http://ipkitten.blogspot.com/2022/01/can-amending-description-to-summarize.html
The EPO Guidelines for Examination require the description of a patent application to summarise the background art (F-II-4.3). This requirement usually manifests with a request from the Examiner for the description to be amended to identify the closest prior art. In contrast to other types of description amendment, amending the description so as to mention known prior art seems a relatively innocuous requirement. It is hard to see how the addition of a simple summary of the prior art could be detrimental to the patentee. However, this comfortable assumption was recently put to the test in T 471/20, in which the Board of Appeal considered whether an amendment summarising the prior art could be considered to change the scope of the claim, add matter and thereby invalidate the patent. It will come as a relief to many that the Board of Appeal disagreed with the original finding of the Opposition Division, and found that introducing a prior art reference cannot add matter. However, the Board of Appeal did note that description amendments in general could add matter should they change the interpretation of the claims.
Changing the definition of the claims in the summary of the prior art
The decision (T 471/20) related to an appeal from the Opposition Division to revoke the patent on the grounds that the subject-matter of the patent extended beyond the content of the application as filed (Article 100(c) EPC). The patent as granted (EP2657138) related to a food product handling system (e.g. a burger patty production line). Claim 1 specified a food product system comprising inter alia a robot for moving food products around. After allowance of the claims and at the Examiner’s suggestion, the applicant amended the description to briefly discuss the closest prior art (D8, EP 0803440). D8 is a patent relating to a filing unit. The applicant introduced a statement into the description that the filing unit disclosed in D8 was “not a robot”.
| Robot? Not a robot? |
The Opposition Division (OD) found the patent invalid on the grounds that the description amendment summarising D8 added matter. The OD was particularly convinced by the Opponent’s arguments that the filing unit disclosed in D8, contrary to the amendment in the patent, would be understood by a skilled person to be a robot, i.e., “a machine which can be programmed to perform tasks which involve manipulative or locomotive actions under automatic control”. As such, the statement that D8 did not relate to a robot was a subjective as opposed to a factual statement. The Opposition Division further found that by introducing this subjective statement, the applicant had effectively introduced a disclaimer into the description. By stating that the disclosure in D8 was not a robot, the applicant had thereby changed the meaning of “robot” as used in the patent application, including the claims.
The OD found that the application as filed did not contain subject matter equivalent to the disclaimer indirectly provided by the applicants summary of D8, and as such, the summary of D8 added matter. The patentee was unable to delete the disclaimer as this would have been considered to broaden the scope of the patent, which is not permitted post-grant (the so-called “added matter trap”). The patent was thus revoked in its entirety.
Interpreting the claims in view of the description
Importantly, in order for the OD to reach the decision that the summary of the prior art added matter, it was necessary for the claims to be interpreted in light of the description, in view of Article 69 EPC. Article 69 EPC states that “[t]he extent of the protection conferred by a European patent or a European patent application shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims“.
There is disagreement in the case law as to the extent to which Article 69 EPC requires the description to be used to interpret the claims. In T 1127/16, the Board of Appeal found that the description should only be consulted in order to resolve ambiguity in the claim (IPKat). According to the Board of Appeal in this case, the description should not be consulted if the meaning of the claims is otherwise clear. Following the reasoning in T 1127/16, the introduction of a new definition in the description of an otherwise clear word in the claims should not change the scope of the claims.
By contrast, in T 500/01 the Board of Appeal found that the scope of an antibody claim was changed (and matter added) by amendment in the description of how the CDRs of the antibody should be defined (i.e. according to the Kabat or the Chotia numbering system). In other words, the definition provided in the description should be used to interpret the claims.
On the other hand, a Board of Appeal recently found that Article 69 EPC does not provide legal basis for the requirement that the description should be amended in line with the claims (T1989/18, IPKat). According to T1989/18, Article 69 EPC does not require the invention as defined in the claims to equate to how the invention is defined in the description. T1989/18 therefore appears in line with the Boards of Appeal case law that the claims have primacy, and the description need not be consulted to understand the claims.
Amendments to the description to summarise the prior art are, however, a special case. Particularly, in the appeal in question, the patentee argued that an amendment to summarise a prior art reference in the description cannot reasonably be said to change the interpretation of the claims and add matter (T 11/82, T 450/97). The Board of appeal in T 471/20 agreed that there was no legal basis in the EPC, and particularly no basis provided by Article 69 EPC, for interpreting the claims of a granted patent in a way somehow linked to the prior art acknowledged in the description (r. 2.3). Interestingly, however, the Board of Appeal did acknowledge that description amendments that did change the meaning of the claims could be said to add matter (Article 123(2) EPC) (r. 2.4). However, as the amendment in the case in question only related to the addition of a prior art summary, this was found not to change the scope of the claims, and did not add matter (regardless of whether the summary of the prior art was correct).
Final thoughts
The topic of description amendments has recently come to the fore following the controversial updates to the Guidelines for Examination. The 2021 Guidelines require applicants to make far more significant changes to the description than were previously required in order for the description to be brought in line with the claims (IPKat). Significantly, a recent Board of Appeal decision found that the requirement for the description to be brought in line with the claims had no legal basis in the EPC (IPKat), contradicting early Boards of Appeal on this issue (T 1399/17).
Applicants are alive to the risk of how any admissions in the description may be interpreted during litigation under the doctrine of equivalents (in Europe and the US). Substantial description amendments also needlessly take up valuable time if one considers the description inconsequential to how the claims should be interpreted. There is further the concern that matter deleted from the application before grant cannot be re-added post-grant. Particularly, if the description is amended pre-grant in order to avoid inconsistencies in the patent specification, the deleted subject-matter cannot be reinserted into the description or claims post-grant (Case Law of the Boards of Appeal, II-E-2.3.2) (T 1149/97, r.2.6, T 684/02).
Aside from the debate surrounding description amendments in general, the decision in T 471/20 is a welcome confirmation that amendment of the description to briefly summarise the prior art can not be considered added matter, regardless of whether the summary appears to use a different definition of a term to that used in the claims. However, T 471/20 nonetheless sounds a note of caution that amendment to claim definitions in the description in general can be said to add matter. T 471/20 thus highlights that considerable care is needed when amending a description in line with the claims, in order to avoid inadvertently and irretrievably removing subject matter. T 471/20 thus provides even more reason for applicants to baulk at substantial description amendments.
Further reading
Board of Appeal finds no legal basis for the requirement to amend the description in line with the claims (T 1989/18) (26 Dec 2021)
Boeing’s comma drama: Commas and taking the description into account when construing a claim (T 1127/16) (12 April 2021)
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