11 Nov 2020 | IP-Update

"Congratulations, the patent is being granted." Aspects to be considered in view of this good news.

As part of the EPO's "Early-Certainty" initiative, European patent examiners are becoming increasingly proactive in the elaboration of the text for grant. There is a tendency for examiners to incorporate amendments into the application text themselves in order to provide the applicant with a text that is presumably ready for grant. While this examiner proactivity is in principle welcome, it should be treated with caution. Even amendments that are not made by the applicant should be critically examined and questioned. This applies not only to amendments to the claims, but also to amendments to the description.

Before a European patent is granted, the applicant must agree to the text intended for grant. The European Patent Office (EPO) may not decide to grant a patent without the applicant's consent. If the EPO's examining division has a favourable opinion on the subject-matter of the application, it will propose a text which it considers to be suitable for grant and which must be agreed by the applicant in order for a patent to be granted.

The Examining Division's proposal often contains amendments to the text of the application as last filed by the applicant. As part of the EPO's early-certainty initiative, patent examiners are becoming increasingly proactive in the grant procedure. Where examiners consider that the patent application still needs to be adapted in order for being fully acceptable for grant, they are increasingly prone to incorporate amendments into the description and even the claims. Such amendments are introduced into the text proposed for grant by the examiners themselves. These amendments are indicated in the so-called Druckexemplar which applicants receive as an annex to the Communication of intention to grant under Rule 71(3) EPC.

This pro-activity of patent examiners in promoting the granting procedure will generally be welcomed by most applicants. By introducing amendments themselves, examiners can present to the applicant an application text that is in principle suitable for grant, thereby avoiding further iterations between the Office and the applicant or even oral proceedings. The applicant can then have the application granted on the basis of the proposed text simply by agreeing to it.

It should be noted, however, that the EPO accepts no liability for amendments proposed or introduced in the application by patent examiners. If the applicant agrees to the amendments proposed by the patent examiner, they are deemed to have been made by the applicant himself. Any legal disadvantages resulting from such amendments are therefore solely attributable to the applicant. Therefore, the Druckexemplar must always be examined carefully. Applicants are well advised to always have any discrepancies in the Druckexemplar over the lastly filed text of the patent application examined by a patent attorney and to question them if necessary. Of course, this applies in particular - but not only - to amendments of the claims. Amendments to the description can also be critical and should not be systematically underestimated.

Amendments made by the examiners themselves often concern formal amendments to the description, for example to delete superfluous or inadmissible text passages which have no connection with the invention.

However, there is a growing tendency among examiners to amend the description also to acknowledge the prior art cited in the examination procedure in the description (as required by Rule 42(1)(b) EPC) and to adapt the content of the description to the subject-matter of the claims to be granted (as required by Rule 42(1)(c) EPC). For example, if features of a dependent claim are included in an independent claim, the Office will normally require that such features are not indicated in the description as mere optional or preferable features, but as features of the invention in its broadest sense. If the description discloses embodiments which are no longer in line with the claims due to claim limitations, the Office demands that either the corresponding description passages are deleted or that it is explicitly stated that they do not represent embodiments of the invention but only explanatory "examples" (see decision T 1808/06, R. 2).

These "adaptations" of the description, which are sometimes carried out by patent examiners and which might at first sight not appear to be harmful, may in certain circumstances prove to be detrimental to the applicant, particularly as they may affect the scope of protection defined by the patent.This risk must be assessed in the light of the relevant case law, both at European and national level.

Acknowledging state of the art in the description

The inclusion in the description of information on the relevant prior art documents cited in the course of the examination procedure should not be done too lightly. Even these indications, which might be considered irrelevant by many, should be checked by a patent attorney when they are introduced into the application text at the examiner's initiative:

In decision T 2450/17, the EPO Technical Board of Appeal confirmed the Opposition Division's view that an amendment to the description made during the grant procedure for the purpose of citing a prior art document may constitute added subject-matter contrary to Article 123(2) EPC, if the added information has a broadening effect with respect to claim interpretation and with respect to the subject-matter of the application. Citations of the prior art are thus capable of giving rise to added subject-matter issues which, in worst case scenarios, might lead to the revocation of the patent after grant.

In the decision X ZR 16/17 of 27 November 2018 - Scheinwerferbelüftungssystem, the German Federal Supreme Court ruled that the assessment of a document of the state of the art in the description can be decisive for the interpretation of the claim. If an independent claim is formulated in the so-called two-part form (i.e. divided into a preamble and a characterising part by "characterised in that") and if the disclosure of a document of the state of the art is equated in the description with the preamble of the claim, the features of the characterising part should, in case of doubt, not be interpreted as being disclosed in that document. In cases in which the interpretation of terms may be decisive in determining whether the claimed subject-matter is anticipated by a prior art document, it may thus be advantageous for the applicant to draft the claim in the two-part form specifically with regard to that very document and to make express reference to it in the description. This is an interesting possibility for applicants to remove any conceptual ambiguity in their favour.

A discussion about the state of the art in the description can thus have a positive or negative effect on the scope of protection of the patent to be granted. Where such information is included in the text of the application at the initiative of a patent examiner, it should be carefully examined to ensure that it does not prejudice the interests of the applicant

Adaptating the description to the subject-matter of the claims to be granted

Likewise an adaptation of the description aimed at indicating certain embodiments as not belonging to the claimed invention may be excessively prejudicial to the scope of protection conferred by the patent. Where such amendments are made by the examiner, it will always be necessary to check that they do not classify more than strictly necessary as "not belonging to the invention".

In addition, care should be taken to ensure that no embodiments remain in the description which are to be regarded as invading the equivalence scope of the claims. According to the current case-law of the German Federal Court of Justice on equivalent infringement, embodiments which are disclosed in the description but are not covered by the claims are excluded from the equivalence scope of the claims for legal reasons. In such cases, the case law generally assumes that the applicant has made a deliberate selection decision against the non-claimed variants (BGH decision X ZR 76/14 of 26.08.2016 - V-förmige Führungsanordnung, marginal no. 27), for which such variants are deemed as not protected.

In the text of a patent application to be granted, care should therefore be taken to ensure that the description does not provide a basis for asuming such a „selection“, if this is not actually meant. To avoid such an assumption, care should be taken in particular to ensure that the patent description does not mention any embodiments which are not claimed. It remains unclear to date whether relabelling an invention variant originally described as an "embodiment" as an "explanatory example" upon request of the Examining Division precludes the adoption of a selection among several embodiments in the sense of German case law on equivalent infringement, even though this seemed to be hinted at in the Pemetrexed decision (cf. BGH decision X ZR 29/15 of 14 June 2016 - Pemetrexed, marginal no. 68).

In such cases, it may therefore be worth considering as a matter of precaution whether embodiments which are potential equivalent forms of infringement should rather be deleted from the application text so that they are not mentioned in the patent specification and can thus remain within the scope of equivalence of the patent to be granted. This is likely to apply in particular in situations in which the embodiments to be indicated in the description as not covered by the claims at the request of the examiner would be possibly patentable by themselves (see BGH decision X ZR 29/15 of 14 June 2016 - Pemetrexed, marginal no. 67). Alternatively, an explicit reference in the description that the excluded invention variants are merely excluded from the literal scope of protection may be advisable  (e.g. "Figure 1 shows an example (where previously "an embodiment." was written) that does not belong to the invention as literally defined in the claims").

If the description is adapted by the examiner to the subject-matter of the claims, the amendments should always be carefully examined to check whether they classify as mere explanatory examples embodiments which are possible equivalent infringement forms as mere examples. In these cases it may be advantageous for the applicant to delete these embodiments completely in view of the applicable case law, in particular with respect to their interests in Germany. This is a further reason why even such seemingly harmless adaptations of the description should be subject to a thorough examination by a patent attorney.

TAKE AWAYs:

- Amendments made to the text intended for grant on the Examining Division's initiative should always be carefully examined by a patent attorney and, if necessary, questioned.

- Amendments to the description can also influence the scope of protection. They should therefore not be systematically considered as irrelevant.

- When acknowledging state of the art documents in the description, evaluative statements which may affect the interpretation of the claim should be avoided.

- It should be decided on a case-by-case basis whether the two-part claim is appropriate. In the case of critical documents of the state of the art, a two-part version of the claim may be advantageous.

- When adapting the description to the subject-matter of the claims, attention should be paid to the consequences for the scope of protection of the patent of indicating an embodiment as "not belonging to the claimed invention ". This analysis should also take into account the possible equivalence scope of the claims.

Author: Dr. Mario Araujo