Mandatory description amendments at the European Patent Office (G1/25): “Let’s start at the very beginning, a very good place to start”

Overview

Much of the European patent attorney profession, as well as users of the European Patent Office (EPO) system around the world, are awaiting the outcome of the referral to the Enlarged Board in G1/25. Opinions are divided, even in the amicus curiae filed to date, as summarised nicely by IPKat in their recent article “G 1/25 (description amendments) amicus curiae: The battle lines are drawn”.

As FICPI points out in their amicus curiae, no other major patent office requires description amendments for conformity with the allowed claims. Yet the EPO has been committed to this since the advent of the EPC. The focus now seems to be on provisions such as Article 84 EPC and Article 69 EPC as possible legal basis, and this is a shift from R48(1)(c) EPC which was the legal basis originally relied on by Examiner’s at the EPO for mandatory description amendments. Board 3.3.04 in T 1989/18 closely considered R48(1)(c) EPC some years ago and found it difficult to conceive that the legislator intended this to provide a ground for refusal. It is hard to disagree with their reasoning, which raises the question: if the original justification is without merit, have the last 45 years of EPO practice just been a big misunderstanding?

Back in the summer of ‘79

In January 1980, the EPO granted its first patents, the very first being EP patent number 0000010 for a device that determines if coins placed in parking meters are authentic. The communication of intention to grant the patent was the first official communication from the EPO in that case and there were no description amendments.

Although many of the files for early patents granted under the EPC are marked as destroyed on the EPO Register, a survey of those available for other patents granted in January 1980 shows that Rule 34(1)(c) EPC 1973 was the legal basis cited by Examiners in requests for description amendments.

• EP patent number 0000012

The patent was directed to bypass valve for pumps and heating installations. New claims 1 to 3 were filed on 11 January 1979 and new claim 1 was restricted to a valve in which an annular flow cross-section is present in all valve positions, and in which the housing interior narrows and expands in the region of the end positions of the larger disc. However, the embodiments of Figures 1 and 2 and 5 to 7 did not exhibit these features. In relation to the figures, the Examiner noted:

• EP patent number 0000891

The patent was directed to synergistic combinations of penicillins and antibiotic agents containing them. There was only one communication from the examining division after the applicant requested examination and before the communication of intention to grant the patent. In that case, no amended claims had been filed but the Examiner noted:

Rule 34(1)(c) EPC 1973 is the predecessor to current Rule 48(1)(c) EPC and is based on Rule 9 PCT

Rule 34(1)(c) EPC 1973 is the predecessor to current Rule 48(1)(c) EPC and is cross referenced to Article 78 EPC (relating to filing requirements of a European patent application) and Article 93 EPC (relating to publication of the European patent application). It states:

Rule 48

Prohibited matter

(1) The European patent application shall not contain:

(a) statements or other matter contrary to "ordre public" or morality;

(b) statements disparaging the products or processes of any third party or the merits or validity of the applications or patents of any such party. Mere comparisons with the prior art shall not be considered disparaging per se;

(c) any statement or other matter obviously irrelevant or unnecessary under the circumstances.

(2) If the application contains matter prohibited under paragraph 1(a), the European Patent Office may omit such matter from the application as published, indicating the place and number of words or drawings omitted.

(3) If the application contains statements referred to in paragraph 1(b), the European Patent Office may omit them from the application as published, indicating the place and number of words omitted. Upon request, the European Patent Office shall furnish a copy of the passages omitted

According to the EPO Guidelines A.III.8, it is the Receiving Section that makes a cursory examination of whether the application contains statements or other matter contrary to "ordre public" or morality under R48(1)(a) EPC. Similarly, the EPO Guidelines state that disparaging statements under R48(1)(b) EPC may be picked up by the Receiving Section’s cursory examination but the matter should be left for the examining division in cases of doubt. This is consistent with the fact that Rule 48 EPC is based on Article 21(6) and Rule 9 PCT, which provide that the international application may not contain matter contrary to morality or public order, disparaging statements or obviously irrelevant or unnecessary matter. In this regard, R48(1)(c) EPC mirrors that of Rule 9(iv) PCT:

Rule 9 PCT

The international application shall not contain:

…

(iv)  any statement or other matter obviously irrelevant or unnecessary under the circumstances

Any such matter may be omitted from the publication of the international application.  

R48(1)(c) EPC refers to “obviously irrelevant or unnecessary” matter as being prohibited in a patent application and Board 3.3.04 in T 1989/18 closely considered this and found it “difficult to conceive that the legislator intended to … provide a ground for refusal based on the inclusion of merely "irrelevant or unnecessary" matter” (Reasons 11). It is hard to disagree.

Firstly, according to the wording and history of Rule 48 EPC, it does not pertain to patent specifications.

Secondly, (a) to (c) of Rule 48(1) EPC are in the order of their offensiveness, ranking from high to low. This is reflected in paragraphs (2) and (3) of Rule 48 EPC. Board 3.3.04 in T 1989/18 noted that at “the Munich diplomatic conference, there was general acceptance that the application should not be refused even if the application as filed contained statements or other matter contrary to "ordre public" or morality. Moreover, Rule 48(3) EPC remained optional (see Minutes of the proceedings of Main Committee I of the Munich Diplomatic Conference for the setting up of a European System for the Grant of Patents, document M/PR/I, No. 2225 to 2236). It is therefore difficult to conceive that the legislator intended to impose more severe sanctions on less offensive matter, in particular to provide a ground for refusal based on the inclusion of merely "irrelevant or unnecessary" matter (see also the doubts expressed in decision T 1065/99, point 7)” (Reasons 11).

Conclusion

The examples given above raise the question of whether the last 45 years of EPO practice is based on an initial misapplication of R48(1)(c) EPC (then Rule 34(1)(c) EPC 1973) from day 1 of the EPC. It remains to be seen from the decision in G1/25 whether Article 84 EPC or Article 69 EPC might now rescue the legitimacy of this practice, or whether the EPO might finally put this practice to bed for good.