Recent Conflicting Rulings from EPO Boards of Appeal on Preparing

May 31

31 May 2022 - See update to this post - there are recent BoA decisions adding to the uncertainty of this issue about aligning text with claims. The EPO will hold a workshop the third week of June. We look forward to attending and posting about the EPO's approach.

Analogy to US Practice: This could be seen as comparable to the PTAB issuing a decision on using the specification to interpret claims under 35 USC and rendering case law on that point – case law that may become part of the Federal Courts case law.

Why these EPO BoA decisions are important: Unlike the U.S., Europe has a statue on claim interpretation, Article 69 EPC. The EPO BoA tend to avoid commenting on Article 69 EPC as the EPO views claim interpretation, that is the scope of protection conferred by a patent, to be a matter for the National Courts. For example, many EP patent attorneys have asked the EPO to consider having a Markman-like procedure as part of the Opposition proceeding. But the EPO has been reluctant, probably for many reasons, but at least in part as it requires the Opposition Division to enter an “EPO” decision on claim scope. Such a decision has been seen as the EPO overstepping its mandate which ends at patent grant.

However, in these decisions the EPO BoA must take up Article 84 EPC, entitled “Claims”. As part of the analysis, the EPO BoA take up, albeit gently, Article 69 EPC.

The requirements of Article 84 EPC include that the claims are clear, concise and supported by the description. The EPO BoA in its second decision speak fairly loudly that an earlier decision by the EPO BoA, made just a few months earlier in December, failed to evaluate correctly the significance of the requirement that a claim be “supported by the description”. This second decision found that the requirement of “supported by the description” gave the EPO firm grounds to continue its unique practice of requiring applicants to align the description with the claims found to be ready for grant. This alignment can require the excise of conflicting statements as to what is covered by the granted claims. Moreover, this second decision touches upon how the specification may impact the interpretation of a granted claim under Article 69 EPC. Specifically, the EPO BoA, in its second opinion noted:

Considering also Article 84 EPC in the wider context of the EPC, this understanding of the provision seems to be in line with the standard of claim interpretation for national proceedings enshrined in Article 69(1) EPC, according to which the description is also to be taken into account when interpreting the claims. 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. (emphasis added)

These decisions are important for anyone prosecuting patents at the EPO. Further they are important in litigation as they suggest a patent claim in a National proceeding may be attacked for lack of clarity due to misalignment between the granted claims and the disclosure. It is noted that the developing UPC adopts the EPC and the caselaw of the EPO BoA as law to apply.

Discussion: In December 2021, the EPO BoA issued T1989/18. T1989/18 took the position that the EPO had no legal grounds to support the EPO’s long-standing practice of requiring an applicant to amend the disclosure before grant in a manner that aligned the disclosure to the claims found grantable by the Examining Division.

“Huzzah!!” Shouted that patent bar as T1989/18, in just sixteen paragraphs, ended the nerve-wracking practice of editing text of an EP patent application ready for grant.

But, the reasoning of T1989/18 was not unassailable and in March of 2022, another EPO BoA took up the same issue and, with the reasoning of T1989/18 before it, rendered T1024/18 a contrary decision essentially reinstating the practice of aligning the disclosure with the claims. That practice is outlined in the Guidelines for Examination (H-V, 2.7, which references F-IV 4.3(iii)).

Although, there are two conflicting decisions on this point, and it may be argued that the demands of Article 84 EPC, including the demand that a claim be supported by the description, does not require aligning the specification to the claims set for grant. That viewpoint, in our minds, is not credible.

In our view, the EPO will continue its practice for aligning the specification with the claims-to-grant as those practices are set out in the Guidelines for Examination (H-V, 2.7). Further, we expect that the White Book will refrain from citing T1989/18 as proper procedure. We expect this, as the EPO must tend to important policies, one of which is public notice of patent rights. The EPO grants patents in English, French and German. Yet these patents are enforceable in jurisdictions throughout Europe that have none of these three languages as official national languages. Scientists and engineers in Italy, Greece, Denmark, Turkey and other member states, who speak their official national languages, should be given text from the EPO that is as clear as possible. That clarity helps with preparing any translations required by the national laws of that state, and in making translations needed because there is no national language translation on file. Thus, a Greek engineer interested in knowing if she can sell a product in Germany, France and the UK, but lacking the translation required for a Greek National filing, should be able to work with as clear an EP patent as the European Patent Office can grant.