Navigating Legal Tides

Roche's Appeal Against EPO's Claim Description Mandates - Case Nr. T 56/21

Recent advances in T 56/21 – The Applicant enters the fray for a Referral to the Enlarged Board of Appeal ON THE CONTROVERSIAL REQUIREMENTS OF AMENDING THE DESCRIPTION IN LINE WITH THE SCOPE OF THE CLAIMS

Background

The Applicant of European patent application No. 15700545.5, F. Hoffmann-La Roche AG, filed an appeal in late 2020 against the decision of the Examining Division (ED) to refuse the European patent application.

In the previously issued text intended for grant, the ED had decided to delete several passages of the description on considering that they caused an inconsistency between claims and description, and they also deleted claim-like statements. Furthermore, in strict observance of the increasingly more stringent approach followed by the European Patent Office throughout their latest revisions of their Guidelines for Examination, the ED considered that the scope of the claims was rendered unclear due to those very same inconsistencies, thus being objectionable under Art. 84 EPC.

In contrast, the Applicant drew attention to the fact that, should those deletions be accepted, their rights would then be significantly jeopardised, since that deleted subject matter would then no longer be available as basis for claim amendments after grant. As a result, they disapproved the text intended for grant but, despite that, the ED once again insisted on the fact that claim-like clauses had to be deleted, since otherwise they could lead to unclarity as to the actual scope of protection.

In an unexpected turn of events, the Applicant then decided to withdraw their request for oral proceedings and asked for a decision according to the state of the file. That action resulted in the patent application being eventually refused and a subsequent appeal being filed by the Applicant. In the grounds for the refusal decision, it was explained that the passages considered as claim-like clauses were not specific embodiments of the invention, because their scope was broader than that of the claims, and therefore they did not qualify as embodiments of the invention. The ED also noted that no loss of rights occurred due to the deletion of those parts of the patent application because clauses were unclear and contained obviously unnecessary matter. In our opinion, these conclusions appeared to follow on from several Boards of Appeal’s decisions issued during the 2021-2023 period, and also previous revisions of the EPO Guidelines for Examination, wherein claim-like clauses had been directly construed as mere repetitions of identical subject matter which therefore were irrelevant and unnecessary.

On the appeal proceedings and Board of Appeal’s proposal for a referral to the Enlarged Board of Appeal

It must be first noted that the Board of Appeal assigned to this case is Board number 3.3.04, that is, the same one that was involved in the first significant decision (T 1989/18) issued against these strict adaptation requirements after entry into force of 2021 revision of the EPO Guidelines. Also, it just so happened that both cases involved the same Applicant, who back then also refused to amend the description as suggested by the ED and entered appeal proceedings which reversed the situation to their advantage.

The Board nr. 3.3.04 issued a preliminary opinion on 21 July 2023, wherein they questioned whether Art. 84 EPC provides a legal basis for objecting to an inconsistency in scope between the invention disclosed in the description and/or drawings and the subject matter for which protection is sought in the claims. They also challenged whether the EPO Guidelines are actually in line with the wording and purpose of Art. 84 EPC and related case law on clarity. What is more, the Board indicated that, in their opinion, it is not for the European Patent Office to harmonise the extent of protection conferred by European patents (and applications) by bringing the description and/or the drawings of an application or patent in agreement with the amended claims held allowable.

Notwithstanding the foregoing, the Board of Appeal decided to ask the Appellant (i.e., the patent applicant, Roche) about the need for a referral to the Enlarged Board of Appeal, and suggested the following question, which was limited to ex parte proceedings (i.e., only involved the interests of the Applicant, not of any third party):

Is there a lack of clarity of a claim or a lack of support of a claim by the description within the meaning of Article 84 EPC if a part of the disclosure of the invention in the description and/or drawings of an application (e.g. an embodiment of the invention, and example or a claim-like clause) is not encompassed by the subject-matter for which protection is sought. (“inconsistency in scope between the description and/or drawings and the claims”) and can an application consequently be refused based on Article 84 EPC if the applicant does not remove the inconsistency in scope between the description and/or drawings and the claims by way of amendments of the description (“adaptation of the description”)

On the Applicant’s recent response to the Board of Appeal’s preliminary opinion and suggestion for a referral

Roche recently responded to the Board’s communication of 21 July 2023, wherein they appeared to fully support the referral proposed by the Board.

In addition to this, they suggested broadening the scope of the questions for the referral, on considering that the lack of clarity or lack of support within the meaning of Art. 84 EPC in that situation (i.e., in an alleged inconsistency between the description and the claimed subject matter) arises independently of the proceedings in which the claim is under consideration.

In particular, Roche acknowledged the different consequences this issue may have between examination and opposition proceedings, and referred to G 3/14 decision, which provides a framework for determining whether an objection of lack of clarity and/or support can be considered in opposition proceedings. While they acknowledged that G 3/14 still does not answer the question of whether Art. 84 EPC provides legal basis for requiring adaptation of the description to the scope of the claims as amended in opposition proceedings, they considered that it indeed permits the Opposition Division (or Board) to require such adaptation of the description following amendment of the independent claims in opposition proceedings. Furthermore, in order to shed more light on this aspect, Roche provided the following illustrative example:

In this particular case, even though “substantial amount” is typically considered to lack clarity, a lack-of-clarity objection cannot be raised against amended claim 1 because that expression was already in the granted claims, following G 3/14 application. However, that claim amendment would result in a new inconsistency between the claims and the description, as it still contains the sentence “The invention provides a product comprising X”, without necessarily requiring a substantial amount of Y.

Taking this into account, Roche noted that, if the Enlarged Board of Appeal were to hold in the referral that an inconsistency between the claims and the description and/or drawings contravenes Art. 84 EPC for lack of clarity or support, then it would be compatible with G 3/14, so an objection for non-compliance with Art. 84 EPC could be raised in respect of claim amendments made in opposition proceedings (even if features present in dependent claims are introduced into the independent claim(s)), if the description is not adapted according to the amended independent claims.

In addition to these and several other arguments provided in their response filed on 30 October 2023, Roche eventually suggested amending the question proposed by the Board as follows, so as to broaden it to be applicable to any proceedings (thus including also opposition and appeal proceedings):

Question 1:

Is there a lack of clarity of a claim the claims or a lack of support of a claim the claims by the description within the meaning of Article 84 EPC if a part of the disclosure of the invention in the description and/or drawings of an application the specification (e.g. an embodiment of the invention, and example or a claim-like clause) is not encompassed by the subject-matter for which protection is sought as defined in the claims. (“inconsistency in scope between the description and/or drawings and the claims”) and can an application consequently be refused based on Article 84 EPC if the applicant does not remove the inconsistency in scope between the description and/or drawings and the claims by way of amendments of the description (“adaptation of the description”)?

Furthermore, they also suggested considering examination proceedings explicitly in a second subsidiary question:

Question 2:

If the answer to the question 1 is “yes”, can an application consequently be refused based on Article 84 EPC if the applicant does not remove the inconsistency in scope between the description and/or drawings and the claims by way of amendments of the description (“adaptation of the description”)?

On the Third Party Observations filed during the appeal procedure

Last but not least, mention must be made to the two Third Party Observations (TPO) filed anonymously on November 24, 2023.

The TPO strategy is typically used to present observations concerning the patentability of an invention and as acknowledged in section E-VI of the EPO Guidelines for Examination, not only observations concerning novelty and/or inventive step may be filed, but also observations directed to clarity, sufficiency of disclosure, patentability, and unallowable amendments. Thus, they are typically used to hinder the grant of patent by providing new prior art and/or objections that had so far not been considered by the ED.

More interestingly, though, in the present case, these TPOs appear to have been filed with the single aim of further supporting the need for a referral, as they include a compilation of recent literature evolving around the requirements of the adaptation of the description and the risks they may entail. In particular, one TPO includes a selection of several articles published in the EPI[1] Information bulletin, while the other includes a number of extracts from several CIPA[2] Journals.

Only time will tell whether all these efforts will bear fruits, in terms of an Enlarged Board of Appeal eventually issuing a decision which finally settles the controversial issue of the adaptation of the description requirements, but we may at least dare to feel slightly optimistic in this regard after these recent developments.

[1] Institute of Professional Representatives before the European Patent Office.

[2] Chartered Institute of Patent Attorneys (UK)