A decision has been published for T 1043/24 that deals with whether amendments of the description is required to ensure consistency with amended claims. This is the main issue currently under consideration by the Enlarged Board of Appeal in G 1/25.
The decision is consistent with what is expected to be decided in G 1/25 – namely that description requirements are required to correct inconsistencies with the claims which most often arises when narrowing amendments are made to the claims during prosecution. A further point of interest is that the Board of Appeal in T 1043/24 indicated that it is sufficient to add text to make it clear when an embodiment does not fall within the scope of the claims. This suggests deletion of the unclaimed embodiment should not be required.
Background
There has been a flurry of activity in claim interpretation and its consequences for the description with three referrals to the Enlarged Board of Appeal. G 1/24 has been decided, with the headline being that the description must be consulted when interpreting the claims. This arose during a consideration of novelty and inventive step of the claims.
A recent referral in G 1/26 asks whether the same considerations apply when assessing compliance with added subject matter requirements. This referral also asks for further guidance on what “consulted” means. This follows several more recent decisions in which a “consultation” of the description has seen little if any influence on the established principle of the primacy of the claims. However, this referral has yet to be admitted by the Enlarged Board of Appeal, and there are procedural reasons why it may not. That said, the Enlarged Board of Appeal may want to take the opportunity to spell out what they meant by “consulted” if it is felt the subsequent decisions failed to follow the intention in the G1/24 decision. Our recent article discusses this referral.
A further referral arose in G 1/25 that asked whether it should be a requirement to remove inconsistencies in the description arising from amendments to the claims. This referral was admitted, the EPO President submitted comments, the Enlarged Board of Appeal issued a preliminary opinion, and oral proceedings have now taken place. We are awaiting the formal decision, but it looks like the answer is going to be yes, amendments are required in this circumstance to meet the clarity requirements of Article 84 EPC.
No stay of T 1043/24?
We often see stays of appeal proceedings where the decision may be influenced by the outcome of a case pending before the Enlarged Board of Appeal. However, in T 1043/24, neither the patent proprietor nor the opponent requested a stay and, as the Board noted, it is in their discretion whether to stay the proceedings.
Description amendment required
The Board of Appeal in T 1043/24 have followed the expected decision in G 1/25 and concluded that the amendment was required to remove the inconsistencies in the description that arose from claim amendments. The Board also indicated that Article 84 EPC was the basis for this requirement. So, their decision is very much in tune with what we have seen from the proceedings in G 1/25.
Form of the amendment
An interesting point arose in a discussion of the form of the amendment required. Namely, should amendments delete inconsistent subject matter from the description, or is it enough to provide a clear indication that the subject matter does not fall within the scope of the claims?
The issue arose from an amendment to claim 1 that previously contained an alternative in either a liquid or powdered flavouring composition. The allowed claim had the liquid option deleted such that a powdered flavouring composition was required.
In proceedings before the Opposition Division, the patent proprietor proposed an amendment to say that an embodiment having a liquid flavouring composition was an aspect of the description not claimed. This was rejected by the Opposition Division on the basis that the language used was ambiguous and implied that the embodiment was still a part of the invention without being claimed.
This reasoning was rejected by the Board of Appeal who said that it was clear from the context of the adapted passages in the description and the amended claims that the embodiment having a liquid flavouring composition was not claimed. This was found to be enough to meet the requirements of Article 84 EPC.
This is good news as the inclusion of such “unclaimed embodiment” text would be very much welcome over the alternative of requiring deletion of the embodiment which can be very problematic. For example, some patents describe a first embodiment in detail and then the following embodiments describe only additional features to avoid repetition. Deletion of the first embodiment would also remove the description of many of the features of the further embodiments. Another alternative of trying to move subject matter from the first embodiment into a later embodiment runs the risk of added subject matter issues. Saying that the first embodiment is outside of the scope of the claims seems by far the best solution.
Takeaway
Nobody should be surprised if the imminent decision in G 1/25 directs us to ensure the description is amended to remove any inconsistencies with amended claims. The EPO have been working to this principle for the most part for many years now and, as this latest decision shows, continue to do so even as we wait on the G 1/25 decision.
Hopefully, the Enlarged Board of Appeal will provide an implicit endorsement of the finding that a statement saying an embodiment is not claimed is a sufficient amendment. The Enlarged Board of Appeal have provided fewer hints as to what to expect in this regard, so we will have to wait a bit longer for an answer.
For further details, please contact Nigel Tucker or your usual Boult advisor.
