Background
One of the more unique, and often debated, aspects of prosecution before the EPO is the requirement that the description and claims must be in conformity. Historically, these changes would typically involve removing terms such as “may”, “could”, or “optionally” from the description, where a previously optional feature was now required by the independent claims. Additionally, where embodiments were obviously no longer within scope of the claims, such as alternatives or non-unitary subject-matter, suitable amendments were made to make this clear. However, the EPO’s requirements for description amendments have become increasingly stringent, and somewhat onerous, in recent years.
This requirement ostensibly stems from Article 84 EPC which states that “The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description”. With Guidelines F-IV, 3.4 setting out Examining Division’s interpretation and requirements for the latter half of this article. That is, what does the requirement that the claims be “supported by the description” mean with respect to any potential inconsistencies between the claims and the description.
As a general sentiment, Guidelines F-IV, 3.4, sets out that “Any inconsistency between the description and the claims must be avoided if it could throw doubt on the subject-matter for which protection is sought and therefore render the claim unclear or unsupported under Article 84 EPC, second sentence, or, alternatively, render the claim objectionable under Article 84 EPC, first sentence”.
The requirements for meeting this criterion were revised and tightened in the 2021 version of the EPO’s Guidelines, with revision being made in 2022 as well. The effect of these changes on prosecution before the EPO, including: the stringency of their application; the legal basis for refusal based on alleged inconsistencies in the description; and the meaning of the term “invention” in a specification, were the topics of a number of EPO Boards of Appeal decisions since the change in 2021, such as, T1989/18, T2194/19, and T1426/21.
The Guidelines that came into force on 1 March 2023 included a number of changes to section F-IV, 3.4, which attempted to further clarify what should and, therefore, should not be considered an inconsistency between the claims and description.
Determining Inconsistencies
The first change is the inclusion of two examples of inconsistencies which may result from alternative embodiments or embodiments which are demonstrably incompatible with the independent claims. These are when:
Neither of these examples would appear to be particularly controversial, and such inconsistencies are often corrected as a matter of common practice.
The Guidelines already explain that it is not an inconsistency if an embodiment is narrower than (but covered by) the independent claims, or if an embodiment does not recite all the features of the independent claims, but that they are “present by reference to another embodiment or implicit”.
It is this final phrase which has, for many, been a topic of contention. For example, what is required for an implicit reference to other embodiments comprising all of the features of the independent claims? Further, it can frequently be a matter of debate as to how far must the description be adapted to include such references, especially given the variation in descriptions of patent applications, often as a result of prosecution application before the EPO which were drafted with other jurisdictions in mind, or to differing local practices and requirements.
A further example relating to this issue has been added with the latest amendment of the Guidelines which clarifies that:
“Where the claim comprises features A, B and C taken in combination, the passages dealing individually with how each of A, B and C are realised are normally understood as describing the refinements of the combination defined in the claim unless there are indications to the contrary. The passages which describe only the realisation of feature A, for example by introducing features A1-A3 and discussing their advantages, but which can be interpreted as meant for being combined with the other features of the claim, would not need an amendment caused by the limitation of the claim from B to B2 unless one of A1-A3 is incompatible with B2. On the other hand, any passage explicitly referring to a sub-combination of the claimed features (e.g., only A or A+B) as being the invention is inconsistent with the claim”.
Therefore, this example appears to be trying to marry the requirements of section F-IV, 3.4 of the Guidelines with the variation in style and structure of patent applications. This example makes at least some account of instances where the whole of the invention may not be described in each embodiment. Consequently, the Guidelines provide further support to the argument that constituent parts of an invention may be dealt with by interlinked or complimentary sections of the description. Moreover, this can be considered a reassurance that the EPO does not apply disparate requirements to differing styles and structures of patent applications.
However, this does still leave some interpretation as to what “indications to the contrary” and “explicitly referring to a sub-combination” mean in the context of the description. For example, would an introductory or generalised statement and/or discussion of the broadest embodiment of an invention fall foul of this requirement? On the one hand, such introductory and generalised statements and discussions often make no explicit or implicit references to further features which may now be part of the independent claims. On the other hand, these introductory and generalised statements and discussions may not explicitly indicate that other features are not present (e.g., through the use of definitive language such as only or solely).
Hence, the question of exactly what is, and is not, an inconsistency between the claims and description appears as though it will continue to vex EPO examiners and applicants alike for some time yet. Further, in the EPO’s continued strive for consistency and legal certainty, do such constantly evolving requirements help or hinder this goal?
Remedying Inconsistencies
Even once it has been established that there is an inconsistency between the claims and description, how such an inconsistency should be remedied must still be considered. The update to the Guidelines appears to reaffirm the EPO’s view that small or potentially ambiguous changes are not sufficient to remedy inconsistencies.
It has been reiterated that the terms “disclosure”, “example”, “aspect” or similar, on their own (newly included), do not necessarily imply that what follows is not encompassed by an independent claim. These terms have often been used as a shorthand way to differentiate “embodiments” which is explicitly a method or apparatus which falls within the scope of the claim, and “example” or “there is disclosed” which could imply that the methods or apparatus described was not necessarily part of the claimed invention, with it being an alternative or broadened version.
In contrast, the EPO have included an additional paragraph which sets out their requirements for indicating when a method, apparatus, system, or otherwise does not fall within the scope of the independent claim, as follows:
“As long as the resulting text of the description does not present conflicting information to the reader, an inconsistent embodiment may also be remedied by ensuring that it is not referred to as being “according to the invention” throughout the description and by complementing the reference to it with an explicit statement to the effect that it is retained due to being useful for understanding the invention (e.g. “embodiment useful for understanding the invention”, “comparative example from background art”.”
Understandably, applicants, and attorneys, are often reluctant to include such negative disclaimers in the description of patent applications for fear of limiting the interpretation of the claims. Such disclaimers, which unequivocally seek to place limits on the scope of the claims, may hinder infringement claims under the doctrine of equivalents found in many national courts.
Additionally, there is concern that the presence of such disclaimers in a granted EP patent could have knock on effects for proceedings in other jurisdictions. Particularly in infringement or validity proceedings in those jurisdictions in which file wrapper history or other national proceeding may be consulted as part of the process. For example, a statement that an embodiment is “not according to the invention” could potentially be seized upon, and utilized to effect, by an opponent in another jurisdiction.
We have found using phrases like “invention claimed herein” or “explicitly claimed by the appended claims” are accepted by EPO Examiners, albeit sometimes reluctantly. Such phrases differentiate between the broader inventive concept (that may still be claimed in other jurisdictions) and what is defined by the independent claims of the European patent application.
The alternative approach is, of course, to delete subject-matter which is deemed to be inconsistent with the claims. However, this may reduce a patentee’s options for post-grant amendments (such as in opposition) or create worries regarding the enablement of certain interpretations of the claims.
In conclusion, whilst these changes do offer some insight as to the EPO’s current position regarding inconsistencies in the description, and their preferred remedies, this is likely to remain an area of contention between applicants and the EPO.
As with many other issues of patent prosecution, our expertise and experience allows us to achieve the best possible outcome for our clients when handling such issues. For example, knowing when to push back against potentially unnecessary description amendments can be invaluable in ensuring that our clients achieve granted patents in their desired form without significantly delaying grant. This can range from advising on the stage at prosecution at which to make amendments to whether some or all of an EPO Examiner’s proposed amendments are reasonable, or if there is alternate “softer” language which may be viable.
Additionally, drawing on experience from across our firm allows for such advice to be tailored to the EPO’s various examining divisions and even particular examiner’s. For example, many times a telephone call between a patent attorney and an EPO examiner is the most efficient way to reach a consensus on the issues at hand.
Hence, with an apparent tightening of the rules, we will be guiding our clients down an even narrower path between an applicant’s wishes and the EPO’s requirements.
