Zusammenfassung von EPC2000 Art 084 für die Entscheidung T0438/22 vom 23.11.2023

In T 438/22 the board pointed out that there was no provision stipulating that examples within the meaning of R. 42(1)(e) EPC should not be in the form of claim- like clauses (i.e. in the form of one or more independent clauses followed by a number of clauses referring to previous clauses) at the end of or in another part of the description. There was no justification for deleting such examples just because they were drafted as claim-like clauses. They were to be treated like any other part of the description and thus, inter alia, must support the claims (Art. 84 EPC). It was not justified to unconditionally require their deletion from the description, contrary to what was stated in the Guidelines (F-IV, 4.4). Concerning the interpretation of the requirement of Art. 84 EPC that the claims must be supported by the description, the board disagreed with the findings of T 1989/18. The board also disagreed that R. 48(1)(c) EPC could not provide a legal basis for an obligatory adaptation of the description. On the contrary, the board agreed with the long-established case law of the boards that "supported by the description" meant requiring the entirety of the description to be consistent with any claims found to meet the requirements of the EPC (see T 1024/18, T 1808/06, T 2293/18, T 1399/17, T 2766/17, T 1516/20, T 121/20, T 1968/18, T 2685/19). According to the board, it was a general and overarching objective, and as such also a "requirement" of the Convention, that authorities, courts and the public interpreting the claims at a later stage should, as far as possible, arrive at the same understanding of the claimed subject-matter as the EPO bodies deciding on the patentability of the same subject-matter. The only tool for achieving this objective was the patent specification as the expression of a unitary legal title. The description, as an integral part of the patent specification, should therefore also serve this overriding objective, i.e. it should provide a common understanding and interpretation of the claims. If the description contained subject-matter which manifestly impeded a common understanding, it was legitimate to insist on its removal under Art. 84 and 94(3) EPC and R. 42, 48 and 71(1) EPC. Regarding the provisions of R. 48(1) EPC, including those of R. 48(1)(c) EPC, the board found that they were not to be regarded as merely optional guidelines but as mandatory and to be complied with for a patent to be granted on a European patent application. The board approved of the practice where instead of a direct removal, i.e. the deletion of the subject-matter not covered by the claims, a "removal" by way of an appropriate statement is made, leaving the technical disclosure unaffected. In the view of the board, this practice resulted in a correct and equitable compromise between the interests of the applicant to retain the disclosed subject-matter and the overall purpose of the description to facilitate claim interpretation and the common understanding of the claimed subject-matter. Moreover, the board refused the request for referral to the Enlarged Board of questions relating to the rejection of an application due to the usage of claim-like clauses. The appellant submitted, among others, that a decision of the Enlarged Board was necessary as the Guidelines would have to take into account a decision by the Enlarged Board, which "might put an end to the current discrepancy between the Guidelines and the case law". The board admitted that the wording of Art. 112(1)(a) EPC may appear to suggest that the removal of a discrepancy between the Guidelines and the case law could also be understood as "ensuring uniform application of the law" and as such be a good reason for an admissible referral. However, the Enlarged Board had no formal powers in this respect. According to the board, this could be inferred from Art. 112(3) EPC which made it clear that the formal binding power of the decision of the Enlarged Board was limited to the case before the referring board. The board concluded that a referral whose sole purpose was to correct the Guidelines and which was not necessary either for ensuring a uniform case law within the boards or for the board's decision was inadmissible. Such a referral could be perceived as an attempt to encroach on the President's powers under Art. 10(2)(a) EPC.