For discussion: Has the requirement that claims be «supported by the description» been perverted over time?

Reading time: 13 minutes

Objections with respect to alleged violations of Art. 84 EPC have become more and more cumbersome in recent times. I cannot really tell why. The law has not changed ever since enactment of the EPC 1973 in this respect. But the EPO Guidelines were tightened substantially, purportedly merely reflecting long-standing practice. My experience is different. Back in the days, I had only been required to make features of independent claims also mandatory in the specification. A no-brainer that did no harm, so I complied. Nowadays, practitioners are regularly facing extensive objections to tidy up the specification to large extent, causing anything but minimally invasive changes.

The 2021 revision of the Guidelines caused an outcry amongst users, and the EPO made certain minor amendments in the next revision cycle of the Guidelines (see e.g. here). The most controversially discussed sections of the Guidelines are F-IV, 4.3 (inconsistencies), F-IV, 4.4 (claim-like clauses); don’t miss to tick the ‘show modifications’ checkbox on the right side.

However, the more general question is still unresolved:

Why the heck do we have to adapt the specification at all?

In my view, there is just no sound legal basis for it. I am fully aware that this position is controversial, running against the gist of some rather old decisions of Boards of Appeal of the EPO. My line of thinking is as follows. As always, I stand to be proven wrong. 

Article 84 at a glance

The mere wording of Art. 84 EPC is plain and simple (emphasis added):

Art. 84 — Claims
The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description.

The second sentence of Art. 84 EPC requires the claims to be

    1. clear;
    2. concise; and
    3. supported by the description.
the travaux préparatoires

It is evident from the TP that the first two criteria, i.e. clarity and conciseness were meant to reflect Art. 6 PCT in the new legal framework of the EPC:

The same holds true for the «support by the description» requirement, with an initially pretty different (but much clearer) wording:  

No patent claim shall contain subject matter that is not listed in the description.

The TP are silent about the reasons why the initially very clear wording of the third criterion had not been further pursued but rather been amended to exactly match Art. 6 PCT. In my view, the most likely reason is an attempt of harmonization of the wording. There is nothing in the TP that could suggest an intent of the legislator to change the substance of the initial draft, i.e. that the third criterion was simply meant to exclude subject-matter from the claims that is not listed in the description.

In the first place, all requirements of this provision had been included in the draft Implementing Regulations. Later, the sub-committee proposed to adopt the exact same wording of Art. 6 PCT, and to move it to the Convention itself:

In the first place, the draft article read as follows (exactly as Art. 6 PCT):

However, the Conference did not like the wording «fully supported by the description» and asked the Working Party to examine deletion of «fully» and the replacement by a less restrictive wording:

And, indeed, the term «fully» was deleted:

Even though the term «fully» was not replaced by a less restrictive wording, the TP leave no doubt about the legislator’s intent to prevent the third criterion from being interpreteded in the sense of the initial draft, i.e. that the claims shall be «fully supported by the description».

This is how we ended up with the wording of Art. 71a at the Conference:

Here is the final wording of the article, which has never been changed ever since:

For sake of completeness, I have reviewed the records of the Washington Conference on the PCT — which do not provide any further insight.

T 1989/18 — 3.3.04: Shaking the current practice to the very foundations

Applicants rarely risk a refusal merely for non-compliance with a formalistic objection concerning the «necessary» adaptation of the description once allowability of a set of claims has been indicated by the ED. Not so in the case underlying T 1989/18 — 3.3.04 (EP 2 794 651; DREX and file wrapper). Accordingly, the Board of Appeal had to investigate whether there was any legal basis for demanding an adaptation of the specification at all.

The Board took an approach similar to what I take from the TP, i.e. the «supported by the description» simply means:

[T]he subject-matter of the claim must be taken from the description, it being inadmissible to claim any subject-matter which is not described.

This must not be confused with the first requirement of clarity, in this Board’s view:

When assessing clarity, the description cannot be relied upon to resolve a clarity issue in a claim, nor can it give rise to any such isseue if the definition of the subject-matter in a claim is clear per se.

Accordingly, it is held (¶7):

Article 84 EPC cannot serve as a legal basis for the refusal.

The Board did not find any legal basis in R. 42(1) lit. c EPC (in the absence of a non-unity objection; ¶8) and R. 48(1) lit. c EPC (only pertaining to patent applications, not patents — opposed to R. 42 EPC; ¶9-12), either.

Accordingly, the Board allowed the appeal and remitted the case to the ED with an order to grant the patent — with an unamended description.

the aftermath of T 1989/18 — 3.3.04

To the best of my knowledge, one further Board of Appeal has explicitly adopted the approach of T 1989/18 — 3.3.04, i.e. in the matter T 1444/20 — 3.3.01 (¶2 et seqq.).

On the other hand, I am aware of four recent Board of Appeal decisions that dissent with T 1989/18 — 3.3.04. I will address them below.

T 1024/18 — 3.2.06

Decision T 1024/18 — 3.2.06 concurs with T 1989/18 — 3.3.04 in that the claims must be clear in themselves; criterion i) of Art. 84 EPC. However, with respect to the third criterion, this Board holds that «supported by the description» cannot mean support in only a part of the description, because this would be at odds with the wording «supported by the description» (apparently understood with an emphasis on the word ‘the’).

This is a somewhat circular reasoning, isn’t it? The claims are only supported by the description when they are supported throughout the description; otherwise, they are not supported(?).

What is more, the TP are clear in that a less restrictive understanding than «fully» supported by the description was intended by the legislator. Against this background, I am having a hard time to accept a reasoning according to which support by (only) «part» of the description is not sufficient (¶3.1.8). 

Further, the Board mentions that the provision (Art. 84) had been moved from the Implementing Regulations to the Convention itself, because of its importance for national infringement procedings; ¶3.1.9. The Board draws from this that also the requirement of «supported by the description» serves this purpose.

I cannot deduce this from the TP; see above. The TP refer to the importance of the provision, but they are silent about which criteria thereof were considered to be of so much importance for national infringement proceedings. In my view, there is no reason to assume all three criteria were equally meant. For instance, I fail to see that the legislator had conciseness of the claims in mind with respect to the outstanding importance in infringement litigation. In my experience, conciseness of a claim is no issue at all. So, why would one assume that «supported by the description» was meant to be of oustanding importance?

T 2293/18 — 3.5.02

This decision holds, with reference to T 409/91 (¶3.3-3.5), that «supported by the description» requires that the claimed subject-matter has a basis in the description, which is to make sure that the claims only extend to subject-matter which, after reading the description, are at the disposal of the skilled person; ¶3.3.5.

Further, with reference to T 659/93 (¶3.4), this decision holds that «supported by the description» is to assure that the scope corresponds with the actual contribution to the art, and that the claims can be worked over the entire scope; ¶3.3.5. .

All this is not really controversial. But does it help to answer the question?

The decision goes on to hold that «it follows» that claims and description must not contradict each other, as part of a single document:

I wonder: Why is this a necessary consequence? I feel that the claims may well be workable over their entire scope, and they may well correspond to the actual contribution to the art, without the need to perfectly match with the description («übereinstimmen»). In any event, I feel requiring a perfect match puts the bar at the wrong level: «Full» support was clearly not intended by the legislator.

T 0121/20 — 3.2.01

This decision concurs with the reasons of T 1024/18 — 3.2.06 (which I do not find very convincing; see above), without adding anything in substance; ¶10.2.

UPDATE 11 June 2022: Yet another decision of the same Board 3.2.01 has been published on 9 June 2022, i.e. T 1516/20. This decision, again, merely refers to and consents with T 1024/18 — 3.2.06, but does not add anything in substance; ¶5.

T 2766/17 — 3.2.02

This decision agrees with T 1989/18 in that the description cannot be relied upon to resolve a clarity issue in the claim, but it does not follow the a contrario reasoning:

The decision illustrates the unitary character of a patent with the example that terms may be given a special meaning in the description, i.e. that a patent specification can become its own dictionary. In conclusion, this decision holds that statements in the description contradicting the plain claim wording may cause doubts as to the intended meaning of this wording:

I am not convinced. Primacy of the claims is the overriding principle of any claim construction. If parts of the description really contradict the plain wording of the claim, I fail to see the clarity issue. These parts are irrelevant and can simply be ignored.

Practice under the PCT

The PCT International Search and Preliminary Examination Guidelines (PCT/GL/ISPE/11) are meant to reflect the practice under Art. 6 PCT, i.e. under the more restrictive wording «fully supported by the description». The following is noted therein:

Notably, not each and every inconsistency has to be removed even under Art. 6 PCT:

However, inconsistencies which do not cause doubt as to the meaning of the claims may be overlooked.

I feel the above examle in the PCT Guidelines is telling — because it illustrates how this practice will inevitably lead to undesired results. I cannot see how a semiconductor in one «embodiment» of the description could cause doubt as to the meaning of the plain wording «electronic tube» in a claim. A tube is a tube, not a semiconductor. Period. The disclosed (non-)embodiment is simply not literally covered by the claimed invention — and we all know what that means for a patentee when trying to assert infringement under the DoE. On the other hand, if this (non-)embodiment is deleted before grant in order to meet the «supported by the description» requirement, a semiconductor may easily be asserted as infringement under the DoE. The result is the exact opposite of legal certainty and serves no public interest at all.

Comparative study of national practices

WIPO has conducted a comparative study on  the relationship of the claims and the disclosure back in 2002; SCP/7/6.

The practice of the EPO is extensively reviewed, and summarized as follows:

No mentioning of amendments to the description at all. Essential features must be taken up in the claims, but that’s it. The same holds true for the other jurisdictions assessed.

In any event, no national practice in a major jurisdiction that I am aware of requires applicants to adapt the description, and in particular not in the way the EPO does. Against this background, I feel that it is somewhat far-fetched to assume that the PCT contracting states really intended to require substantial amendments to the description by way of Art. 6 PCT (and even less so under the less restrictive wording of Art. 84 EPC).

Yet another WIPO document gets it right, in my view. SCP/22/4 holds:

I would just leave it at this. No touching of the description is necessary towards this end.

Where are we going from here

Within a time frame of only a few months, we have seen six decisions on the issue of «supported by the description» and its implications under Art. 84 EPC. T 1989/18 — 3.3.04 cannot simply be ignored anymore since its approach is explicitly supported by yet another Board in T 1444/20 — 3.3.01. Four other Boards dissented. I feel it is only a matter of time until a Board decides to refer the issue to the Enlarged Board of Appeal; Art. 112(1) lit. a EPC. The sooner the better, to finally get things straight.

A referal by the President of the EPO under Art. 112(1) lit. b EPC is not to be expected, in my opinion.

/MW

T 1989/18 — 3.3.04 (HTML)

Chair: Bart CLAES
Member: Oskar LECHNER
Lukas BÜHLER (lm)

Decision of 16 December 2021:

DISSENTING WITH T 1989/18 — 3.3.04

T 1024/18 — 3.2.06 (HTML)

Chair: Michael HARRISON
Member: Martin HANNAM
Wilhelm UNGLER (lm)
Thomas ROSENBLATT
Claes ALMBERG (lm)

Decision of 1 March 2022:

T 2293/18 — 3.5.02 (HTML)

Chair: Richard LORD
Member: Claudia VASSOILLE
Anna BACCHIN (lm)

Decision of 31 March 2022:

T 0121/20 — 3.2.01 (HTML)

Chair: Giovanni PRICOLO
Member: Andrea WAGNER
Peter GUNTZ (lm)

Decision of 11 March 2022:

T 2766/17 — 3.2.02 (HTML)

Chair: Marco ALVAZZI DELFRATE
Member: David CECCARELLI
Christof SCHMIDT (lm)

Decision of 17 March 2022:

CONSENTING WITH T 1989/18 — 3.3.04 

T 1444/20 — 3.3.01 (HTML)

Chair: Albert LINDNER
Member: Regina HAUSS
Lukas BÜHLER (lm)

Decision of 28 April 2022:

BE ON THE KNOW

Enter your name and email address below to get notified of new posts by email.