G 1/24: The Return of the Angora Cat

I wrote some thoughts about the then pending case of G 1/24 back in October 2024. As it turned out the Enlarged Board came to roughly the same conclusion, at least on the first two questions. You will all have read the decision already, but just for reference here was the conclusion from the Enlarged Board:

The Angora cat is angry.

"The claims are the starting point and the basis for assessing the patentability of an invention under Articles 52 to 57 EPC. The description and drawings shall always be consulted to interpret the claims when assessing the patentability of an invention under Articles 52 to 57 EPC, and not only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation."

This seems to be fairly clear, at least in the context of the opposition case that led to the referral. This was all about whether a clear term in a claim should be interpreted more broadly than a normal reading would suggest if the description provided a broader definition. The EB's decision indicates that it should. Most would agree that this is a good thing, since patent proprietors should not be permitted to defend their patent with a narrow interpretation and then have the option open afterwards to interpret the claim more broadly to cover infringers. This would most likely not happen in the case such as in G 1/24, since courts across Europe, including the UPC, all agree that the description and drawings should be used to interpret the claims. The Angora cat in cases such as this therefore seems to have been put down. 

G 1/24 will already be having an effect on opposition cases now underway, where opposition divisions will be pointed towards the description and drawings where a particular term in a claim should be given a broader meaning. This should be good for opponents, who should now be able to argue more successfully for some claim features being broader and therefore more likely to be covered by the prior art. There are, however, always unintended consequences. 

An example of potential unintended consequences arose very recently during opposition oral proceedings in a case for which I was the representative for the opponent. Claim 1 of the patent in question, which was very poorly drafted (at least by UK standards), had various terms that were broad or unclear and required interpretation. For the opponent, I interpreted the claim broadly so as to cover the prior art, which it did. The preliminary opinion of the opposition division agreed, finding claim 1 of the patent to lack novelty, along with various auxiliary versions the proprietor had submitted. Nothing then happened until the oral proceedings, with the proprietor not even submitting any written submissions in advance. At the hearing, however, the proprietor submitted a further request to add more features to claim 1 from the description and proceeded to argue on the basis of G 1/24 that the claim features should be interpreted narrowly to be clear, novel and inventive over the prior art. What concerned me, (other than the frustratingly late submissions and the OD's decision to admit them) was that G 1/24 is now being used by attorneys to argue for claim features to be interpreted narrowly based on the description in order to get around the prior art. What was more concerning though was that the OD appeared receptive to these arguments and ended up maintaining the patent as amended, even though claim 1 was still fundamentally flawed in various ways. Is this perhaps an early sign that G 1/24 is being used to bring back the Angora cat in another form, allowing unclear and badly drafted claims to be made allowable on the basis of the description filling in the gaps? One case is of course not representative, and this is only my immediate impression, but if the argument can be made then others will surely also try. I can see this kind of thing ending up in T decisions before too long.

Another problem with dates

Working in patent practice requires, among other things, a keen eye for due dates. Getting a due date wrong by just one day can make a big difference. This can sometimes make all the difference for a patent application, as a recent example I wrote about here demonstrated. There are many other instances of critical due dates under the UK Patents Act and Rules where it is very important to know when a particular period ends. 

I wrote a long while ago about a decision from the UK IPO (Rigcool v Optima Solutions), in which the issue was about how to calculate the end of "a period of two years beginning with the date of grant" under Section 37(5) (as it was then worded), in relation to when proceedings for entitlement could be commenced for a granted patent. Did the period end on the day of the anniversary of grant or the day before? Following reasoning derived from how the term of a patent under Section 20 is calculated, this was determined to be the latter, i.e. the last day on which entitlement proceedings could be initiated was the day before the anniversary. This turned out to be very important in the case in question, since the claimant had filed on the anniversary of the date of grant, which was determined on this basis to be one day too late. 

Following that case, some amendments were made to the Patents Act and Rules by The Patents (Amendment) Rules 2011 (SI 2011 No. 2052) and the Intellectual Property Act 2014, which adjusted the wording used in various places in the Rules and Act respectively to clarify that any periods specified were supposed to end on the anniversary and not the day before. One example in the Rules was the period under Rule 32 for making a request for reinstatement of an application. This was one of the periods that was previously specified as being "beginning with", which was then changed to "beginning immediately after". The relevant period under Rule 32 was then defined as "twelve months beginning immediately after the date on which the application was terminated". The situation was then made clear that the period would end on the anniversary and not the day before. Or so we may have thought. 

In a recent judgment from the High Court in Ahmad v Comptroller-General of Patents, Designs and Trade Marks [2025] EWHC 936 (Pat), Mr Justice Mellor decided on an appeal by the claimant Mr Ahmad in relation to his patent application, which had been refused by the UK IPO in 2021. Mr Ahmad made various accusations and complaints about being badly treated by the UK IPO, accusing the Office of "malicious comments that are illegal and against all the guidelines with lots of fraud", among other things. It was fairly clear that Mr Ahmad, who was self-represented, was not particularly familiar with the usual way of prosecuting patent applications in the UK and was somewhat chaotic and unreasonable in his dealings with the UK IPO. Faced with Mr Ahmad's numerous failings and utterly hopeless arguments, Mellor J had no difficulty in striking out his claim by summary judgment, finding Mr Ahmad's claims to be totally without merit. One of the points raised was whether Mr Ahmad could have requested reinstatement of his application, which he failed to do. This was certainly not a deciding factor in the case, but Mellor J noted what the due date for making such a request would have been, calculating it in the following way: 

"The termination of the application was effective on 31 August 2021 (one day after the two month extension window elapsed following 30 June 2021). By operation of r. 32 (under s.20A) the applicant is then given a generous, but fixed, deadline within which to seek reinstatement. In Mr Ahmad's case, it was a deadline of 31 August 2022: twelve months after the application was terminated on 30 August 2021. That period is set by r. 32(1) and –(2) PR07, and is not extendable: see r. 108(1) PR07 and its Sch. 4 Part 1" (paragraph 50, emphasis in the original).

The letter from the UK IPO that started the period for requesting reinstatement referred to the application not being in order for grant on 30 August 2021, indicating that it was treated as having been refused on that date. The period under Rule 32(2) was therefore defined based on this date, being the date on which the application was terminated. Mellor J calculated, however, that the final date on which a request for reinstatement could be made would be 31 August 2022. Given all the history behind why the particular wording of Rule 32(2) as it now stands was arrived at, this seems to be wrong. The correct due date should actually have been 30 August 2022. It made no difference in that case but it is slightly concerning that a High Court judge can get this wrong. Perhaps the wording currently used is not as clear as we might think. 

Description Amendments - Finally a Referral?

We have been waiting a long time for a Board of Appeal to finally refer questions to the Enlarged Board on the long-running controversy of whether, or to what extent, amendments to the description are required for European patents and patent applications. Given recent developments, we may now be getting near the point where this actually happens.

In brief, the issue of description amendments is, as far as the EPO is concerned, a settled matter. In their view it is necessary for the description to be in line with the claims to avoid any inconsistencies. According to the current version of the Guidelines for Examination, F-IV, 4.3, "The applicant must remove any inconsistencies by amending the description either by deleting the inconsistent embodiments or marking appropriately so that it is clear that they do not fall within the subject-matter for which protection is sought". In many cases, this leads to extra time and trouble being expended when attempting to get an application allowed. Many have also objected that the supposed justification for this requirement simply is not there in the EPC. Article 84, which is used by the EPO in support, simply requires the claims to be "clear and concise and be supported by the description". If the description provides support for the claimed invention, does it even matter if it also includes support for things that are not part of the claimed invention? There are also cases where it may not be clear where the line should be drawn between what is described in the application as a whole as embodiments and what is actually within the scope of the claimed invention. Forcing applicants, and their attorneys, to make a decision during prosecution that can affect how the invention may be interpreted post-grant (since courts invariably insist that the description is always used to interpret the claims) may be considered unfair, if not actually unjust. 

Those of us who have been keeping a close eye on this thought that we were going to get a referral last from the appeal case of T 56/21. In the end, however, the Board decided that a referral was not needed because in their view Article 84 did not provide any justification for amendments to the description at all. I wrote last year about this lengthy decision here. The EPO, however, has been taking no notice at all of the decision (which is, of course, only binding on the case in question) and maintains that their practice is justified. The Guidelines therefore remain unchanged. 

However, in another appeal case, T 697/22, there has been some movement on the matter. Following oral proceedings held in December 2024, the Board indicated that they were minded to refer questions to the Enlarged Board. A communication has recently issued with some proposed questions, which the Board has asked the parties involved to comment on before they make a decision on a referral. Unlike in T 56/21, the Board found that there was divergent case law on the subject of description amendments and a referral may be needed to resolve the question of whether these were in fact required. The proposed questions are the following:

1. If the claims of a European patent are amended during opposition proceedings or opposition-appeal proceedings, and the amendments introduce an inconsistency between the amended claims and the description of the patent, is it necessary to comply with the requirements of the EPC, to adapt the description to the amended claims such that the inconsistency is removed? 

2. If the first question is unconditionally answered in the affirmative, which requirement of the EPC necessitates such an adaptation? 

3. If the first question cannot be unconditionally answered in the affirmative, what are the conditions under which adaptation of the description is necessary to comply with the requirements of the EPC? 

4. Would the answer to these questions change if an inconsistency existed between the claims and the description of a European patent application?

The parties have been given until 26 May 2025 to provide comments, following which the Board will decide whether a referral is to be made, and if so what the final form of the questions should be. 

For now, all we can do is wait and see what happens. It is, however, interesting to note that the draft questions avoid mentioning Article 84 EPC at all. This is clearly deliberate, since question 2 asks whether there is any provision in the EPC that requires the description to be adapted to the claims. If T 56/21 is to be followed, there is in fact no such provision. The Enlarged Board, however, may find differently. 

Faketoshi Patent Oppositions - The Story So Far

For the past few years, in my spare time I have been working on oppositions against three European patents granted to nChain Licensing AG, each of which originated from GB priority applications filed in April 2016. Each patent named Craig Wright and fellow Australian Stephane Savanah as co-inventors. For those few people who may still be unaware, Wright has since 2015 been falsely and fraudulently claiming to be the person behind the pseudonym Satoshi Nakamoto, the creator of Bitcoin. Wright's implausible, and easily disprovable, claims were disputed in late 2015 almost as soon as they became public through engineered leaks to the press. It was, however, only after several lengthy, and extremely costly, legal battles involving many others (including myself), that his claims were finally and comprehensively demolished by Mr Justice Mellor in a mammoth judgment handed down on 20 May 2024 (Crypto Open Patent Alliance v Craig Steven Wright [2024] EWHC 1198). The judgment was appealed by Wright, but permission was denied by Lord Justice Arnold in, for him, an unusually brief 3 page judgment issued on 29 November 2024. There are further strands to the Craig Wright story, including a contempt of court finding, alleged tax fraud in both the UK and his native Australia and a likely upcoming criminal prosecution for perjury, but here is not the place to go into them.  

Going back to the beginning, the company nChain was set up in 2016 by Wright and his business partner Stefan Matthews, with help from Canadian businessman Robert MacGregor, and enabled by substantial financial backing from Antiguan-based Canadian online gambling tycoon Calvin Ayre. The stated business aim of the company was to patent and commercialise inventions arising from Wright's alleged extensive knowledge of Bitcoin and related technology by virtue of his being Satoshi. As explained in the 2016 article by Andrew O'Hagan, "The Satoshi Affair":

They would complete the work on his inventions and patent applications – he appeared to have hundreds of them – and the whole lot would be sold as the work of Satoshi Nakamoto, who would be unmasked as part of the project. Once packaged, Matthews and MacGregor planned to sell the intellectual property for upwards of a billion dollars. MacGregor later told me he was speaking to Google and Uber, as well as to a number of Swiss banks. ‘The plan was to package it all up and sell it,’ Matthews told me. ‘The plan was never to operate it.’

The infamous "1Feex..." paper wallet.

Even at that time, it was evident to anyone who took the time to look into the matter that Wright was clearly not Satoshi but was a rather inept forger with a particular talent for bare-faced lies. Some, however, apparently remained persuaded (or perhaps were willing to go along with the lies for their own reasons), including Mr Ayre who continued to fund Wright's Satoshi project on the promise of a big payout in the future, not only in respect of the supposedly valuable patentable Satoshi inventions but also on some very large stashes of Bitcoin that Wright claimed to own and which were apparently used as collateral.  

nChain GB filings 2016-2024

So, after having conveniently departed Australia in October 2015 following a raid by the Australian Tax Office, Wright began working as Chief Scientist for nChain in his new base in London to get his  supposed inventions patented. Wright was also incentivised by getting a substantial share in the company. The patent filings started flowing in to the UK IPO, the first one being filed on 23 February 2016 in the name of EITC Holdings Limited (later assigned to nChain). 76 applications in total were filed in 2016 and applications continued to be filed at a similar rate each year right up to the end of 2023, at which point they appear to have come to an abrupt and almost complete halt. 

Wright and friend (not a patent attorney)

Wright, of course, did not do this all by himself but was assisted by people who supposedly knew what they were doing with preparing and prosecuting patent applications. We would normally term these people patent attorneys but I am reluctant to do so in this case because, as it turns out, the main person involved in preparing and filing Wright's applications, at least in the early days, was not actually a patent attorney. She was instead a fairly recently graduated computer scientist PhD with a few years' experience working with patents but had not yet passed the UK examinations. Wright, however, got on very well with her and continued to employ her services right up until at least last year, even though she has still not passed the UK exams. Although the inventions themselves may not have been of the highest quality given their provenance, it certainly did not help that they were turned into patent applications that, at least to some extent, were somewhat handicapped by fairly poor drafting. As it turns out, one of the cases was also not helped during prosecution by some poor handling by others leading up to it being granted. 

I started looking into Wright's patenting activities in around 2020 and first wrote about them here in February 2021, noting that nChain had already built up a substantial patent portfolio with over 300 priority filings, which then resulted in other filings that were prosecuted more widely in other jurisdictions, including at the European Patent Office. At the time I wondered about their technical relevance, given that Wright's relevant knowledge was clearly not going to be important or relevant for any developments in Bitcoin or related technologies. Nevertheless, nChain was already demonstrating that whatever strategy was being used was starting to bear fruit, with patents being granted by the EPO. Many of these patents appeared to me, based on a limited review, to be examples of what I termed 'cargo cult patenting', as they appeared to contain overly technical-sounding, and sometimes lengthy, claims that were able to get through the examination process but which were highly unlikely to be infringed by anyone. It appeared, however, to be mainly a numbers game at that point, where the number of patents being granted was the main aim and not whether the patents covered anything actually useful. The reasoning may well have been that, if a sufficiently large patent portfolio could be built up, it would almost inevitably be considered worth a lot of money to someone and would then be bought up by a big player in the field who wanted to get a position in this up and coming blockchain technology area. It almost didn't matter what the patents covered, as long as they sounded sufficiently technical and their importance could be puffed up by Wright with his brash salesman bravado. After all, Theranos managed to do something similar, at least for a while. 

As a result of the technical obfuscation technique used to get many of their patents through the system, the prospects of finding any of the patents that might be a good enough target for opposing seemed to me unlikely. A particular group of applications, however, came to my attention that were an example of one of Wright's nonsense ideas, which was that Bitcoin could be made "Turing complete". How this was possible when the language used to run Bitcoin transaction scripts did not allow for loops was at the time unclear to anyone actually knowledgeable in the field, but Wright continued (and still continues) to insist that Bitcoin could be made Turing complete by using transactions as logic gates and doing loops off the blockchain. What the point of all this was is still not clear, but nChain's patent attorneys (real ones this time) managed to get 3 patent applications through the EPO's normally rigorous examination system, resulting in EP3449450 granted in June 2022, EP3449451 granted in July 2022 and EP3449452 granted in June 2022. I wrote about the first one of these patents, and the issues around Turing completeness, in November 2022, shortly after an opposition was filed by Arthur van Pelt with my assistance and with financial help from various generous Bitcoin supporters. 

Craig Wright's opinion of the first opposition. 

The first opposition, which was labelled "Faketoshi01" for ease of reference, was all about added matter. For the full details, see the post mentioned above. In short, the problem with the patent was that claim 1 had been amended during prosecution in a way that added matter (not allowed under Article 123(2) EPC). This was not noticed by either the patent attorney who did the amending or by another attorney who signed it off, nor was it noticed by the 3 member examining division at the EPO, who allowed the application. Once granted, the patent was fatally flawed because the only way to correct the added matter issue would have been to remove it. Unfortunately for the patentee, this was also not allowed (under Article 123(3) EPC) because this would inevitably broaden the scope of the patent. The patent was therefore stuck in an added matter trap that was impossible to get out of. Once the opposition was filed, it was inevitable that the only outcome could be revocation. Nonetheless, nChain's patent attorneys tried anyway and ended up making things worse. In the end, shortly before oral proceedings were due to be held to decide the matter, nChain switched patent attorneys and their new representatives clearly saw that the problem was insurmountable. Instead of fighting a battle they knew they could not win, they threw in the towel and asked for the patent to be revoked. The patent was then revoked in May 2024 without any fight. This decision was final and no appeal was filed. 

The second opposition (Faketoshi02) was filed in March 2023 against EP3449452. This time, the issues were not about added matter but about novelty and inventive step. Claim 1 of the patent defined a method that would cover a process carried out by a conventional Bitcoin node that was well known before the 2016 priority date. In the opposition, the primary source of prior art was the 2014 book "Mastering Bitcoin" by Andreas Antonopoulos. This is such an important and useful piece of prior art because it goes into technical detail of how Bitcoin was known to work at the time, including details of the various opcodes used in Bitcoin transactions. Although it had already been cited during prosecution by the EPO examiner, nChain's representative had somehow managed to convince the examiner that there was some kind of difference in what was claimed compared to what was disclosed in the book. As argued in the opposition, this turned out not to be correct.

This time the proprietor fought back. An initial, rather inept, response was first filed by the representatives who got the patent granted, which again ended up causing more trouble than it was worth because it left nothing on file that was even admissible, let alone allowable. As with the first case, the attorneys then got switched and the new attorneys got to work by filing 15 sets of amendments to the claims in response to a preliminary opinion that was very much against them. At oral proceedings held on 26 September 2024, there was quite a fight over the first 7 of these sets of amendments but at this point the representatives decided to give up and throw in the towel, presumably realising they had nothing left. The EPO opposition division then decided to revoke the patent. A written decision issued on 4 November 2024.

The third opposition (Faketoshi03) was filed in April 2023 against EP3449451, again based on novelty and inventive step grounds. The proprietor's representatives, which were again switched after a failed first attempt, filed even more sets of amendments. At the oral proceedings on 24 September 2024, the Opposition Division surprisingly came up with added matter as a new ground of opposition. The proprietor's attorneys, being justifiably surprised at this (as was I), got the proceedings rescheduled to give them time to think a bit more. At the rescheduled proceedings held on 10 December 2024, the new added matter ground was upheld and the patent was revoked after only about 30 minutes of argument. Unfortunately for the patentee in this case, the added matter problem was the same for all their numerous requests so, once the first request fell all the others followed for the same reason. The written decision revoking the patent then issued on 23 December 2024. 

A hit rate of 3 out of 3 is not bad going, but for two of these we are not yet at the end of the story. For the second and third cases, the patentee decided to file appeals against the revocation decisions. I was slightly surprised at this because they had taken the precaution of filing divisional applications on each of them, all of which are currently still pending at the EPO, meaning that they could have another go at getting a patent without the limitations of post-grant amendments. However, given that appeals have been filed there is still the possibility, however remote, that they could rescue something and perhaps save face. So far, grounds of appeal have been filed on Faketoshi02, which have already been responded to, and grounds on Faketoshi03 are due in the next few days (Update 29 April 2025: grounds have now been filed and responded to). So far, the arguments from the proprietor/appellant do not look very impressive but we will probably have to wait at least another couple of years before we find out what the Board of Appeal thinks of them, given the large backlog of cases they have to deal with. More excitement is therefore yet to come. I shall, of course, keep you posted. 

A problem with dates

Knowing when a divisional application (or, more correctly, a new application under section 15(9)) can be filed is a tricky business in the UK. I have written previously here about how applicants and their representatives can sometimes get caught out by assuming that the same rules apply to those at the EPO. Unlike at the EPO, where the general rule is that a divisional can be filed provided there is a current application pending, in the UK the latest date for filing a divisional is 3 months before the end of the compliance period, provided the application is still pending. This additional requirement can cause problems when applications are still being prosecuted close to the end of the compliance period, especially if it's not yet clear what will get allowed. 

According to Rule 30, the compliance period is 4 years and 6 months from the filing or priority date, or 12 months from the date of the first substantive examination report if this is later. The end of the period can be extended by 2 months under Rule 108 without providing any reasons, and may be extended further if evidence is provided. This means that, if the end of the compliance period is getting closer than 3 months, a divisional can still be filed if an extension request is filed in time. 

Let's say we are exactly one month away from the end of the compliance period, which for the sake of this example is 30 December 2024. Can we still file a divisional application? The current date is 30 November 2024, which is a Saturday. We have unfortunately left this rather late, as we knew a while back that a divisional application would be needed. As a busy patent attorney, however, we are used to dealing with things at the last minute and we are sure that all will be fine because we can just file a request for a 2 month extension at the same time as filing the divisional application and all will be in order. 

Unfortunately, things will not be in order. A further quirk of the UK patent system is that dates on which things are deemed to be filed differ depending on what they are and whether the Office is open. For the purposes of most things the Office is closed at the weekend, meaning that anything filed gets a deemed date of the next working day (see here). This applies to everything apart from new applications that do not claim priority, which get the filing date of the day on which they are actually filed, regardless of whether the Office is open. 

The upshot of all this is that the divisional application we filed on 30 November (which did not claim priority) gets that date of filing but the extension request we filed at the same time gets a deemed filing date of 2 December. The result is that the divisional was filed out of time because on the date of filing it was within only 1 month of the end of the compliance period. The only way to rescue this would be to get a further discretionary extension to the compliance period to allow another purported divisional application to be filed within time, but we would have to adequately explain what happened and why this would be justified. 

This all sounds very implausible and not something that should happen in the real world. Any competent patent attorney with a reliable docketing system will be warned in good time beforehand about the upcoming deadline for filing any divisional and will not resort to the risky business of filing things on a Saturday evening. This is not, however, a theoretical example but actually happened. The full details can be found in a recent decision from the UK IPO in BL O/0308/25. To prevent further embarrassment to the patent attorney involved, I will not go into any more detail. It is, however, highly recommended reading for all UK patent attorneys, and especially for those involved in marking papers for the patent attorney examinations. 

Bionome v Clearwater - intention is not enough

When developing technology that may lead to patentable inventions, it is always a good idea to work out what to do with the resulting intellectual property. The question of who owns the IP is crucial to how and whether the technology can be developed further and commercialised. If the invention results from a joint venture, it is particularly important to figure this out beforehand by specifying in an agreement what each party is bringing to the venture, what they own themselves, and how any resulting IP from the joint venture will be dealt with. Even if such an agreement is reached, however, problems can still arise when the parties fall out before everything is set up commercially. The case of Bionome v Clearwater, which was decided last week at the High Court, is an example of this. 

Image: Grok's idea of a sugar-coated leaf.

The case did not start at the High Court but at the UK IPO, where the claimant Dr Clearwater filed in 2022 a request under sections 8 and 12 for him, or alternatively his company, to be added as joint applicant on Bionome's patent applications. The patent applications at that stage included an international application, published as WO 2021/191614 A1 and a UK application published as GB2598881A. Since then, further applications have been filed from the international application in several other countries. The issue from Dr Clearwater's perspective was that, while the applications had named him as joint inventor, the applicant was identified only as Bionome Holdings Limited, a company that was started by his ex-business partner Dennis McCarthy after they had worked together to develop the invention. 

At issue before the IPO was an agreement between Mr McCarthy (via his son) and Dr Clearwater that stated they agreed to assign their IP to an as-yet unspecified jointly-owned entity after certain steps were concluded. Their working relationship, however, broke down in January 2020 before the entity was created and before any patent applications were filed. It was only after this that Mr McCarthy arranged to file a UK patent application in March 2020, followed by an international application a year later. Before the IPO, Dr Clearwater argued that the agreement was only an intention to assign and not an actual assignment. The hearing officer agreed that it only indicated a direction of travel, did not define future actions and did not constitute a binding agreement regarding ownership of any IP. The hearing officer found in decision BL O/0410/24 in May this year that Dr Clearwater should therefore have been named as joint applicant, not just joint inventor, and ordered his name to be added as joint applicant on the GB and PCT applications. 

Bionome appealed the decision to the High Court, arguing that the hearing officer had got it wrong by misinterpreting section 7 and misconstruing the agreement. They argued that section 7(4), by stating "Except so far as the contrary is established", created a presumption that Bionome had a right to the inventions that could only be overcome by evidence from the claimant. Tom Mitcheson KC, acting as Deputy Judge of the High Court, rejected this argument, finding that the section did not create any sort of additional evidential hurdle or burden beyond the prima facie case that Dr Clearwater had already established, i.e. that he had jointly developed the invention with Mr McCarthy. On the construction of the agreement, Mr Mitcheson found that the hearing officer was correct in interpreting it as amounting only to an intent to transfer any IP and not to an actual assignment of IP. Bionome's appeal was therefore dismissed on both points. 

One lesson to be learned from this case is that agreements expressing only an intention do not amount to an actual assignment. If an actual assignment is intended, this needs to be explicitly expressed and preferably what is being assigned needs to be specified. Another lesson, which may be harder to follow, is not to get into joint ventures with someone who you do not trust, regardless of any agreement. 

Description amendments at the EPO - the beginning of the end?

[This is a lightly edited version of a recent article I wrote for the Barker Brettell website.]

Practice at the EPO currently requires that, before an application is granted, the description must be brought into line with the allowed claims. Doing this can be time-consuming and may involve making difficult choices about what amendments are required and how they should be made. EPO examiners, who are required to follow the Guidelines for Examination, can be strict in applying this requirement, typically allowing no room for ambiguity between what is defined in the claims and what is described in the rest of the application. If, for example, something in the application is described as an "embodiment", current practice will tend to require this to be within the scope of the claims. Otherwise, the description of the embodiment may need to be deleted or mentioned as being not according to the invention. The nature of drafting patent applications, however, means that often there may be some doubt about what is described as an embodiment being within the claims, especially if the claims have been amended to obtain allowance.

There have been strong disagreements about the legal basis for the requirement of conforming the description to the claims. The current Guidelines for Examination states: "Any inconsistency between the description and claims must be avoided if it  could throw doubt on the subject-matter for which protection is sought" (F-IV 4.3). Justification for this is claimed to be from Article 84 EPC, which states that the claims of an application "shall be clear and concise and be supported by the description". Many, however, have questioned whether this requirement for support justifies a requirement for conformity. I have been firmly in the camp of Article 84 providing no justification for amending the description but, having raised this with senior people at the EPO, the prevailing view has been for a long time that "supported by the description" is taken to mean "in conformity with the description". The justification for this always seems to be that the public needs to be kept safe from dangerous Angora cats that manage to squeeze through examination with narrowly interpreted claims, which then suddenly become broader after grant. This is, however, a matter for national courts to decide and should not be for the EPO to determine pre-grant. 

A common feature in patent drafting is to include a section in the description in which a number of claim-like clauses are set out, the intention of which is to provide basis for amendments that might be made later, including after grant. Such clauses are specifically identified for deletion in the Guidelines, based on the reasoning that leaving them in the application would "lead to unclarity [sic] on the subject-matter for which protection is sought" (F-IV 4.4). This specific practice has now been put to the test by an applicant (F. Hoffman-La Roche) who, during examination, objected to deleting a set of claim-like clauses in an otherwise allowable application. The application was then refused for the sole reason that Article 84 EPC was not complied with. The applicant appealed this decision, which has now resulted in a recently published decision T 56/21 on the question of whether such amendments are actually required. 

In their appeal, the applicant argued that the Guidelines were not correct in stating that amendments to the description to conform to the claims were required, indicating that there was no legal basis for this. The Board of Appeal, however, took the view that it was not their job to criticise the Guidelines but instead to consider whether there was any justification for the practice from the law itself. The Board stated:

"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" (point 2 of the Reasons for the Decision, emphasis in the original).

The question to be addressed was therefore a broader one than whether claim-like clauses would need to be deleted, and instead related to whether the description should need to be amended at all if there were any inconsistencies with the claims. The Board also referred to Article 69 EPC, which had been used as a further justification for removing any inconsistencies. This provision, which defines the extent of protection of a European patent or application, was considered by the Board to be separate from the assessment of patentability and intended to be used by national courts in infringement proceedings rather than for assessing patentability. The question was therefore limited only to whether Article 84 EPC provided any justification for removing inconsistencies between the description and claims. The purpose of Article 84 EPC, in the Board's view, was to ensure that there was a clear definition of the subject-matter in the claims in terms of technical features of the invention to allow examination for patentability. Claims should be clear from their wording alone, so clarity of the claims of an application should, in the Board's view, be key in examination. If the description were to be used to interpret the meaning of the claims this could, the Board suggested, lead to broad claims being granted based on a narrower interpretation from the description, which would lead to diverging decisions after grant.

On the key question of description amendments, the Board considered that the ordinary meaning of the words of Article 84 EPC ("The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description") did not support a requirement to bring the description into agreement with the claims by deleting or disclaiming subject-matter in the description which is not claimed. Some previous decisions from the Boards of Appeal had decided questions of whether a claimed invention was supported by the description, but these related to whether broad claims should be brought into line with the disclosure by limiting the claims. Other decisions related to bringing the description into conformity with the claims but, in the Board's view, these misconstrued the relationship between Articles 84 and 69 EPC as well as the relationship between the claims and the description. Given that the two provisions should be applied independently in separate situations, with Article 84 before grant and Article 69 after, the Board concluded that there was no rationale for adapting the description to match the subject-matter claims. Matching the description to unclear claims would fail to provide legal certainty, while adapting the description to clear claims would likewise fail to improve legal certainty. The attempts by the EPO and some previous Boards of Appeal may have been aimed at reducing variability in the extent of protection of granted patents, but in the Board's view this encroached on the competence of the national courts and legislators.

In conclusion, the Board decided that Article 84 EPC did not provide a legal basis for a mandatory adaptation of the description to claims of a more limited subject-matter. While the Board had initially envisaged referring a question to the Enlarged Board, in the end they considered that there was no need for this because the requirements of Article 84 EPC for the purpose of examination were unequivocal. The wording left no room for requiring, in examination, that the description be adapted to allowable claims to match their subject-matter. The Board was also not persuaded by the EPO's reasons for requiring the description to be adapted to allowable claims, which were to provide a more uniform determination and better predictability of the extent of protection of granted patents. The Board considered that this could only be achieved if the granted claims were clear in themselves. Adapting the content of the description to match the subject-matter of allowable claims would reduce the reservoir of technical information that could be used in national courts to determine the protection conferred by the granted patent. The Board therefore allowed the appeal and ordered the Examining Division to grant a patent on the basis of the specification with the claim-like clauses intact. The case was remitted to the Examining Division, which has now issued a Rule 71(3) communication with the claim-like clauses intact. 

While the reasoning behind this decision is complex and lengthy, the conclusion is clear: there is no legal basis for requiring applicants to amend the description during examination to match allowed claims. The decision flatly contradicts current practice at the EPO, as defined by the current Guidelines for Examination. What happens next is up to the EPO, unless a further Technical Board decides the issue the other way and finally refers questions to the Enlarged Board. I expect arguments between interested parties and the EPO to continue over at least the next few months, in particular when it comes to the EPO deciding on how the Guidelines are to be amended next year. 

For those wishing to keep a close eye on what happens, I would recommend attending the UNION-IP Winter Roundtable on 28 February 2025, where the issue will be discussed in more detail.