The Invention is Defined by the Claims?

Every European Patent Attorney knows that EPO examiners have become more strict over the past few years in enforcing the requirement for the description of a patent application to be consistent with the claims. In previous years it was usually enough just to ensure that the summary section said something along the lines of "In accordance with the invention there is provided a widget according to the appended claims". This has gradually progressed to requiring any use of the words "invention" and "embodiment" throughout the entire description to be related to features that are actually within the scope of the claims. For some applications, particularly those coming from US priority applications, such objections can be very time consuming to deal with, typically requiring a detailed search through the description to see what example or embodiment actually falls within the claimed invention. It is  also often difficult to work out with any certainty whether particular examples do in fact fall within the scope of the claims.

The current version of the Guidelines for Examination, at section F-IV, 4.3, requires any inconsistency between the description and the claims to be avoided "if it may throw doubt on the extent of protection and therefore render the claim unclear or unsupported under Article 84, second sentence or, alternatively, render the claim objectionable under Article 84, first sentence". This section, which has been amended a few times over the past years, outlines various ways in which such inconsistencies may arise. 

As a reminder, Article 84 EPC states, "The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description". The first sentence simply defines that the invention is defined by the claims, which is uncontroversial, while the second sentence requires that there be some support from the description. How, though, does this translate into requiring that everything in the description is completely consistent with the claims?  The only decision cited in the Guidelines in support of this is T 1808/06, which states:

"Any disclosure in the description and/or drawings inconsistent with the amended subject-matter should normally be excised. Reference to embodiments no longer covered by amended claims must be deleted, unless these embodiments can reasonably be considered to be useful for highlighting specific aspects of the amended subject-matter. In such a case, the fact that an embodiment is not covered by the claims must be prominently stated" (point 2 of the reasons).

The Board in that case provided no reasoning as to why such amendments were required by Article 84. This single paragraph has nonetheless apparently caused practice at the EPO to become ever more strict. This has led to much frustration among attorneys, who are having to spend more of their time (and consequently their client's money) on combing through specifications to try to comply with the latest strict interpretation of the Guidelines. It does not help that how strict the Guidelines are interpreted tends to vary considerably from examiner to examiner. Complying has now become a game of seeing how far it is necessary to go to persuade a particular examiner that the amendments to the description will get the application over the line to be allowed. 

In 2018, all this clearly became a bit too much for one applicant, who decided to push back and allow their application to be refused by maintaining the words "one embodiment of the invention" in the description relating to features that, in the examiners' view, did not actually fall within the scope of the claims, which were otherwise allowable. The applicant appealed the decision and the Board of Appeal in T 1989/18 has recently decided in their favour. The reasons for the decision are brief and very much to the point, the key parts being points 4 to 7:

4. First and foremost, Article 84 EPC requires that the claims are clear, i.e. that they properly define and delimit the subject-matter for which protection is sought in understandable and unambiguous terms. Claims must be clear in themselves when being read with the normal skills including the knowledge about the prior art, but not including any knowledge derived from the description of the patent application or the amended patent (see e.g. decision T 454/89, Reasons, point 4.1 (vii)).

5. Article 84 EPC only mentions the description in the context of the additional requirement that it must support the claims. Under this requirement, the subject-matter of the claim must be taken from the description, it being inadmissible to claim any subject-matter which is not described. However, 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 issue if the definition of the subject-matter in a claim is clear per se. In particular, if the claims are clear in themselves and supported by the description, their clarity is not affected if the description contains subject-matter which is not claimed. (emphasis added)

6. When assessing clarity, Article 69 EPC is of no relevance since it is only concerned with the extent of protection conferred as one of the effects of an application or patent (chapter III of the EPC) whenever that extent is to be determined by whoever is competent to do so. Article 69 EPC is not by itself concerned with a requirement of the Convention to be met by an application or patent - in particular, unlike Article 84 EPC it is not concerned with the definition proper of the subject-matter sought to be protected by a claim. Moreover, even if it were possible, for the purpose of Article 84 EPC, to interpret the claims in the light of the description and drawings as provided for in Article 69 EPC in order to establish whether the conditions governing clarity have been satisfied, the board fails to see how that approach could lead to a lack of clarity of the claims (as opposed to a lack of clarity of the description) if the clear terms of the claims did not encompass subject-matter disclosed in the application or patent.

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

It should be evident that this reasoning is in direct contradiction with the assertion in T 1808/06 (which is not referenced in the decision) regarding what is required to meet the requirements of Article 84 EPC. If the Guidelines were to follow the new decision instead, section F-IV 4.3 would clearly need to be deleted, because there is actually no requirement for any inconsistencies between the description and the claims to be avoided. This would of course be very good news for applicants and their attorneys, who would be able to get granted applications through the EPO system with less hassle and expense. 

Some may say that this could result in European patents being granted with more doubtful claim scope. Personally, however, I cannot see any realistic downside to this. Any arguments over what the claims actually cover can, if necessary, be resolved if they become relevant during post-grant proceedings, in the event a patent becomes important enough to be contested. I would therefore hope that the EPO will take the reasoning in T 1989/18 on board and change the Guidelines, particularly given that the decision the Guidelines currently rely on has no reasoning at all. Failing that, I can see the issue going up to the Enlarged Board fairly soon on a question from the President, which I am sure some will be lobbying for already, or perhaps another Board will want to follow T 1808/06 instead and refer questions that way. Either way, I think we should see some clarity emerging at last within the next year or two.