Key decisions at the EPO and UPC - November edition

Part 1 - T 0056/21 – Adapting the description

In examination of a patent application, neither Art. 84 nor R. 42, 43 and 48 EPC provide a legal basis for requiring that the description be adapted to match allowable claims of more limited subject-matter.

Summary

The EPO have always requested some amendments to the description of an application before grant to adapt it to the claims which will be granted by removing statements that might contradict the claims or suggest a different scope of protection.

The instant decision addresses the refusal of European patent application No. 15700545.5 by the Examining Division, which was based solely on the grounds of non-compliance with Art. 84 and 97(2) EPC. The core issue revolved around the requirement for the description of the patent application to be adapted to the claims, specifically whether Art. 84 EPC provides a legal basis for objecting to inconsistencies between the description and the claims, and for requiring the removal of such inconsistencies through amendment of the description.

Ultimately, the Board decided to set aside the decision of the Examining Division and remitted the case with the order to grant a patent based on the main request on file.

The reasons/decision

A key point taken from the outset by the Board is that the EPO's Guidelines for Examination (from which Examiners have derived their authority to request adaptation of the description) are not binding on the Boards of Appeal and do not form a part of their assessment. In turn, this means the Board of Appeal's Decision overrules the Guidelines. The Board go on to review the function of the claims and description, as well as considering 140 EPO Board of Appeal cases and decisions from The Swiss Federal Supreme Court, The German Federal Court of Justice, The Court of Appeal of England and Wales, and the Unified Patent Court. In brief, they have left no stone unturned.

Their conclusions are:

1. Art. 69 EPC and the protocol thereto (which defines how the description can be used to interpret the scope protection), and thus far a key citation in requiring amendment of the description, are not applicable in grant proceedings before the EPO. The Decision makes clear Art. 69 EPC is only a matter for the Courts when considering the enforcement of a patent (For further reading, we recommend recent BoA decision T 1628/21on the application of Art. 69EPC in procedures before the EPO when it comes to interpretation of the claims).

2. The requirements of Art. 84 EPC (clarity) and R. 43 EPC (form and content of the claims) are to be assessed independently of the assessment of the scope of protection (which is a matter for Art. 69 EPC post-grant).

3. Art. 84 EPC and R. 43 EPC do not provide a legal basis for requiring adaptation of the description to the claims before grant.

Overall, the Decision comprehensively, and strongly, dismisses every basis for requiring amendment of the description which was put before them.

Lastly, there were a number of decisions from the EPO Boards of Appeal concerning this topic, which reached a range of decisions from confirming the practice to completely disagreeing. In view of this, T0056/21 had proposed a referral to the Enlarged Board of Appeal to resolve the conflict.

The Board, however, also firmly dismisses the need for a referral to the Enlarged Board, stating in no uncertain terms that there seems to be no possible basis for requiring adaptation of the description. They state "If the legislator considers it justified to require that the description be aligned with the subject matter of the claims held allowable, the legislator should provide for the respective legal basis by way of amendment of the EPC" and "The lack of such a provision appears to be intentional."

Take Home Message

The EPO's argument up until now was that a difference in content of the description and claims could lead to doubt about the scope of protection sought such that any differences had to be removed. There were very few attorneys or lawyers who agreed with this, and it was very hard to find any examples of where any difference had caused a problem in subsequent proceedings concerning the patent.

In recent years, the requirement for amendment of the description has become stricter and more expansive. It is now common for Examiners to request the whole description is amended to remove subject matter falling outside the claims. This is clearly an extremely onerous process, requiring a great deal of time to properly assess every bit of text.

The instant decision presents a very significant change in the requirements for adapting the description, finally provides legal certainty on this issue and will likely make the applicant's task a lot easier.

Part 2 – UPC round-up

The UPC is in full flow, both at first instance and appeal, and with a multitude of recent decisions, we take the opportunity this month to run through some key decisions and core legal developments arising this month.

UPC’s first infringement decision on equivalence (Hague Division)

Remarking on the lack of guidance in the UPC Agreement, the Hague has become the first division of the UPC to find infringement based on equivalence, formulating a test based on national caselaw and adopting an approach often used in the Netherlands.

The approach was based on the following questions (implemented after establishing that there was no literal infringement):

• Technical equivalence: Does the variation solve the same problem and perform the same function as the patented invention?
• Fair protection: Is extending protection proportionate to the patentee's contribution, and is it obvious to the skilled person how to apply the equivalent?
• Legal certainty: Can third parties reasonably foresee that the patent covers equivalents?
• Novelty and inventiveness: Is the accused product novel and inventive over prior art (no Gillette/Formstein defense)?

After finding infringement, and rebutting the defendant’s invalidity attacks, the UPC awarded an injunction, and publication of the decision, including the issuance of a product recall letter, showcasing a broad suite of remedies available to the successful patentee. [Plant-e BV and another v Arkyne Technologies SL, UPC_CFI_239]

On the subject of equivalence, another decision issued this month highlights a case to watch, namely OrthoApnea. The recent decision in this case issued by the UPC Court of Appeal concerned a procedural point, clarifying that the patentee’s introduction of equivalence arguments in its Statement of Reply was not an amendment of its case that required leave of the court. Instead, the UPC Court of Appeal held this was simply a responsive argument to matters raised in the Defence and did not materially change the nature or scope of the dispute. While not a substantive decision of equivalence, the admission of the patentee’s arguments in this respect puts on the horizon a potentially further decision on the merits based on equivalence. The main proceedings in this case are running in the Brussels local division and will hence provide an opportunity for comment on the approach adopted by the Hague division in Plant-e (or perhaps even any appeal arising therefrom). [OrthoApnea S.L. & Vivisol B BV v [individual respondent] – UPC Court of Appeal, 21 November 2024, Case no. UPC_CoA_456/2024]

Court of Appeal overturns “self-pinning out” decision

AIM Sport Development v Supponor was one of the first cases launched in the UPC (Helsinki local division) and sought far-reaching provisional measures. But it quickly fell at the first hurdle, as the court deemed that an earlier infringement action resulted in the patentee “pinning itself out” – i.e. it was unable to withdraw its opt-out.

The key issue was whether the UPC’s transitional provisions applied as the patentee’s (AIM) earlier infringement action preceded the UPC’s transitional regime.

Following a fairly long period of appeal, this month saw the Court of Appeal’s answer: a reversal; the UPC’s transitional provisions do not apply in this scenario and so AIM could withdraw its opt-out and could have had (and now will have) parallel infringement actions running in the UPC and national courts.

While the core outcome is quite straightforward, the decision is also interesting with respect to its comments on how the UPC’s jurisdiction operates around opt-outs, as the general thrust of the decision (based on the parties’ submissions) is that the UPC does have parallel jurisdiction with national courts during the transitional regime unless an opt-out is filed. While this seems to have become the general consensus, some commentators take contrasting views and it will be interesting to see if any further decisions arise.

As for this case, AIM’s UPC patent infringement action will restart, albeit long after it was intended and presumably without any urgency to continue to seek provisional measures (which Supponer’s original challenge arguably therefore successfully dissipated).

Refusal of a PI and inability to amend claims (Milan local division)

In a denial of PI before the Milan division of the UPC in the field of medical devices, the patentee failed because it its patent was held more likely than not to be invalid.

The case proceeded with reasonable speed having been filed before the summer on 8 July, with the hearing held on 14 October and this decision issued just over a month later.

Procedurally of note, the respondent (EoFlow) filed a central revocation the day before the PI hearing, also in Milan. As well as a reminder of the Milan Central Division’s activation this summer, including its allocation of patents in this field, this provides another example of a respondent taking action to get full proceedings going in the UPC, while many PI applicants do not commence main infringements until a long while after commencing PI proceedings (and perhaps not at all in the event the UPC does not award a PI).

The most interesting aspect of the decision relates to the UPC’s approach to the allowance – and in this case refusal – to admit claim amendments / auxiliary requests (ARs) in an application for provisional measures. This has been a longstanding question about the UPC’s approach, including due to the absence of specific rules allowing ARs in this scenario. In this case, the patentee argued that ARs should be allowed under the scope of the PI applicant’s right to “change its case”. But the UPC rebutted this argument, taking a view that this provision was different, and that the allowance of ARs was clearly made out in other rules relating to main proceedings only; and therefore not in PI proceedings. Given the significance of this approach to PI applications, this issue will presumably now make its way to the UPC Court of Appeal. [Insulet Corporation v A Menarini Diagnostics srl UPC CFI NO 400/2024]

Access granted to unredacted documents

The Munich Central Division ruled in favour of granting access to unredacted documents, following an original provision of only redacted copies (due to objections by the Claimant's in the case).

The application was based on public interest, the documents' availability elsewhere, and specific professional motives, including insights into the "value of an action" concept in UPC proceedings.

The UPC held it was justified to allow full access, highlighting the balance between confidentiality and the right to information in these circumstances. This outcome is the culmination of a number of applications dating back almost 1 year. It remains to be seen if this example demonstrates the saga that non-parties will need to endure to achieve such an outcome, or whether the UPC might lower any of these hurdles or hasten the process. [Mathys & Squire LLP, UPC 75/2023]