5. Claims supported by the description
In T 977/94 the board decided that if the patentee amended his claims he had also to bring the description into line with them, because of its fundamental importance. An invention was only claimable to the extent that it was supported by the description (Art. 84, second sentence, EPC 1973), and the claims were interpreted in the light of the description (Art. 69 EPC 1973). So it was necessary to check that the essential elements of the invention claimed were also described as such in the description. See also T 300/04, T 1399/17.
In T 295/02 the board found that an inconsistency between a claim and the provisional description was not a valid reason to refuse the application if the inconsistency arose from an amendment, if it was apparent that the text of the description was not intended by the applicant to form the agreed basis of any decision, especially one concerning its consistency with the amended claims, and if the appellant was prepared to adapt the description to conform to a definite allowable set of claims.
In T 1808/06 the board recalled that, in order to meet the requirement of Art. 84 EPC that the claims have to be supported by the description, any disclosure in the description and/or drawings inconsistent with the amended subject-matter should normally be excised (see also T 1883/11, T 1252/11, T 237/16). 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 (see also T 987/16). Reference to Art. 69(1) EPC was not an appropriate justification for a less stringent adaptation of the description and in so far misleading as it could be understood to suggest a direct applicability of its contents at the examination or opposition stage. This was clearly not the case as Art. 69(1) EPC related to the scope of protection (see in this chapter II.A.6.3.2). It was only in situations where the removal of inconsistencies was not possible for procedural reasons (e.g. no amendment possible of the granted version) that – purely as an auxiliary construction – Art. 69(1) EPC could be invoked for an interpretation of the claimed subject-matter.
In T 1989/18 the board observed that the description could not be relied upon to resolve a clarity issue in a claim, nor could it give rise to any such issue if the definition of the subject-matter in a claim was clear per se. In particular, if the claims were clear in themselves and supported by the description, their clarity was not affected if the description contained subject-matter which was not claimed. Art. 84 EPC could not serve as a legal basis for a refusal in such instances. When assessing clarity, Art. 69 EPC was of no relevance since it was only concerned with the extent of protection conferred. In the absence of an objection of lack of unity under Art. 82 EPC, the board failed to see how R. 42(1)(c) EPC could be the legal basis for requiring the applicant, as a general rule, to bring the description in line with claims intended for grant, and to remove passages of the description that disclosed embodiments which were not claimed. A number of decisions have relied on R. 48(1)(c) EPC as a potential legal basis for requiring the description to be adapted to the subject-matter as claimed. However, the board held that there was general acceptance in the travaux préparatoires that the application should not be refused even if the application as filed contained statements or other matter contrary to "ordre public" or morality. It was therefore difficult to conceive that the legislator intended to impose more severe sanctions on less offensive matter, in particular to provide a ground for refusal based on the inclusion of merely "irrelevant or unnecessary" matter. T 1989/18 was followed in T 1444/20, but not in T 1024/18, T 121/20, T 2766/17, T 2293/18.
- T 3097/19
Catchword:
1. If a request is not admitted because earlier objections are not overcome, Rule 111(2) EPC requires that these earlier objections be made explicit in the decision (see reasons 3).
2. Non-convergence of requests is, on its own, not a sufficient reason for non-admittance. It must be reasoned that and why non-convergent requests affect procedural economy in view of the particular circumstances of the case (see reasons 4).
3. The purpose of the claims to define the matter for which protection is sought (Article 84 EPC) imparts requirements on the application as a whole, in addition to the express requirements that the claims be clear, concise and supported by the description. The Board deems it to be an elementary requirement of a patent as a legal title that its extent of protection can be determined precisely. Whether this is the case for a specific patent application (or an amended patent) can only be decided with due consideration of the description. Claims and description do not precisely define the matter for which protection is sought if they contradict each other (see reasons 27 to 34).
- T 2194/19
Catchword:
The requirement that the claims are to be supported by the description under Article 84, second sentence, EPC does not necessarily mean that all the "embodiments" of the description of a patent application have to be covered by the (independent) claims, i.e. that all the embodiments must fall within the scope of those claims (see point 6.2.2 of the Reasons).
- T 2293/18
Orientierungssatz:
Stützung der Ansprüche durch die Beschreibung, s. Punkt 3.3.5- T 1024/18
Catchword:
Necessity to adapt the description (Reasons 3)
- T 2766/17
Catchword:
Statements in the description contradicting the plain claim wording may cast doubts as to the intended meaning of this wording. Under such circumstances an objection under Article 84 EPC has to be raised.
- Annual report: case law 2022
- Summaries of decisions in the language of the proceedings