Background
We recently reported on the Enlarged Board of Appeal’s Decision in G 1/24 that made it clear that the description and drawings must be consulted when interpreting the claims. There was also an indication that the European Patent Office wanted to ensure harmonisation with the decisions of the Unified Patent Court.
As expected, the Decision in G 1/24 precipitated a new referral to the Enlarged Board of Appeal: in G 1/25, the Enlarged Board has been asked to provide guidance as to whether the description must be revised in light of amendments to the claims. Presumably the Enlarged Board will continue to seek harmonisation with the Unified Patent Court, and so recent Decisions of the Unified Patent Court might provide an indication as to the outcome of G 1/25.
Summary
The Unified Patent Court has issued a couple of Decisions this year that suggest the Enlarged Board may decide G 1/25 in a way that allows the European Patent Office to continue its current practice. Namely, that the European Patent Office will, in most cases, request amendments to the description in light of amendments to the claims. In addition, we may see more pressure to delete embodiments from the description that are no longer within the scope of the claims.
Agfa v Gucci
May saw a Decision issue from the Hamburg local division of the Unified Patent Court in Agfa v Gucci. Agfa’s patent concerned printing on leather goods. According to the patent, a base coat is first applied to the leather and then a colour image is inkjet printed on top of the base layer.
The patent described different embodiments. Some embodiments used an achromatic base layer (i.e. without colour – white and black and all the greys in between, although black was specifically excluded by the claim). Other embodiments used both achromatic and chromatic pigments to yield base layers that were, for example, off-white, ivory, pale clay or pale yellow.
Before grant of the patent, the claims were amended to require a base layer that is an achromatic colour other than black. However, the description of embodiments to base layers with both achromatic and chromatic pigments remained in the granted patent.
The Court followed the principle set out in G1/24 and in another Unified Patent Court case (10x Genomics v NanoString) to interpret the claims in light of the description. The Court concluded that the description and original claims distinguished between chromatic and achromatic. Further, since the term chromatic was deleted from the claims, the claims should be interpreted to cover only achromatic base layers. Essentially, the Court rejected Agfa’s arguments that the claims should cover base layers with small amounts of chromatic pigment resulting in off-white base layers (i.e. the embodiments they described as chromatic in their patent).
Of most relevance to the present discussion is the Court’s comment that, “There are several passages mentioning “chromatic” in the specification of the patent that should have been deleted … It is immediately apparent that the specification is not consistent with the granted claims.”
Nonetheless, the Court had no issue concluding that the chromatic embodiments did not fall within the scope of the claims according to the interpretation they adopted. This weakens the argument that there is a need for unclaimed embodiments to be deleted, and perhaps it is more a matter of “it would have been better if they were deleted”.
N.J. Diffusion v Gisela Mayer
August saw a further Decision issue, this time from the Paris local division of the Unified Patent Court in N.J. Diffusion v Gisela Mayer. The patent concerned a wig in which two parts could be arranged relative to each other in different ways. One embodiment described the two parts placed edge-to-edge. Another embodiment described the two parts placed to overlap (to be in superposition).
The claims were amended before grant to refer to just the edge-to-edge arrangement in order to overcome prior art. Both embodiments remained in the description of the patent though. In the Court case, the patentee argued that the claims should be interpreted to cover both embodiments as both would solve a problem described in the patent. However, the Court found that the claim must be interpreted to cover only the edge-to-edge embodiment in view of the amendment made during prosecution.
The Court referred to the earlier decision in Agfa v Gucci while stating that the addition of the words “placed side by side” in claim 1 should have led to the deletion of the “superposition” embodiment from the description. So, deletion of the excluded embodiment was suggested as the correct approach once more.
Discussion
It seems that the Unified Patent Court believes that description of embodiments falling outside of the scope of the claims should be deleted. This means that the EPO may follow suit to ensure harmonisation.
This approach to require the deletion of excluded embodiments may not always be as useful as it seems. An alternative is to amend the description to state unambiguously that an embodiment is not within the scope of the claims. Potentially, this could make interpretation of the claims easier as such an amendment would provide additional information in describing an example of what the claims should not be interpreted to cover. Patentees may not want to make such an explicit admission of a limit to the scope of protection and may prefer to delete excluded embodiments in the hope ambiguity may remain. The best approach is likely to be a balance between the desire for broad scope of protection and the need to differentiate over prior art and hence vary from case to case.
Also, in some situations it would be very difficult to remove description of excluded embodiments without giving rise to clarity issues. For example, some patents describe a first embodiment in detail. Then, further embodiments are introduced by saying features shared with the first embodiment will not be described again for the sake of brevity. If prior art similar to the first embodiment is found, an amendment of the claims may be required that excludes the first embodiment. In this case, simply deleting the description of the first embodiment would also remove the description of many of the features of the further embodiments. Hence, a different approach would be required.
The two cases discussed above concern a specific situation where an embodiment is excluded from the scope of protection due to amendment of the claims. G 1/25 raises questions regarding description amendments that are more general though.
It seems likely that a more general principle will be followed where amendments will be required to ensure the description does not put the correct interpretation of the claims into question. This may include a preference for the deletion of inconsistent parts of the description (including individual features as well as complete embodiment). It remains to be seen to what extent the European Patent Office will allow alternative amendments, such as adding an unambiguous statement that certain features do not fall within the scope of the claims.
Conclusion
When amendment of the claims leads to an embodiment being excluded from the scope of protection, the Unified Patent Court have indicated that the excluded embodiment should be deleted before grant. It seems likely that the European Patent Office will follow this lead.
More generally, the principle of ensuring that the description does not put the correct interpretation of the claims into question is likely to be applied by the European Patent Office. This may include a requirement for deletion of inconsistent parts of the description, although the European Patent Office may allow other approaches such as adding an unambiguous statement that certain features do not fall within the scope of the claims.
We will continue to monitor and to report on the Enlarged Board of Appeal’s consideration of G 1/25.
For the time being, we will continue to prepare carefully drafted patent applications that provide sound basis to allow flexibility when amending during examination before the European Patent Office.
Where applications are filed with the European Patent Office at the end of the priority year, amendments can be made to the patent specification. We offer a pre-filing review service where we can suggest amendments to address any potential issues specific to the European Patent Office. We also offer this service before filing elsewhere when a later filing in Europe is contemplated. Examples include PCT filings (where regional phase entry is likely to happen after the priority year expires) and first filings (where securing a priority date for any amendments is desired).
For further advice, please contact Nigel Tucker or your usual Boult adviser.
