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 Art. 84, second sentence, or, alternatively, render the claim objectionable under Art. 84, first sentence. Such inconsistency can be of the following kinds:
(i)Simple verbal inconsistency
For example, there is a statement in the description which suggests that the invention is limited to a particular feature but the claims are not thus limited; also, the description places no particular emphasis on this feature and there is no reason for believing that the feature is essential for the performance of the invention. In such a case, the inconsistency can be removed either by broadening the description or by limiting the claims. Similarly, if the claims are more limited than the description, the claims may be broadened or the description may be limited. See also paragraph (iii) below.
(ii)Inconsistency regarding apparently essential features
For example, it may appear, either from general technical knowledge or from what is stated or implied in the description, that a certain described technical feature not mentioned in an independent claim is essential to the performance of the invention, or, in other words, is necessary for the solution of the problem to which the invention relates. In such a case, the claim does not meet the requirements of Art. 84, because Art. 84, first sentence, when read in conjunction with Rule 43(1) and Rule 43(3), has to be interpreted as meaning not only that an independent claim must be comprehensible from a technical point of view but also that it must clearly define the subject-matter of the invention, that is to say indicate all the essential features thereof (see T 32/82). If, in response to this objection, the applicants show convincingly, e.g. by means of additional documents or other evidence, that the feature is in fact not essential, they may be allowed to retain the unamended claim and, where necessary, to amend the description instead. The opposite situation in which an independent claim includes features which do not seem essential for the performance of the invention is not objectionable. This is a matter of the applicant's choice. The division therefore does not suggest that a claim be broadened by the omission of apparently inessential features;
(iii)Part of the description and/or drawings is inconsistent with the subject-matter for which protection is sought
According to Art. 84, second sentence, the claims must be supported by the description. This means that there must not be inconsistency between the claims and the description. Parts of the description that give the skilled person the impression that they disclose ways to carry out the invention but are not encompassed by the wording of the claims are inconsistent (or contradictory) with the claims. Such inconsistencies may be present in the application as originally filed or may result from amending the claims to such an extent that they are no longer consistent with the description or drawings.
For example, an inconsistency may exist due to the presence of an alternative feature which has a broader or different meaning than a feature of the independent claim. Further, an inconsistency arises if the embodiment comprises a feature which is demonstrably incompatible with an independent claim.
–the independent claim defines a feature as being made of "purely substance X", whereas the description defines it as being made of a blend of substances "X and Y";
–the independent claim defines the feature of an article comprising nicotine-free liquid material, whereas the description states that the liquid material may contain nicotine.
However, it is not an inconsistency when an embodiment comprises further features which are not claimed as dependent claims as long as the combination of the features in the embodiment is encompassed by the subject-matter of an independent claim. Similarly, it is not an inconsistency when an embodiment fails to explicitly mention one or more features of an independent claim as long as they are present by reference to another embodiment or implicit.
Example: 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.
For borderline cases where there is doubt as to whether an embodiment is consistent with the claims, the benefit of the doubt is given to the applicant.
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 them as not fall falling within the subject-matter for which protection is sought. See paragraph (i) above for the case where an inconsistency can be removed by broadening the claims.
Example: Independent claim defines a vehicle with a broad feature of a "motor", together with other features. The description and the drawings comprise Embodiment 1, in which the vehicle has an electric motor, and Embodiment 2, in which the vehicle has a combustion engine. During the prosecution, in order to fulfil the requirements of inventive step, the independent claim is amended to specify a vehicle employing an electric motor since the combination of claimed features using a combustion engine was anticipated by the prior art. Embodiment 2 is no longer consistent with the independent claim, unless it can be inferred from this embodiment that the combustion engine is used in combination with the electric motor. This inconsistency can must be rectified either by removing Embodiment 2 from the description and drawings or by marking Embodiment 2 as not being covered by the claimed subject-matter (e.g. "Embodiment 2 is not covered by the subject-matter of the claims" or similar wording).
An inconsistency between the description and the claims cannot be removed by introducing at the beginning of the description a generic statement such as "embodiments not falling under the scope of the appended claims are to be considered merely as examples suitable for understanding the invention" without indicating which parts of the description are no longer covered. To remove the inconsistency, such a statement has to refer to specific embodiments (e.g. "Embodiments X and Y are not encompassed by the wording of the claims but are considered as useful for understanding the invention").
The terms "disclosure", "example", "aspect" or similar, on their own, do not necessarily imply that what follows is not encompassed by an independent claim. Unambiguous expressions have to be adopted to mark an inconsistent embodiment (e.g. by adding "not encompassed by the wording of the claims", "not according to the claimed invention" or "outside the subject-matter of the claims") instead of merely replacing the terms "embodiment" or "invention" by one of the aforementioned terms.
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".
Subject-matter in the description regarded as an exception to patentability under Art. 53 Art. 53(c) needs to be excised, reworded such that it does not fall under the exceptions to patentability or prominently marked as not being according to the claimed invention. For the latter case, the description may be amended by adding an indication as follows: "The references to the methods of treatment by therapy or surgery or in vivo diagnosis methods in examples X, Y and Z of this description are to be interpreted as references to compounds, pharmaceutical compositions and medicaments of the present invention for use in those methods". (see G‑II, 4.2 for adaptation of the description for methods of treatment of the human and animal body, G‑II, 5.3 for adaptation of the description for the use of human embryonic stem cells and G‑II, 5.4 for adaptation of the description for plant and animals).
Moreover, features required by the independent claims may not be described in the description as being optional using wording such as "preferably", "may" or "optionally". The description must be amended to remove such terms if they make a mandatory feature of an independent claim appear as being optional.
When inviting the applicant to amend the description, the division provides examples of embodiments inconsistent with the independent claims and brief reasons why. If the inconsistency concerns describing a mandatory feature of an independent claim as optional, the division provides an example passage.
See also H‑V, 2 for the allowability of amendments to the description.
An inconsistency between the description/drawings and the claims may frequently occur when, after a limitation of the claims following an invitation under Rule 62a(1) or Rule 63(1), the subject-matter excluded from the search is still present in the description. Unless the initial objection was not justified, such subject-matter is objected to under Art. 84 (inconsistency between the claims and the description).
Furthermore, an inconsistency between the description/drawings and the claims will occur when, after a non-unity objection (Rule 64 or Rule 164), the claims have been limited to only one of the originally claimed inventions: the embodiments and/or examples of the non-claimed inventions must be either deleted or clearly indicated as not being covered by the claims.