Does the description matter when the patent has been granted?

The European Patent Office (EPO) does not give the description in a granted patent much weight when construing the claims. Unlike in other jurisdictions (most notably the U.S.), the scope of protection is typically considered by the EPO to be defined by the claims, and only the claims. Whether this should be the case is a central point in two upcoming referrals to the EPO’s Enlarged Board of Appeal. It is also important to note that the EPO is not responsible for determining infringement of a granted patent – that is something that would go before a national court or the Unitary Patent Court (UPC), and in some jurisdictions (for example, the UK) the description would be used as a guide to construe even claims that seemed at first glance to be clear in themselves.

In T 0439/22, the Board of Appeal has stated that “the case hinges on the question whether the description is to be taken into account even when interpreting a claim that contains an allegedly clear wording”. In the opposed patent (EP3076804), the claims use the term “gathered sheet”, which the Opposition Division in their decision considered to have “a clear and agreed meaning in the art”. The opponent/appellant has referred to the numerous appeal board decisions to the effect that the patent constitutes its own dictionary, and argued that since the term “gathered” has a definition in the description, this definition must be used to establish the meaning of the term “gathered” in the claims. The description states that “As used herein, the term ‘gathered’ denotes that the sheet of tobacco material is convoluted, folded, or otherwise compressed or constricted substantially transversely to the cylindrical axis of the rod”. Whether this definition is used when interpreting the claim becomes important because the cited prior art discloses a spirally wound material.

The Board considers that there is a need for a referral to the Enlarged Board of Appeal because it considers that there is a divergence in the case law of the Boards of Appeal and national/multinational case law. The Board refers to T 169/20 and T 1473/19 as allegedly showing this diverging case law.

In T 169/20, the Board states that “the support of the description for interpreting the claims should only be resorted to in the exceptional cases where the subject-matter of the invention and/or its technical context needs to be clarified”.

In T 1473/19, the Board states that “the description and the drawings provide context-specific information about the claimed subject-matter. Taking this information into account when interpreting a patent claim from the perspective of the person skilled in the art makes claim interpretation more accurate, which contributes to legal certainty; all the more so if, as is often the case, patentees use terms idiosyncratically in the claims”, but also that “Moreover, while it cannot be ruled out ab initio that a certain claim feature may, when interpreted in light of the description and the drawings, have a different meaning than it would have when interpreted in isolation, it would be at odds with the principle of the primacy of the claims if this allowed claim features to be defined in the description at will, including in ways which are not at all compatible with the feature’s ordinary meaning. The primacy of the claims therefore also limits the extent to which the description may serve as a dictionary for the terms used in the claims”.

The Board in T 0439/22 also states that the referral is important because “a narrow interpretation of the claim language ignoring a definition given in the description would also conflict with a broader interpretation by national courts or the UPC when having to deal with the granted claim later during the life of the patent”.

The Enlarged Board of Appeal will accept the referral only if it considers the above as actually being sufficiently diverging case law to justify a referral.

The issue of whether the description affects the interpretation of what is otherwise considered to be a clear claim is relevant also in relation to the tightened EPO requirement to adapt the description to the granted claims (where according to the EPO Guidelines, embodiments that are no longer covered by the claims must be deleted from the description, or the fact that such embodiments are not covered by the claims must be prominently stated). This is a problematic requirement, since it is often not straight-forward to identify whether an embodiment is in fact covered by the claims, and any errors made in this regard may limit the scope of the claims in an unjustified way. This is especially true if the outcome of the referral in T 0439/22 is that the description is to be taken into account even when interpreting a claim that contains an allegedly clear wording.

In T 1989/18, the Board concluded that there is no legal basis for insisting on amendment of the description when the applicant refuses to make the amendment. The Examining Division had refused the application on the basis of Article 84 EPC, which states that the claims “shall be clear and concise and be supported by the description”. However, the Board did not consider Article 84 EPC (or any other part of the EPC) to provide legal basis for requiring amendments to be made to the description.

In T0056/21, the applicant refused to delete “claim-like clauses” in the description, and the Examining Division therefore refused the application.  The same Board as in T 1989/18 has proposed a referral to the Enlarged Board of Appeal because of diverging case law “on the issue of whether the adaptation of the description can be required under Article 84 EPC in case of inconsistencies in scope between the subject-matter claimed and the invention disclosed in the description” (other Boards of Appeal have not reached the same conclusions as this Board did in T 1989/18).

Since the applicant has agreed to the referral, it is likely that a referral will be made. However, as above, the Enlarged Board of Appeal will accept the referral as admissible only if they consider the case law to be sufficiently diverging to justify a referral. The current requirement to adapt the description to the granted claims is problematic, as it may affect both claim interpretation and the scope of protection under the doctrine of equivalents in subsequent infringement proceedings. A decision from the Enlarged Board of Appeal would hopefully clarify to what extent adaptions to the description is really required in order to get a granted European patent.

If the Enlarged Board of Appeal accept this referral is admissible, it may have a suspensive effect on proceedings that depend entirely on the outcome of the referral. An applicant that is unhappy with a requirement from the examining division to amend the description to conform to the claims, for instance by disclaiming certain examples, may be able to secure a suspension of proceedings.

To find out more, please contact the author or your usual Barker Brettell patent attorney.