Context: One of the Technical Boards of Appeal (TBA) of the European Patent Office (EPO) had an appeal before it (T-0056/21) that was on the verge of referral to the Enlarged Board of Appeal (EBoA). The question was whether the description of a patent application by pharmaceutical giant Hoffmann-La Roche had to be edited as a prerequisite to the grant of patent claims covering some more limited subject matter.
What’s new: Patent attorneys throughout and possibly even beyond Europe are overwhelmingly happy about the decision (link to EPO webpage) by the TBA to order the EPO’s Examining Division to grant the patent without requiring an amended specification, and that the TBA ultimately deemed the key legal question so clear that it refrained from a referral to the EBoA.
Direct impact: That decision puts a definitive end to those particular proceedings.
Wider ramifications: The key question is now whether the decision, which does come across as rather persuasive, will be adopted by other TBAs or whether some other TBA will consider deviating from it, in which case a referral of the question to the EBoA could still happen. And more generally speaking, the decision reinforces the concept of the primacy of the claim, which is one of the pillars of patent law and gave rise to the saying that “the name of the game is the claim.”
The 90-page decision is very well-structured and exceptionally easy to read, considering the high level of abstraction of the question at hand. The purpose of this article is to summarize the reasoning in a highly condensed form.
The very first part has to deal with the principles of statutory interpretation (here, the European Patent Convention (EPC)) by the EPO’s Boards of Appeal. That part clarifies that it’s about what such a treaty says; examining guidelines or other internal material will be disregarded; and the Boards of Appeal are not going to legislate from their bench. It’s strictly about interpretation.
Most of the decision deals with the relationship between Art. 69(1) EPC and Art. 84 EPC. The key holding here is that Art. 69(1) EPC on claim construction (the claims being viewed in light of the description) is relevant only to infringement proceedings, but not the granting process. Art. 84 EPC must be interpreted in its own right. Those two statutes are neither complementary nor subordinate to each other.
The primary of the claim is why the TBA deciding this matter has no problem with a patent application such as the one at issue where a section contains a collection of claim-like passages that don’t precisely match the actual claims. In the end, if something is not in the claim, then it can be in the description but won’t matter. If any potential equivalents can satisfy some jurisdictions’ equivalency test, then they’d be able to do so even if one deleted them from the description.
One could also describe the judicial philosophy behind this ruling as “the primacy of of the claim’s clarity.” A claim must be clear in its own right. If that is the case, and if there’s no impermissibly added matter, then it works.
The TBA feels that more recent EPO case law supports that view and some decades-old decisions to the contrary were simply wrong.
Rules 42 (content of description), 43 (on form and content of claims) and 48 (on prohibited matter) are not deemed relevant to this question.
This is the headnote:
“In examination of a patent application, neither Article 84 nor Rules 42, 43 and 48 EPC provide a legal basis for requiring that the description be adapted to match allowable claims of more limited subject-matter.”