Résumé de EPC2000 Art 084 pour la décision T2391/18 du 19.04.2023

In T 2391/18 the appellant (opponent) had argued that the description had to be adapted to amended claim I of the main request, since there was an inconsistency between said claim and the description. In particular, paragraph [0017] of the description referred to a weighing device which provides for a support structure, whereas amended claim I specified a weighing device coupled with a support structure. The appellant had also put forward the argument that such an inconsistency, even if - as observed by the board - it was already present in the granted version, had to be addressed by adapting the description to the wording in the claim. The reason for the alleged obligation to remove such an inconsistency was seen in a possible lack of support of the claims by the description within the meaning of Art. 84, second sentence, EPC. The board stressed that Art. 84 EPC was not a ground for opposition. Therefore, such amendment to the description was not "occasioned by a ground for opposition" within the meaning of R. 80 EPC. Moreover, the board considered that the conclusions of the Enlarged Board in G 3/14 had to be taken into consideration in this context. The allegedly required amendment to paragraph [0017] related to an alleged inconsistency that already existed in respect of a feature present in the granted claims. Therefore, even without the allegedly required amendment to the description, there was no reason for the board (or the opposition division) to come to the conclusion that the requirements of the Convention (in particular the requirements of Art. 84 EPC) within the meaning of Art. 101(3)(a) EPC were not fulfilled. The reason for this was the conclusion of the Enlarged Board in G 3/14, in which the Enlarged Board found that when considering whether, for the purposes of Art. 101(3) EPC, a patent as amended meets the requirements of the EPC, the claims of the patent may be examined for compliance with the requirements of Art. 84 EPC only when, and then only to the extent that the amendment introduces non-compliance with Art. 84 EPC. According to the board, in a case such as the present one, where the amendment to the claims did not introduce an issue of non-compliance with Art. 84 EPC, an opposition division or a board of appeal could not examine the claims of the patent for compliance with the requirements of Art. 84 EPC, including the requirement of "support by the description". There was thus no reason for the board to object to the wording of paragraph [0017] of the description.