CABINET CHAILLOT

T0056/21 - Adaptation of the description

Article 69 EPC, Article 84 EPC, Rule 43 EPC; adaptation of the description

The decision under appeal is the refusal of an application by the Examining Division.
The description contained the passage entitled "SPECIFIC EMBODIMENTS", which contained claim-like clauses. The Examining Division held that (i) "[t]hose clauses which are referring to subject-matter outside the scope of the present claims, e.g., all clauses, are considered to render the application unclear as to the actual scope of protection as defined by the claims, contrary to the requirements of Art. 84 EPC"; (ii) the description contained numbered embodiments in a form as used for claims; these claim-like clauses had to be removed according to the Guidelines, F-IV, 4.4, and in line with decisions under Article 84 EPC; and (iii) in so far as the description included matter repeated elsewhere in the application, was contrary to the requirements of Rule 48(1)(c) EPC.
The Examining Division held the application with the description pages to be contrary to Article 84 EPC, Rule 48(1)(c) EPC and the Guidelines for Examination. The appeal hinges on the interpretation of Article 84 EPC.
The question to be addressed is that of whether Article 84 EPC provides a legal basis for objecting to an inconsistency between what is disclosed as the invention in the description (and/or drawings, if any) and the subject-matter of the claims, the inconsistency being that the description (or any drawing) contains subject-matter which is not claimed, and for requiring removal of this inconsistency by way of amendment of the description (hereinafter: "adaptation of the description"). If so, an application could be refused if the applicant did not amend the description accordingly, or did not agree to an amendment of the description proposed by an Examining Division.
As regards the relevance of the Guidelines for Examination for deciding the appeal, Article 23(3) EPC requires the members of the Boards of Appeal to comply only with the provisions of the European Patent Convention. The Guidelines for Examination are not part of these provisions. The Board will hence only judge whether the division has acted in conformity with the EPC. The Board will not consider whether the division has acted in accordance with the Guidelines for Examination.
Article 69 EPC and the Protocol are concerned with the assessment of the extent of protection conferred by a European patent in case of infringement.
The relationship between the claims and the description needs further elaboration as regards their role in the assessment of Article 84 EPC (as well as other provisions setting out requirements for patentability) and the determination of extent of protection according to Article 69 EPC. The question that arises in this context is whether the assessment according to Article 84 EPC and the determination under Article 69 EPC are linked or separate. This question is relevant to the present decision as the practice for requiring the description to be aligned to the more restricted subject-matter of claims, which are found allowable, is based on the view that Article 84 EPC is linked or even subordinate to Article 69 EPC.
The refusal by the Examining Division is also based on Rule 48(1)(c) EPC. According to this provision, a European patent application must not contain any statement or other matter obviously irrelevant or unnecessary under the circumstances.
The claims, rather than the description, are the primary determinant of the extent of protection. Legal certainty for third parties regarding the extent of protection of a patent is best served by claims which are clear and concise such that they allow the "forbidden area" to be demarcated without needing to resort to the description.
Adapting the description to match the more limited subject-matter claimed does not improve legal certainty regarding the extent of protection, may have unwarranted consequences in post-grant proceedings and may encroach on the competence of national courts and legislators.
If the description defines a term more broadly than its technical meaning in the claim, such a discrepancy in terminology should be addressed under Rule 49(2) EPC by amending the description to match the clear but narrower meaning of the term in the claim.
The following are the Board's conclusions on the issue of adaptation of the description:
(a) Article 69 EPC and its Protocol are not concerned with the assessment of patentability in examination before the EPO but with the extent of protection in the context of national proceedings of a European patent following such examination. Article 69 EPC and its Protocol are hence not applicable in grant proceedings before the EPO.
(b) Article 84 EPC and Rule 43 EPC are not a corollary of Article 69 EPC even though claims are the main determinant of the extent of protection. Consequently, the requirements of Article 84 EPC and Rule 43 EPC are to be assessed separately and independently of considerations of extent of protection when examining a patent application.
(c) Article 84 and Rules 43 EPC set forth requirements for the claims. They do not provide a legal basis for a mandatory adaptation of the description to claims of more limited subject-matter. Within the limits of Article 123 EPC, an applicant may, however, amend the description on its own volition.
(d) Rule 48 EPC is concerned with the publication of an application and the avoidance of expressions which are contrary to public morality or public order, or certain disparaging or irrelevant statements. Rule 48 EPC does not provide for a ground for refusal based on the inclusion of merely "irrelevant or unnecessary" matter in the description intended for grant and even less for "discrepancies" between the subject-matter claimed and that disclosed in the description.
For the above reasons, the decision under appeal is to be set aside. As the Examining Division's objection that the claim-like clauses in the passage entitled "SPECIFIC EMBODIMENTS" extend to subject-matter outside of what was claimed, was the only issue raised against the allowability of the subject-matter claimed, the case can be remitted to the Examining Division with the order to grant a patent based on the main request on file.

 

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