PP 2/21

Consultation on EPC and PCT-EPO Guidelines

IP Federation submission on the Guidelines for Examination in theEuropean Patent Office, March 2021 edition: Part F, Chapter IV – Claims(Art. 84 and formal requirements)
Introduction
The IP Federation represents the views of UK industry in IP policy and practicematters in the UK, Europe and internationally. Its membership of influential
IP-intensive companies has wide experience of how IP works in practice tosupport the growth of technology-driven industry and generate economic
benefit. Details of the IP Federation membership are given at the end of thissubmission.
The IP Federation welcomes the opportunity provided by the European PatentOffice (EPO) public online user consultation on the Guidelines for Examination in the European Patent Office (EPC Guidelines), March 2021 edition. Thissubmission focuses in particular on Part F, Chapter IV - Claims (Art. 84 andformal requirements), Section 4.3. It follows careful consideration in the IP
Federation Council and Patent Committee, and is based on our members’considerable experience of prosecuting and opposing European patentapplications, and of patent prosecution and litigation across the globe.
Summary
In a nutshell, the IP Federation objects to the changes made in the March
2021 edition of the EPC Guidelines which adversely affect an applicant’s
ability to include disclosure in the specification at their own discretion that
may not directly relate to the claimed subject matter but that may nonetheless be desirable. These changes are not necessary to solve any problem posedby the previous version of the Guidelines, have no support in EPO case law,
will create complications which will make the process of patent examinationin the EPO less efficient, will therefore give rise to delay, and will create
problems of interpretation in the litigation of European Patents.
The positions before and after March 2021
The previous version of the EPC Guidelines F-IV-4.3 states that any
inconsistency between the description and the claims must be avoided if it
throws doubt on the extent of protection, and therefore renders the claim
unclear or unsupported under Art. 84 EPC. However, the Guidelines go on tosay that if examples and technical descriptions, in the description or drawings, which are not covered by the claims, are presented not as embodimentsof the invention but as background art or examples useful for understanding
the invention, they are allowable and may be retained. This means thedescription can be amended by simple changes in wording, eg from "invention"
to “disclosure” or "embodiment" to "example", to remove any inconsistencies
so that the subject-matter may be retained.
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The previous version added that if apparatuses, products and/or methods inthe description and/or drawings which are not covered by the claims arepresented not as embodiments of the invention but as background art orexamples useful for understanding the invention, the retention of theseexamples may be allowed. This practice was both reasonable and helpful, notjust to applicants but to all who would try to interpret the specification.
By contrast, the new Guidelines F-IV-4.3(iii) inter alia require:“In addition, merely changing the wording "invention" to "disclosure"and/or the wording "embodiment" to "example", "aspect" or similar is
not sufficient to clearly state that this part of the description does not
fall under the scope of the claimed invention. It has to be explicitly
specified that this part of the description does not describe part of theclaimed invention.
Similarly, subject-matter in the description being excluded frompatentability needs to be excised, reworded such that it does not fallunder the exceptions to patentability or prominently marked as not
being according to the claimed invention.”
The previous practice was entirely appropriate, proportionate and efficient.
The new practice is not.
Lack of support for the new EPC Guidelines in EPO case law
The new Guidelines appeal for a basis in EPO Technical Board of Appeal caselaw, namely EPO Board of Appeal decision T 1808/06. In this, and later
decisions which cite it, the Boards of Appeal have found that, to avoid
inconsistencies in the specification, references to embodiments which falloutside the scope of the amended claims should normally be deleted, butthere has been no suggestion that an inconsistency could arise from thepresence of passages that are not presented as “embodiments of the presentinvention”. Neither has there been any suggestion that the practice before
March 2021 of changing the wording "invention" to “disclosure” or "embodiment" to "example" should not be allowable. It is not clear why such a longago case as T 1808/06 should now demand this change in practice, or indeed
how it supports it.
Effect of the new Guidelines
The practice under the Guidelines prior to March 2021 worked well and has
done for many years. By removing the opportunity of addressing certain
objections under Art. 84 through simple changes in wording, such as "embodiment" to "example", and introducing a new requirement for features to be“explicitly specified” or “prominently marked”, massively increases complexity and will inevitably lead to more rounds of amendment and delay. Thisis not an empty prediction; it is an everyday reality since the new Guidelines
began to be followed by Examiners ahead of the formal publication in March
2021. The problems are especially acute in the life sciences field.
There will also be serious consequences in the litigation of European Patents.
Under Art. 69 EPC, the description is used to interpret the claims. The newGuidelines and their requirement to “explicitly specify” will therefore have aprofound effect on claim interpretation in opposition and national litigation

PP02_21 Consultation on EPC and PCT-EPO Guidelines

Page 3 of 4proceedings. This issue is further complicated by the different applications of
the Doctrine of Equivalence across different jurisdictions.
Conclusion
The IP Federation objects to the changes made in the March 2021 edition of
new Guidelines F-IV-4.3(iii). They introduce a severe and unwarranted limitation on an applicant’s discretion to include disclosure in the specification
that, while it may not directly relate to the claimed subject matter, isnonetheless desirable from the applicant’s point of view. Provided the law
established by the EPC and its underlying Rules and Regulations is complied
with, it is not appropriate for the EPO arbitrarily to dictate how the applicant
should achieve this. As this submission has explained, the recent changes are
not necessary to solve any problem under the previous version of the Guidelines, have no support in EPO case law, will create complications which will
make the process of patent examination in the EPO less efficient, will giverise to delay, and will create problems of interpretation in litigation ofEuropean Patents. For all these reasons, The IP Federation urges the EPO toreconsider its amendments to EPC Guidelines F-IV-4.3(iii) and to restore theprevious version.
IP Federation
16 April 2021

PP02_21 Consultation on EPC and PCT-EPO Guidelines

IP Federation members 2021
The IP Federation membership comprises the companies listed below. The UK Confederation of British Industry (CBI), although not a member, is represented on the IP
Federation Council, and the Council is supported by a number of leading law firms
which attend its meetings as observers. The IP Federation is listed on the joint
Transparency Register of the European Parliament and the Commission with identity
No. 83549331760-12.
AGCO LtdAirbus
Arm Ltd
AstraZeneca plc
Babcock International Ltd
BAE Systems plc
BP p.l.c.
British Telecommunications plc
British-American Tobacco Co Ltd
BTG plc
Canon Europe Ltd.
Caterpillar U.K. Ltd
Cummins Ltd.
Dyson Technology Ltd
Eisai Europe Limited
Eli Lilly & Co Ltd
Ericsson Limited
Ford of Europe
GE Healthcare
GlaxoSmithKline plc
Hitachi Europe Ltd
HP Inc UK Limited
IBM UK Ltd
Johnson Matthey PLC
Merck Sharp & Dohme (UK) Ltd
Microsoft Limited
Nokia Technologies (UK) Limited
NEC Europe
Ocado Group plc
Pfizer Ltd
Philips Electronics UK Ltd
Pilkington Group Ltd
Procter & Gamble Ltd
Reckitt Benckiser Group plc
Renishaw plc
Rolls-Royce plc
Shell International Ltd
Siemens plc
Smith & Nephew
Syngenta Ltd
UCB Pharma plc
Unilever plc
Vectura Limited
Vodafone Group

Registered Office 60 Gray’s Inn Road, London WC1X 8LU
Email: admin@ipfederation.com | Tel: 020 7242 3923 | Web: www.ipfederation.com
Limited by guarantee Registered company No: 166772