:35] schestowitz Thus, when amendments are made to the claims (amendment to the granted claims in the present case), the description must be made consistent therewith in the sense that a reader is not presented with any information conflicting with the wording of the claims. [17:35] schestowitz The board remitted to the opposition division to maintain the patent on the basis of AR4 which implies that the description has to be adapted to the claims. [17:35] schestowitz Reply [17:35] schestowitz MaxDreiSaturday, 9 April 2022 at 23:02:00 GMT+1 [17:35] schestowitz Friday evening's comment from ex-EPO DXThomas, referring us to T2613/18 and T 121/20, confirm to us how deeply embedded in EPO thinking is the need for 100% conformity between the description going to grant and the claim going to grant. The reason is stated baldly in T121/20 at Reasons 10.1, namely, that disconformity "raises doubts about the scope of claim 1". Does it? I say not. [17:35] schestowitz For me, the mere presence of a disconformity is not sufficient to "raise" the level of uncertainty, in the heads of judges in national courts, what scope to accord to claim 1. No other Patent Office rides this "conformity" hobby horse. Lack of 100% conformity seems not to be a problem for judges outside the EPC area. I have yet to see the EPO's Boards of Appeal cite any evidence for their incessant assertion that conforming the description would [17:35] schestowitz simplify the burden on the court to fix the scope of the claim. Instead, it seems to be nothing more than commonsense and gut feeling, which leads the Board members to their assertion. For me, what really does "raise doubts" is the EPO assertion that within Art 84 EPC is to be found a mandatory requirement for 100% conformity. [17:35] schestowitz I wonder, can an EPO Board Decision cite cases from jurisdictions outside the EPC, where the court explains that it is the presence of a disconformity between the description as filed and the claim as granted that has made it harder to settle upon the proper scope of the claim? I'm not holding my breath on that one. [17:35] schestowitz Mr Thomas cites the pemetrexed case, in which potassium was found equivalent to the "sodium" of the claim. Personally, and with great respect to Mr Thomas, I doubt that conforming the description would have made any difference to the outcome. I think that even with a conformed description, it would have been just as open to the court to find potassium an equivalent to sodium. [17:35] schestowitz T121/20 turns on the expression "nicotine-free" in the claim of AR4 while para [0033] of the application as filed states that the liquid "may contain nicotine". Again, the notion that original para [0033] would throw the court into confusion and doubt, how to construe "nicotine-free" in the claim going to grant strikes me as a fine example of wishful thinking, and of the patronisation I mention earlier in this comments thread. [17:35] schestowitz I can see that EPO Examiners and even technical members of TBA's can plausibly "don the mantle" of one "skilled in the art". What raises doubts in my mind is the extent to which TBA members can put themselves in the shoes of a national patents court judge deciding whether an accused embodiment is or is not an infringing equivalent. I mean, what relevant experience of such a thinking process do they have, which enables them to assess what raises [17:35] schestowitz doubts in the judge's mind and what does not? [17:35] schestowitz Over to you, Mr Thomas. Your contributions really are very helpful to the debate. [17:35] schestowitz MaxDreiMonday, 4 April 2022 at 10:41:00 GMT+1 [17:35] schestowitz Rose, if I see it right, in your "party line" case, T1024/18, the Rapporteur is somebody who came to the Boards of Appeal after a successful career in examining applications at the EPO while the Chair came from a successful career in private practive at a well-known, established and respected European patent firm. [17:35] schestowitz As to the maverick decision T1989/18, I don't know anything about its authors, and their backgrounds. Who here does, I wonder. [17:35] schestowitz Reply [17:35] schestowitz PeterMonday, 4 April 2022 at 11:29:00 GMT+1 [17:35] schestowitz Rose, you correctly note that the Guidelines state that: 'However, the EPO Guidelines indicate elsewhere that "[e]ach claim must be read giving the words the meaning and scope which they normally have in the relevant art" and further "require the claim to be amended whereby the meaning is clear from the wording of the claim alone.". However, the present decision focuses on the "support" requirement of Art. 84, not on the "shall be clear" requirement [17:35] schestowitz of Art. 84. Hence the comments in the GL do not diminish the validity of the reasoning of the present Board in any way, in my view. [17:35] schestowitz The same observation can be made for your argument that "does this not demonstrate that the scope of the claims is clear?". [17:35] schestowitz Reply [17:35] schestowitz Attentive ObserverMonday, 4 April 2022 at 11:30:00 GMT+1 [17:35] schestowitz I would like to add [17:35] schestowitz 1) The chair of the board might have come from private when he was appointed as technical member of the boards, but was previously, and for quite a while, himself examiner at the EPO. [17:35] schestowitz 2) the lead legal member in T 1024/18 was, before being appointed at the BA as legal member, member of directorate 5.2 which supports examining and opposition divisions when legal questions arise. [17:35] schestowitz T 1024/18 does thus not come to me as a surprise. [17:35] schestowitz Reply [17:35] schestowitz DXThomasMonday, 4 April 2022 at 15:00:00 GMT+1 [17:35] schestowitz Reply part 1 [17:35] schestowitz I never understood the frenzy that has taken over the profession after the publication of T 1989/18. [17:35] schestowitz A careful look at the case law would have made abundantly clear that the hopes raised in the profession that the description would no longer have to be adapted to the claims was more wishful thinking than a realistic assessment of the situation. [17:35] schestowitz T 1024/18 has set the record straight. It is by far not an isolated decision but there have been many other decisions before, and especially after T 1989/18, which have confirmed the fact that the description must be adapted to the claims. [17:35] schestowitz If boards directly decide grant or maintenance in amended form in the presence of an adapted description or refer back to the first instance for adaptation of the description, they make clear that the description must be adapted to the claims. [17:35] schestowitz The T 1989/18 interlude is over! I think that T 1024/18 was greeted with a sigh of relief at the EPO. [17:35] schestowitz Relying on a referral from the President for a one-off decision that goes against the prevailing jurisprudence is wishful thinking. [17:35] schestowitz I further fail to see why the reasoning of the board has become rather circular. Art 84 has the triple function to insure that the claims are [17:35] schestowitz - clear in the ordinary meaning of the word; [17:35] schestowitz - concise [17:35] schestowitz - supported by the description, which has a specific meaning which was reminded in T 1024/18. [17:36] schestowitz In T 696/16 the ED had argued that there the description did not disclose a way of carrying out the invention claimed, cf. R 42(1,e). For the ED the claims were not supported by the description as in its opinion a link was missing between claims and description. The board disagreed and found that the spray head depicted in the figures met the requirements of R 42(1,e) in that one way of carrying out the invention claimed was disclosed. [17:36] schestowitz In T 758/13 the board held that that the repetition of the wording of the claim in the description does not provide support for claim 1 of the second, third, fourth and fifth auxiliary requests and hence confirmed the refusal of the application. [17:36] schestowitz Those two decisions make clear that description should be in correspondence with the technical teaching of the claims. [17:36] schestowitz Conversely, all decisions according to which the description should be adapted to the claims have the aim to make clear that the description should not allow a different interpretation of the claims than that which directly results from their wording. [17:36] schestowitz The claims ought to be clear as such without recourse to the description, but this does not mean at all that the description could allow a different interpretation of the claims. If this would be considered allowable, it would deprive the last condition in Art 84 of any meaning. [17:36] schestowitz The board was right in T 1024/18, when requiring that the description should be amended so that the reader is not presented with any information conflicting the wording of the claims. Given that the patentee in the case had not filed an amended description in line with the otherwise allowable AR, the patent was revoked. [17:36] schestowitz Reply [17:36] schestowitz DXThomasMonday, 4 April 2022 at 15:01:00 GMT+1 [17:36] schestowitz Reply part 2 [17:36] schestowitz The Boards of Appeal and Examiners are, independently of T 1989/18, well aware of the depth of feeling by EPO users on the issue of description amendments. Contrary to what is said the legal basis is not disputed at all. The legal basis has just been reminded in T 1024/18 whereas T 1989/18 just muddled the issues. But being aware of the depth of feeling of dissatisfaction of the users does not mean that the legal requirements can be ignored. [17:36] schestowitz That some divisions had a rather pedantic approach and other were simply not bothering is not a licence to ignore legal requirements. This was the meaning of the amendments of the Guidelines in 2021 and 2022. [17:36] schestowitz If an applicant/proprietor files new requests and absents himself form the proceedings, the requests should not only comprise new claims, but a description adapted to all the various requests [17:36] schestowitz - the application is refused T 893/01, T 109/02 [17:36] schestowitz - the patent is revoked T 725/00, T 986/00 [17:36] schestowitz Those decisions are exemplary of many more. [17:36] schestowitz There are also boards which remitted to the first instance to adapt the description in spite of the absence of the party at the oral proceedings, for instance T 484/12. [17:36] schestowitz In T 1024/18 the proprietor was absent and the board refused to remit in accordance with previous decisions. [17:36] schestowitz If by any chance the last sentence of Art 84 was to be deleted, then, indeed, there would be no need to adapt the description to the claims. [17:36] schestowitz Should this occur, the applicant's statements during examination would then have to be taken into account in a dispute over the interpretation of the granted claims. In other words, it is not possible to have your cake and eat it. [17:36] schestowitz Reply [17:36] schestowitz Proof of the puddingMonday, 4 April 2022 at 18:11:00 GMT+1 [17:36] schestowitz Point 3.1.9 of the decision in T 1024/18 finally reveals the real reason why, in recent years, the EPO has started insisting upon a very strict standard for adaptation of the description: [17:36] schestowitz "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. Accordingly, misinterpretation could be avoided in particular if inconsistent information contained in the description or drawings is already removed in the proceedings before the EPO". [17:36] schestowitz Thus, the EPO's aim is to ensure consistency of post-grant claim interpretation between different national courts. However, this is not a legitimate objective for the EPO to pursue. [17:36] schestowitz Firstly, the role of the EPO is to grant patents, and not to set into concrete a specific interpretation of the claims of the patents that it grants. To do so would tie the hands of the national courts, making it pointless for them to consider submissions from litigants upon the interpretation of the claims. [17:36] schestowitz Secondly, when it comes to interpreting the claims of an application, EPO examiners never conduct a comprehensive analysis of the language of the claims. Indeed, EPO examiners never seek evidence from persons of ordinary skill in the art with regard to the meaning conveyed by claim wording. They also never consider equivalents. [17:36] schestowitz This second point is very important. No EPO examiner (or OD or Board of Appeal) can possibly know which disclosures of the description are "inconsistent" with the claims if the extent of protection conferred by the claims has never been properly determined, ie in the light of relevant expert evidence, and with full consideration afforded to both articles of the Protocol on the interpretation of Article 69 EPC. [17:36] schestowitz Thus, the EPO's "strict" standard for adapting the description deprives applicants of the full extent of protection to which their inventions are entitled. [17:36] schestowitz Reply [17:36] schestowitz Proof of the puddingMonday, 4 April 2022 at 18:12:00 GMT+1 [17:36] schestowitz Finally, the argument in T 1024/18 that "inconsistencies" in the description could give rise to divergent claim interpretations is itself inconsistent with established case law on claim interpretation. To illustrate, consider the following quotes from the Case Law book. [17:36] schestowitz T 1018/02: "the description could not be used to give a different meaning to a claim feature which in itself imparted a clear, credible technical teaching to the skilled reader". [17:36] schestowitz T 177/08: "the second sentence of Art. 69 EPC did not apply to cases where an unambiguous and generally accepted definition of a term figuring in the claims was to be superseded by a different definition found in the description". [17:36] schestowitz T 1896/11: "the description could not be used to give a different meaning to a claimed method step which in itself imparted a clear, credible, technical teaching to the skilled reader". [17:36] schestowitz T 2563/11: "the appellants had contended that the prohibition on double patenting did not apply because, despite their identically worded independent claims, the parent patent and the divisional application had different descriptions and so each conferred a different extent of protection under Art. 69 EPC. The board observed that the important point for the purposes of the prohibition on double patenting was whether the "same subject-matter" was [17:36] schestowitz claimed. A claim's subject-matter was defined by its category and technical features (Art. 84 EPC and R. 43(1) EPC). The description was therefore irrelevant in establishing whether the same subject-matter was claimed, especially if the claims in question were anyway clear and understandable in themselves". [17:36] schestowitz Therefore, in addition to being nonsensical, the interpretation of Art 84 outlined in T 1024/18 aims at achieving an illegitimate objective (one that usurps the role of the national courts, deprives applicants of their rights and effectively renders otiose Article 69 and its Protocol) and flatly contradicts established EPO case law. For these reasons, a return to a more relaxed (and more sensible) approach to adaptation of the description cannot [17:36] schestowitz come soon enough. [17:36] schestowitz Reply [17:36] schestowitz MaxDreiMonday, 4 April 2022 at 20:03:00 GMT+1 [17:37] schestowitz On Reasons 3.1.9 I have a question for readers: what basis does the Board have for its assertion that, when the patent is litigated, diverging interpretations of the scope of protection will inevitably occur, unless the EPO takes it upon itself to require amendment of the description until it "conforms" 100% to the allowable claims. You see, I don't believe it. It also strikes me as somewhat patronising of the patent judges of the jurisdictions [17:37] schestowitz within the EPC. [17:37] schestowitz Now I do get it, that one important purpose of Art 84 EPC is to allow readers of the grnted patent to work out for themselves what infringes and what does not. Of course the claims should be clear, before they are allowed. The thing is though, I am (still) not convinced that making 100% "conformity" a condition of compliance with Art 84 will do anything much to raise the level of certainty with which we decide what infringes a duly issued claim and [17:37] schestowitz what does not. Where is the basis for this Board to assert that, on the contrary, it will make all the difference? Is it anything more than the commonsense gut feeling of the Board members? [17:37] schestowitz Forcing strict conformity is i) expensive ii) sets up myriad fresh and promising new points under Art 123(2) EPC that can be taken whenever a party wants to put patent validity in dispute, and iii) is liable to put endless numbers of pending patent applications into the Bermuda Triangle (Art 84 vs 123(2) vs 54/56) resulting in loss of protection for deserving inventions, even before the application gets to issue. The EPO retort, that Applicant is [17:37] schestowitz author of its own misfortune, and should have drafted the application more thoughtfully, is understandable but not likely to endear the EPO to its customers, the ones who finance the service the EPO provides to innovative industry. [17:37] schestowitz Perhaps one day the point will go to the TBA, where extenal members who are national judges can help EPO insiders to a view which everybody can accept as pragmatic, fair and efficient. [17:37] schestowitz Reply [17:37] schestowitz DXThomasTuesday, 5 April 2022 at 00:43:00 GMT+1 [17:37] schestowitz Dear Max Drei and dear Proof of the pudding [17:37] schestowitz I have sympathy with your position and understand that you would like the description to be left untouched as much as possible. [17:37] schestowitz According to Art 84 and the corresponding established case law, a claim should be clear by itself without having recourse to the description. This does not mean the any statement in the description which allows a different interpretation of the claims, should necessity arise to look at the description, can be left in the description. [17:37] schestowitz It should not be allowed to leave in the description statements which allow to raise doubts about the interpretation of the claims. This has nothing to do with patronising national courts or not leaving them without any possibility to interpret the claims. [17:37] schestowitz If for instance a claim is limited by an optional feature, the description has to be amended so that the feature ending in the independent claim cannot not any longer be considered as merely optional. [17:37] schestowitz If embodiments are not any longer falling under the granted claims, what harm is there done when specifying this in the description. Whether those embodiments have to be deleted is a different question, and they could well be left in the original description in order to avoid any potential problems under Art 123(2). But simply leaving the description untouched would give a proprietor the possibility to extent the scope of the granted claims to [17:37] schestowitz features which are not covered by the claims. [17:37] schestowitz I fail to see how both those aspects would be limiting the possibility of national courts to decide on the interpretation of a claim? I do not think so. But I understand that the proprietor would like to be able to do so should necessity arises. But this is not what Art 84 provides for. [17:37] schestowitz What is to be criticised is the sometimes pedantic approach taken by some divisions. There is no doubt about this and the amendments to the Guidelines have attempted to limit such excesses. [17:37] schestowitz It is not because the EPO is actually paid by its users that the users should be free to decide what they want to see left in the description. The users have not defined the legal requirements, but the legal requirements are also there to defend an important stakeholder: third parties. Too often this aspect is forgotten. [17:37] schestowitz Claiming that the interpretation of Art 84 outlined in T 1024/18 is nonsensical and aims at achieving an illegitimate objective is at best to be considered as grossly excessive. T 1024/18 is by no means contradicting established EPO case law. The bulk of the case law provides that the description has to be adapted to the claim and it is difficult to understand that this should not be the case for whatever reason brought forward by representatives. [17:37] schestowitz That representatives see the interest of their clients is legitimate, but this is not necessarily the interest of the EPO which has, as said, also to take care of third parties. The monopoly given by a patent should be limited to the actual contribution to the art and not be possibly extended in some obscure way by leaving the description more or less untouched. [17:37] schestowitz In any case there is not generally valid of doctrine of equivalents in all contracting states of the EPC. As long that is not the case, and I fear that this will never occur, the description will have to be brought in conformity with the claims. [17:37] schestowitz The Contracting States did not agree on a definition of equivalents when amending the Protocol on Art 69 during the Diplomatic Conference of 2000, as Art 3 of the protocol proposed by the EPO was scrapped. However, this should not be taken as pretext to leave the description as it was originally filed so that the proprietor can attempt to give an interpretation as broad as possible to claims which by essence have to be clear as such by their wording. [17:37] schestowitz [17:37] schestowitz It reminds of the say of a well know late French lawyer, Me Mathely not to name him: the proprietor discovers his patent on the day of infringement. How true, when I see the frenzy of the profession in matters of adaptation of the description. [17:37] schestowitz Reply [17:37] schestowitz Replies [17:37] schestowitz Proof of the puddingTuesday, 5 April 2022 at 10:31:00 GMT+1 [17:37] schestowitz Daniel, on this occasion we shall just have to agree to differ. [17:37] schestowitz In my view, it should be enough to add a statement along the lines of "the invention relates to the subject matter defined in the attached claims", and to ensure that the description does not describe any (clearly) different or contradictory subject matter as "the invention". Anything going beyond this, which includes the current Guidelines, is reaching into the territory of tagging each and every individual disclosure of the description as relating [17:37] schestowitz to subject matter that is either "in" or "out" of the scope of the claims. This is where the adaptations to the description start to have the negative effects that I previously described. [17:37] schestowitz Frankly, it seems to me that the GL have been written with "simple" inventions in mind ... and certainly not those in the chemical or life science fields. This is because the principles outlined in the GL simply do not work well (or at all) for the myriad of confusing situations (including unclear and/or partial overlap) that can arise when compounds are described in generic terms, for example using Markush formulae. The situation can be especially [17:37] schestowitz difficult for very long descriptions (which are very common in the chemical and life science fields) that, in addition to using generic descriptions / formulae, provide specific (and sometimes complicated) definitions for long lists of terms used in those descriptions / formulae. For such cases, even if one wants to comply with the current GL, finding the right amendments to do so - without generating added matter / other invalidity risks - can be [17:37] schestowitz an absolute nightmare ... for essentially no discernible benefit to the public. [17:37] schestowitz AnonymousTuesday, 5 April 2022 at 12:52:00 GMT+1 [17:37] schestowitz I have a deal of sympathy with much of what you say and am surprised that there seems to so much resistance to amending the description and drawings to conform with the claims. I trained in the 1990s and was taught to do this as a matter of course. It seems to me that if Article 69 EPC is to be followed and the description and drawings are used to interpret the claims, it is particularly unhelpful to have to wade through a load of material [17:37] schestowitz describing 'embodiments' of the invention, that are no longer covered by the claims and not, at least, marked up as such. I have just had to advise on infringement of a European patent in which description of various embodiments that appear to be outside the scope of the amended claims was retained (although this was only about 95% certain because the description was generally speaking unclear) and would very much have appreciated the [17:37] schestowitz applicant being requested to justify retaining the material in question. For me, requiring that the description and drawings are consistent with the claims is entirely reasonable and supported by the requirements of the EPC. [17:37] schestowitz However, I really cannot accept, and have often argued against, the balderdash that Article 84 EPC requires that a claim should be clear by itself without recourse to the description. In reality, the majority of claims simply cannot be understood without recourse to the description and drawings. For example, in the case of many mechanical inventions, parts are specified in the claims that have no recognised name, so are given a name of choice by the [17:37] schestowitz author of the patent. Even in cases in which recognised terms, eg amplifier, are used, it is more often than not impossible to determine what a claim really means without reading the description. A more sensible interpretation of the clarity provision in Article 84 EPC is that a claim should be laid out in a logical manner and not unnecessarily convoluted (but then wait until you've needlessly tried to put it in the two-part form) and that it does [17:38] schestowitz not contain internal inconsistencies. As I often argued, and no doubt many others before me have done likewise, if a claim is supposed to be clear by itself, there is no point to Article 69 EPC and the Protocol, unless of course, the legislator was barmy enough to intended that entirely different standards of clarity apply to examination at the EPO and proceedings before the courts. [17:38] schestowitz Going off on a slight tangent, I have noticed of late, EPO examiners making significant changes to the description when sending out a Rule 71(3) EPC Communication, with only the barest explanation, eg matter irrelevant or casts doubt on the scope of the claims. Applicants/representatives are now required to give chapter and verse explanations of the basis for amendments and I really do not think it unreasonable that examiners making anything more [17:38] schestowitz than an obvious correction should not provide reasoning to support the changes made. As those of us on the representative side of the fence know, if an EPO examiner's amendment gives rise to problems post-grant, it is us that bear the consequences and the examiner will just say 'Your problem, nothing to do with me guv'. [17:38] schestowitz Reply [17:38] schestowitz MaxDreiTuesday, 5 April 2022 at 15:04:00 GMT+1 [17:38] schestowitz This in haste, because I want to get my point in while the thread is active but have not enough time today properly to mull over the thoughtful stuff others have written. So please forgive, if I don't give your writings sufficient deference. [17:38] schestowitz Mr Thomas, you say that the debate about conforming the description "has nothing to do with" patronising national judges who will look into infringement and validity after issue but, for me, that answer is not good enough. If I were a judge, I should prefer to have the case argued in front of me on the basis of i) the claims as issued and ii) the supporting description and drawings as they were on the filing date. That way, the issues are clear, and [17:38] schestowitz not muddied by the presence of a description full of text changes which might or might not comply with Art 123(2) EPC. It is all very well in theory arguing that 100% conformity cn be achieved by changing the text of the description during prosecution but, in practice, that is often not achievable. ED's are then in a bind. Do they refuse for failure to comply with Art 84? Or do they swallow their misgivings in order to let the inventor get [17:38] schestowitz protection for a clearly deserving invention? I think that ED's ought not to be put into this invidious position and I think that inventors should get what they deserve, even when the (first class) EPO search reveals art that confounds even the best efforts of a competent drafter. I admire the EPO for its efforts to deliver to national judges claims that are clear enough in themselves, clearly enabled over their scope, and clearly novel and not [17:38] schestowitz obvious, those claims being within specifications that are clearly free from added matter. But, I still think the EPO's insisting on 100% conformity is i) tantamount to being patronising to the national courts and ii) makes the job of those judges to serve the interests of justice between the parties harder rather than easier. [17:38] schestowitz Reply [17:38] schestowitz MaxDreiTuesday, 5 April 2022 at 17:08:00 GMT+1 [17:38] schestowitz Very quickly, another thought occurs to me, from the "representative" side of the debate. [17:38] schestowitz We are often called upon to construe an A publication and render from it an opinion on infringement and validity, on the basis of which client will (or will not) invest in building a new production facility (or whatever). Millions of dollars hang on that opinion, up to the end of the 20 year patent term. [17:38] schestowitz Years later, a patent juidge will construe the corresponding B publication and then render an opinion on infringement (by the accused embodiment) and validity (including whether matter was added during prosecution at the EPO). [17:38] schestowitz The question is: EPO insistence on amending the description, comprehensively and exhaustively, chasing 100% conformity with the allowable claims; does that render the judge's task any easier? [17:38] schestowitz D X Thomas surmises that it does. I assert that it does not. To the contrary, I think it complicates the judge's task. [17:38] schestowitz Where do other readers stand, on this interesting question. [17:38] schestowitz Reply [17:38] schestowitz MarkTuesday, 5 April 2022 at 17:34:00 GMT+1 [17:38] schestowitz A quick reply to this: [17:38] schestowitz "No other jurisdiction (as far as this Kat is aware) forces applicants to amend the description in line with the allowed claims. It is therefore a mystery to many attorneys why the EPO insists on placing this arguably unnecessary burden on applicants. After all, isn't the monopoly awarded by a patent defined by the claims?" [17:38] schestowitz The UK for one has the same requirement - based, of course on having the same law. [17:38] schestowitz And as others have commented, when it comes to assessing infringement it is a good thing; even before Actavis brought us the joy of equivalents, the principle of purposive construction required reference to the description to understand the terms of the claims, and if the description wasn't aligned with the claims, interpretation became difficult. And of course difficult interpretation leads to less legal certainty. [17:38] schestowitz Reply [17:38] schestowitz Replies [17:38] schestowitz AnonymousThursday, 7 April 2022 at 11:52:00 GMT+1 [17:38] schestowitz I can't recall the last time the UKIPO asked for the description to be updated in the draconian manner being required by the EPO. [17:38] schestowitz The EPO approach makes no sense; as noted in the article, the decided scope of the invention has been defined by the claims, and to suggest that the description would somehow confuse litigants (when it did not confuse the Examiner e.g. when considering Art 123) is patronising. [17:38] schestowitz The biggest issue though is *when* to made these deletions - no one wants to delete possible sources of amendment before an allowable set of claims has been reached - but we only know they are allowable when the Rule 71(3) communication has been issued - but now we have the catch 22 issue that a Rule 71(3) isn't issued until the description is fixed, and we don't know when to fix the description until a rule 71(3) is issued. [17:38] schestowitz It is a ridiculous problem of the EPO's own making and will coast either clients or representatives a lot of money, as well as risking the loss of otherwise valid patents. [17:38] schestowitz PeterThursday, 7 April 2022 at 13:01:00 GMT+1 [17:38] schestowitz The above commenter writes: "no one wants to delete possible sources of amendment before an allowable set of claims has been reached" . I don't understand this point. Article 123(2) is based on the application as filed, not on the application as amended. It is not assumed that applicants irrevocably abandon subject-matter when deleting claims, alternatively a remark with that purport can be made in the accompanying letter when submitting the [17:38] schestowitz amendments. [17:38] schestowitz Patent RobotFriday, 8 April 2022 at 10:42:00 GMT+1 [17:38] schestowitz Peter, can you introduce in the claims subject-matter deleted from the description (i.e. not present at all in the granted patent) during opposition proceedings, without violating Art. 123(3) EPC? [17:38] schestowitz Reply [17:38] schestowitz Francis HagelWednesday, 6 April 2022 at 15:05:00 GMT+1 [17:38] schestowitz Many insightful comments on this thread ! Proof of the Pudding s analysis of T 1024/18 was welcome as well as DX Thomasviews, even if I do not share them. A few personal views of an industrial practitionner : [17:38] schestowitz - When alternative embodiments are deleted in the granted patent, this is a loss of information. One has to compare the granted patent with the published application in order to retrieve the description as filed. Only for this reason, I prefer the US approach of leaving the description untouched. [17:39] schestowitz - Deletion of subject matter entails the risk of distorting the interpretation of the claims on the basis of information acquired after filing. It also requires careful review of Art 123(2) issues by the ED. [17:39] schestowitz - The EPOs focus on adapting the description to the claims as allowed is curious, when at the same time the EPOs unofficial policy is to consider the review of sufficiency under Art 83 as an issue to be left for third parties to raise by Art 115 observations or opposition. Recently, a seasoned examiner told me that in his decades of experience, he had only seen two refusal decisions based on Art 83. [17:39] schestowitz - The BOAs concern in T 1024/18 Reason 3.1.9 about divergence between national courts is difficult to understand considering the broad gaps which subsist between national courts over major issues esp. assessment of inventive step and the doctrine of equivalents. [17:39] schestowitz Reply [17:39] schestowitz Patent RobotThursday, 7 April 2022 at 08:30:00 GMT+1 [17:39] schestowitz The biggest mistake of the EPO is to consider unclaimed subject-matter as an "inconsistency" between the description and the claims. [17:39] schestowitz The EPO is the only patent office in the world requiring the deletion of unclaimed subject-matter, though there is no requirement at all in the EPC in this respect (certainly not in Art. 84). [17:39] schestowitz The only serious analysis has been made in T 18/1989 (if you read e.g. T 1808/06 you will see that it just copies the Guidelines requirement). [17:39] schestowitz Even the Case Law 2019 does not contain any indication in this respect and explains correctly the support requirement: [17:39] schestowitz "5. Claims supported by the description [17:39] schestowitz 5.1. General principles [17:39] schestowitz Art. 84 EPC stipulates that the claims must be supported by the description. This requirement means that the subject-matter of the claim must be taken from the description and it is not [17:39] schestowitz admissible to claim something which is not described." [17:39] schestowitz It is thus time that applicants and proprietors say "no" to the deletion of unclaimed subject-matter. [17:39] schestowitz Reply [17:39] schestowitz DXThomasFriday, 8 April 2022 at 21:18:00 GMT+1 [17:39] schestowitz I will not bother to reply in detail to the comments finding that the description should not be adapted to the claims, and especially to proof of the pudding. [17:39] schestowitz Just one comment: it is actually the lack of a properly adapted description in the pemetrexed case which allowed the proprietor to later claim more than what he had contributed to the prior art that is the combination of pemetrexed disodium and an antifolate like Vitamin B12. [17:39] schestowitz I just wish to draw your attention to two decisions published today 08.04.2022 which show clearly that the boards are not prepared to follow T 1989/18. [17:39] schestowitz In T 2613/18 the board held that a claim which is inconsistent with the description is not supported by the description under Art 84. The requirement of "support by the description" reflects the general legal principle that the extent of the patent monopoly, as defined by the claims, should correspond to the technical contribution to the art in order for it to be supported or justified (see e.g. T 133/85, Headnote 1; T 409/91, Reasons 3.3). [17:39] schestowitz The application was refused for lack of IS, but the refusal was confirmed as claim 1 of the MR was not supported by the description and AR1-4 were not admitted in the proceedings as being late filed. [17:39] schestowitz In T 121/20 the patent could be maintained in amended form according to AR4. Relying on T1989/18 the proprietor considered that there was no general provision in the EPC that required an adaptation of the description. [17:39] schestowitz The board made clear that it did not follow decision T 1989/18. [17:39] schestowitz In this respect the present Board agreed with the reasoning set out in decision T 1024/18 (see point 3.1 of the reasons), that the provision of Art 84 relates to claims in general and actually covers three distinct requirements on claims, namely their clarity, their conciseness and their support by the description. [17:39] schestowitz According to the board, the requirement of "clarity" of the claims, but is a requirement of its own (as is conciseness of the claims). The requirement in Art 84 of the claims to be supported by the description includes the requirement that the description is consistent with the claims not only in some part but throughout. [17:39] schestowitz Thus, when amendments are made to the claims (amendment to the granted claims in the present case), the description must be made consistent therewith in the sense that a reader is not presented with any information conflicting with the wording of the claims. [17:39] schestowitz The board remitted to the opposition division to maintain the patent on the basis of AR4 which implies that the description has to be adapted to the claims. [17:39] schestowitz Reply [17:39] schestowitz MaxDreiSaturday, 9 April 2022 at 23:02:00 GMT+1 [17:39] schestowitz Friday evening's comment from ex-EPO DXThomas, referring us to T2613/18 and T 121/20, confirm to us how deeply embedded in EPO thinking is the need for 100% conformity between the description going to grant and the claim going to grant. The reason is stated baldly in T121/20 at Reasons 10.1, namely, that disconformity "raises doubts about the scope of claim 1". Does it? I say not. [17:39] schestowitz For me, the mere presence of a disconformity is not sufficient to "raise" the level of uncertainty, in the heads of judges in national courts, what scope to accord to claim 1. No other Patent Office rides this "conformity" hobby horse. Lack of 100% conformity seems not to be a problem for judges outside the EPC area. I have yet to see the EPO's Boards of Appeal cite any evidence for their incessant assertion that conforming the description would [17:39] schestowitz simplify the burden on the court to fix the scope of the claim. Instead, it seems to be nothing more than commonsense and gut feeling, which leads the Board members to their assertion. For me, what really does "raise doubts" is the EPO assertion that within Art 84 EPC is to be found a mandatory requirement for 100% conformity. [17:39] schestowitz I wonder, can an EPO Board Decision cite cases from jurisdictions outside the EPC, where the court explains that it is the presence of a disconformity between the description as filed and the claim as granted that has made it harder to settle upon the proper scope of the claim? I'm not holding my breath on that one. [17:39] schestowitz Mr Thomas cites the pemetrexed case, in which potassium was found equivalent to the "sodium" of the claim. Personally, and with great respect to Mr Thomas, I doubt that conforming the description would have made any difference to the outcome. I think that even with a conformed description, it would have been just as open to the court to find potassium an equivalent to sodium. [17:39] schestowitz T121/20 turns on the expression "nicotine-free" in the claim of AR4 while para [0033] of the application as filed states that the liquid "may contain nicotine". Again, the notion that original para [0033] would throw the court into confusion and doubt, how to construe "nicotine-free" in the claim going to grant strikes me as a fine example of wishful thinking, and of the patronisation I mention earlier in this comments thread. [17:39] schestowitz I can see that EPO Examiners and even technical members of TBA's can plausibly "don the mantle" of one "skilled in the art". What raises doubts in my mind is the extent to which TBA members can put themselves in the shoes of a national patents court judge deciding whether an accused embodiment is or is not an infringing equivalent. I mean, what relevant experience of such a thinking process do they have, which enables them to assess what raises [17:39] schestowitz doubts in the judge's mind and what does not? [17:39] schestowitz Over to you, Mr Thomas. Your contributions really are very helpful to the debate. [17:39] schestowitz http://ipkitten.blogspot.com/2022/02/st-26-sequence-listings-forward-or.html?showComment=1649085839090#c1553406659834984144 [17:39] -TechBytesBot/#techbytes-ipkitten.blogspot.com | ST. 26 sequence listings: A forward or backward step for ease of access to patent sequence data? - The IPKat [17:39] schestowitz "I would just like to add here that if the aim of a person downloading a sequence listing is to inspect and interpret the technical content of the sequence, then in all probability they are likely to be a sophisticated enough user to be able to handle the xml wrapping around that content. Let's not forget that sequence listings aren't any more understandable to the lay person just because they have a txt file extension and are laid out in fixed- [17:40] schestowitz space non-proportional font. There is no getting around the requirement to understand what each sequence means, irrespective of the container in which it is stored, otherwise what would the use case be for someone needing to download, retrieve and interpret the data contained in the sequence listing, and how would wrapping that data in an xml wrapper make understanding that data any more arduous ? " [17:40] schestowitz http://ipkitten.blogspot.com/2022/04/epo-board-of-appeal-maintains.html?showComment=1649451324627#c4634957519798609059 [17:40] -TechBytesBot/#techbytes-ipkitten.blogspot.com | EPO Board of Appeal maintains functional epitope antibody genus claim (T 1964/18) - The IPKat [17:40] schestowitz "There is something wrong with the link for "Patenting Antibodies: The epitope claim is dead, long live the epitope claim"" ● Apr 10 [22:30] *psydroid2 has quit (Ping timeout: 2m30s)