Thursday, December 23, 2021 T 1989/18 - As a general rule, not required to bring the description in line with (amended) claims intended for grant

In the present case, the examining division found the set of amended claims of the main request to be allowable, but nevertheless it held that the amendments to the description adapted to those claims (submitted with the same letter) did not comply with the requirements of Article 84 EPC, in particular because they related to subject-matter which was broader than the subject-matter of independent claim 17 of the request, and refused the European patent application for that reason. The Board carefully assessed the applicability of Art. 84 EPC as well as of Rule 42(1)(c) and Rule 48(1)(c) EPC as possible legal basis requiring adaptation of the description, and concluded that such basis does not exist (except possible in the case of non-unity). The Board also argued why it distinguished from earlier decisions (some of whuch being cited in the Guidelines in support of such alleged requirement).

Friday, June 28, 2019 T 1360/13 - Drawings much improved, but patent invalid

Drawing sheet 1 as replaced

Drawing sheet 1 as originally filed

The patent was granted with drawing sheets exchanged according to Rule 26 PCT during the international phase, the originally filed drawing sheets being of poor quality, essentially showing black or grey elements. The same exchanged drawing sheets which were part of the patent as granted are part of the main request documents.

The board concluded that many details present in the figures of the patent as granted are not disclosed directly and unambiguously by the application as originally filed.

To overcome this problem, the proprietor filed a series of requests 9-17 in which all drawing sheets have been deleted and all references to the figures in the description and claims have been deleted as well.  (Requests 1-8 were withdrawn.) For the BA this corresponded to an extension of protection, not allowable under Art 123(3) in view of Art 69. The board provided the following catchword. 

Catchword

In view of Article 69(1) EPC which states that the description and the drawings shall be used to interpret the claims when determining the extent of the protection conferred by a European patent, after grant, any information in the description and/or drawings of a patent directly related to a feature of a claim and potentially restricting its interpretation cannot be removed from the patent without infringing Article 123(3) EPC.

Friday, February 24, 2017 T 1896/11 - Clearly incorrectly claimed?

Incorrect password...

As suggested by a reader, this opposition appeal is of interest since it deals with the situation where a claim as granted is technically 'incorrect'  in that it does not correspond to the technical teaching of the description. The question at hand is whether independent method claim 5 of each of the appellant's respective requests (being the patent proprietor) infringes Art. 123(3) EPC since the claim has been amended in each of the requests to correct the technical mistake.

The appellant provides two lines of arguments to argue that the amendments do not infringe Art. 123(3). The first line of argument is that claim 5 of the granted patent contained an inaccurate technical statement, and that from the description it was clear what was obviously intended and, following decision T 108/91 (OJ 1994, 228), claim 5 could be corrected to reflect this intention.

The second line of argument is: in order to establish the protection conferred by claim 5 of the granted patent, and thus to identify the boundary of acceptable amendments, Article 69 EPC had to be taken into account. Since the current amendments to claim 5 reflected this understanding, they did not extend the protection conferred and therefore did not infringe Article 123(3) EPC.

Do either of T 108/91 and Art. 69 EPC apply and bring relieve? The current BoA does not think so.

Friday, February 27, 2015 T 236/12 - Scope of protection extended by fax

Scope of protection extended by fax

This case concerns an opposition appeal. Both appellants appealed against the decision from the Opposition Division to maintain European Patent Nr. 1 728 658 in amended form.

During the examination proceedings, the original drawings (which were faxed, and thus of sub-optimal quality) were replaced by better quality drawings showing more constructional details. During the opposition proceedings, the European Patent was maintained in amended form, incorporating the drawings as originally filed (presumably to comply with Art. 123(2)).

The appellants now argue violation of Art. 123(3) EPC, with the reasoning being essentially the following: the claims are not clear (Art. 84), and the skilled person would thus have to consult the drawings (Art. 69(1)) which - by having a sub-optimal quality - omit constructional details present in the patent as granted. The skilled person may thus arrive at embodiments other than those following from the patent as granted. The protection conferred by the European Patent is therefore extended.

There appear thus to be all the ingredients of an Art. 123(2) - Art 123(3) trap.

The appellants further request a different apportionment of costs in accordance with Art. 104(1).

As reason given is the complexity of the preparation for the argumentation supporting the Art. 123(3) violation. Those costs could have been prevented if the proprietor did not at the beginning of oral proceeding request to maintain the patent based on the drawings as originally filed.