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Description amendments

  1. Description Amendments - Finally a Referral?

    We have been waiting a long time for a Board of Appeal to finally refer questions to the Enlarged Board on the long-running controversy of whether, or to what extent, amendments to the description are required for European patents and patent applications. Given recent developments, we may now be getting near the point where this actually happens. In brief, the issue of description amendments is, as far as the EPO is concerned, a settled matter. In their view it is necessary for the description to be in line with the claims to avoid any inconsistencies. According to the current version of the Guidelines for Examination, F-IV, 4.3, "The applicant must remove any inconsistencies by amending the description either by deleting the inconsistent embodiments or marking appropriately so that it is clear that they do not fall within the subject-matter for which protection is sought". In many cases, this leads to extra time and trouble being expended when attempting to get an application allowed. Many have also objected that the supposed justification for this requirement simply is not there in the EPC. Article 84, which is used by the EPO in support, simply requires the claims to be "clear and concise and be supported by the description". If the description provides support for the claimed invention, does it even matter if it also includes support for things that are not part of the claimed invention? There are also cases where it may not be clear where the line should be drawn between what is described in the application as a whole as embodiments and what is actually within the scope of the claimed invention. Forcing applicants, and their attorneys, to make a decision during prosecution that can affect how the invention may be interpreted post-grant (since courts invariably insist that the description is always used to interpret the claims) may be considered unfair, if not actually unjust.  Those of us who have been keeping a close eye on this thought that we were going to get a referral last from the appeal case of T 56/21. In the end, however, the Board decided that a referral was not needed because in their view Article 84 did not provide any justification for amendments to the description at all. I wrote last year about this lengthy decision here. The EPO, however, has been taking no notice at all of the decision (which is, of course, only binding on the case in question) and maintains that their practice is justified. The Guidelines therefore remain unchanged.  However, in another appeal case, T 697/22, there has been some movement on the matter. Following oral proceedings held in December 2024, the Board indicated that they were minded to refer questions to the Enlarged Board. A communication has recently issued with some proposed questions, which the Board has asked the parties involved to comment on before they make a decision on a referral. Unlike in T 56/21, the Board found that there was divergent case law on the subject of description amendments and a referral may be needed to resolve the question of whether these were in fact required. The proposed questions are the following: 1. If the claims of a European patent are amended during opposition proceedings or opposition-appeal proceedings, and the amendments introduce an inconsistency between the amended claims and the description of the patent, is it necessary to comply with the requirements of the EPC, to adapt the description to the amended claims such that the inconsistency is removed?  2. If the first question is unconditionally answered in the affirmative, which requirement of the EPC necessitates such an adaptation?  3. If the first question cannot be unconditionally answered in the affirmative, what are the conditions under which adaptation of the description is necessary to comply with the requirements of the EPC?  4. Would the answer to these questions change if an inconsistency existed between the claims and the description of a European patent application? The parties have been given until 26 May 2025 to provide comments, following which the Board will decide whether a referral is to be made, and if so what the final form of the questions should be.  For now, all we can do is wait and see what happens. It is, however, interesting to note that the draft questions avoid mentioning Article 84 EPC at all. This is clearly deliberate, since question 2 asks whether there is any provision in the EPC that requires the description to be adapted to the claims. If T 56/21 is to be followed, there is in fact no such provision. The Enlarged Board, however, may find differently. 

    [GuestPost] G1/24: Tuning in! A take on the state of proceedings before oral proceedings

    Today is the day of the highly anticipated oral proceedings on G 1/24. The referral relates to a highly fundamental question of patent law, namely how the claims of a patent should be interpreted. KatFriend, Greg Corcoran, takes us through the background to the referral, details of the latest flurry of submission and suggests the key points to look out for in the hearing today. Over to Greg!  "Today, Friday 28th March, the Enlarged Board of Appeal (EBA) will hear representations from the parties to the proceedings and the European Patent Office (EPO) for the Referral G 1/24 relating to use of the description in claim interpretation, as first reported here. This Referral has received an unusually high-level of interest, not least because the decision could impact the practice of all European patent practitioners. Over thirty Amicus Briefs were received, including two late filed and two from the same party (the epi). The President filed Comments, which some may consider controversial. The Preliminary Opinion of the EBA was unusually brief, with many commentator reports having a greater word count than that of the Opinion itself. In preparation of the hearing today, here are some highlights of the proceedings so far.  Background to the case The Referral derives from an opposition to a Phillip Morris patent (EP 3076804) for a smoking article. The Opposition decision was appealed, asking the Board of Appeal if a definition in the description of the patent could be used for a broader interpretation of the claim-term "gathered" than would be known to a person skilled in the art.  The divided case law The Referring Board noted in its Interlocutory Decision, T 439/22, that split case law existed for interpreting claims in view of the description, which refer to both Arts 84 and 69 EPC.  Tuning in to G 1/24, IPKat is all ears! The first line of case law, e.g. T 223/05, advocates that Art 84 EPC, not Art 69 EPC, applies in EPO proceedings: a patent claim should essentially be read and interpreted on its own merits rather than with the aid of the description and drawings. If the claim wording is clear to a person skilled in the art in view of the common general knowledge, reference to the description is unnecessary. Exceptionally, reference to the description and drawings may be made when a claim lacks clarity. A particular meaning present only in the description (and not the claims) cannot be used to interpret an apparently broad term of a granted claim to have narrow scope. Limiting reference to the claims on their own, or with the description, if necessary, is alleged to ensure that for a person skilled in the art the claims would be clear and unambiguous (Art 84 EPC). This ensures a proprietor cannot adopt a narrower interpretation during prosecution than after grant, preventing the ‘Angora cat’ phenomenon. In the second line of case law e.g. T 1473/19, “Article 69 EPC and the Protocol are the only provisions in the EPC containing rules for the interpretation of patent claims” and the “claims must satisfy the requirements under Article 84 EPC so that they can fulfil their purpose of enabling the protection conferred by the patent to be determined under Article 69 EPC (cf. G 2/88, Reasons 2.5)”. The description is generally taken into account for claim interpretation, unlike in the first established line of case law. Although account should be taken of the description and drawings when interpreting a claim (Art 69(1) EPC), the claims have primacy for determining the extent of protection. This recognises that features cannot be read in claims that are only present in the description.  Some commentators note that the Referring Board cites the UPC Court of Appeal decision Nanostring v 10x Genomics when referring to G 2/88 and G 6/88 (which it argues applies Art 69 EPC to patentability). Nanostring is now leading UPC case on claim interpretation. Could it be that the Referring Board is suggesting that the EPO follow the UPC or at least take note of developments in UPC practice?  What lies at the heart of the split case law is how Arts 84 and 69 EPC are applied by the EPO for claim interpretation, i.e. prior to grant and opposition.  The referral questions and provisional answers Thus, the Referring Board decided that a referral was required in view of the divergence in case law to determine the relevance of cited prior art should the claim be broadened by referring to “gathered” in the description. The Referral Questions, simplified for brevity, are:  Question 1) Is Art 69 (1) EPC and the Protocol of Interpretation legal basis for claim interpretation? Question 2) Should reference be made to the description and the drawings when interpreting claims? Question 3) Can a specification be a dictionary of definitions for the patent? Amicus Briefs, The President’ Comments and Pegram’s Third Party Observations Twenty-eight amicus briefs were filed, which is an unusually high number, by parties with interests over the full range of technical fields. In response to the Referral Questions, most briefs gave positive replies to the first Question; all but one were positive in response to the second Question; and, for the third Question, most stated a definition of a claim term in the description may not be disregarded. It should be noted that over a third of the Briefs cited T 56/21 which was decided shortly before the deadline for filing the briefs. A referral about the practice of amendment of the description had been expected from this case; yet the Board of that case decided amendment of the description on allowance was inappropriate and a referral was unnecessary, as reported here.  The President of the EPO filed his Comments at the same time as the amicus briefs. His arguments differed from any of the briefs, arguing the EBA should account for the established EPO practice under Art 84 EPC of amending the description in compliance with the allowed claims prior to grant. He considers this practice as essential for ensuring consistent claim interpretation. He cites T 438/22 that affirms the practice of amendment of the description (as reported here) and which is divergent case law relative to T 56/21. The President could be asking the EBA to check the impact of its decision against the established EPO practice. Yet others interpret the President’s Comments as asking the EBA to extend the Referral Questions to encompass the practice of amending the description.  Noting the deadline for filing amicus briefs had elapsed, John B Pegram filed third party observations, arguing, if the EBA were to extend the Referral Questions in view of the President’s arguments, interested third parties should be given the right to be heard.  Preliminary Opinion  The EBA published its Preliminary Opinion on 6 February 2025, (see IPKat). Of the three Referral Questions, the EBA appears most interested in the first Question. Simplifying the provisional answers for brevity:  Provisional Answer 1: The EBA recognises the interest in uniform claim interpretation in EPO and Board of Appeal proceedings (including pre-grant) and in post-grant national court proceedings, including the UPC. The EBA identifies two sub-questions:     A. Should the principles of claim interpretation of Art 69(1) second sentence EPC and Article 1 of the Protocol be applied for claim interpretation when assessing patentability (Articles 52 to 57 EPC);      B. Are Article 69(1) EPC and Article 1 of the Protocol the legal bases for the principles referred to in question A)?  Provisional Answer 2: The EBA views the description, and figures can be used for claim interpretation.  Provisional Answer 3: This question is inadmissible. An answer is not required for the underlying case. Through his support of the practice of amendment of the description, Art 84 EPC, the President seeks uniform claim interpretation. The President is one of the parties with such an interest that the EBA acknowledges this in the introduction to its first answer. Therefore, if the EBA has decided to ignore the President’s Comments, this is not communicated in the Preliminary Opinion. The EBA may still respond to the President's arguments. Later Filings  Normally the next filing in proceedings would be the final pleadings of the parties. Yet there are three further third-party filings:  a. Further Third-Party Observations: of 13 February present the development of Art 69 EPC evidenced by the travaux préparatoires of the EPC. Art 69 EPC is inapplicable pre-grant because the article was developed exclusively for infringement post-grant, and the reference to ‘applications’ is for ‘provisional protection’ i.e. rights conferred after publication but before grant. This appears to support the Respondent’s arguments. b. The epi filed their Second Amicus Brief on 18 February 2025 in response to the President’s Comments, noting: the Referral Questions does not directly address the adaption of the description, Art 84 EPC. The epi notes Art 84 EPC does not stipulate that the description must only contain subject matter which supports the claims. Yet it considers it is not necessary to address the question of amendment of the description in order to answer the Referral Questions.  Despite taking a position inconsistent with that of the President, the epi observes that in practice there are strongly held views for and against the practice of amendment of the description.  The epi criticises a rigid application of EPO practice as advocated by the President, noting that the patent from which the Referral derived, despite having clear claims (Art 84 EPC) during assessment of patentability, demonstrates a problem can exist when interpreting claims applying Art 69 (1) EPC and the Protocol. Such interpretation might lead to an extent of protection deviating from the subject matter for which protection is sought, and which is assessed for patentability relative to the prior art.  It presents examples that demonstrate retaining the description unrelated to the claimed invention would not be detrimental to claim interpretation post-grant, but would even assist a person skilled in the art to understand the context of the invention. Retaining such non-supporting disclosure would not automatically result in a lack of clarity, because a person skilled in the art would not rely on such disclosure for claim interpretation. If such disclosure later broadened claim scope, applying Art 69(1) EPC second sentence during patentability would ensure such broader scope would need to be patentable.  The epi repeats Pegram’s arguments and argues interested third parties had not made representations about the question of amendment of the description because this question is extraneous to the Referral. Without pleadings from all sides and views, the epi takes the position that a decision in the present proceedings on the question of amendment of the description would be premature.  c. Amicus Brief of 20 February 2025 from Mewburn Ellis (Mewburn). Mewburn represented Hoffman-La Roche in the appeal T 56/21 from which a referral on amendment of the description had been expected. As explained earlier, that Board finally decided that a referral was not necessary because adaption of the description had negative consequences post grant. The President explicitly criticised this decision at para 72 and 73 of his Comments, citing T 438/22 to affirm EPO practice.  The President’s own Comments appear to undermine the argument that the EPO practice of amending the description has sure footing, by highlighting that the practice relies on one limb of divergent EPO case law. Mewburn arguably shows that T 56/21 serves not to demonstrate that a referral on the question of amendment of description is unnecessary, but that a new referral would be appropriate.  Mewburn observes that the Preliminary Opinion is silent whether the EBA will consider the question of amendment of description.  They ask that, if the EBA decides to consider the President’s question, third parties are given the opportunity to file Amicus Briefs before the EBA’s consideration of the President’s question.  Final Arguments of the Parties  The Respondent builds on earlier arguments that the Referral is inadmissible, and the first Question really relates established practice for clarity (Art 84 EPC). The Respondent proposes to reformulate the first Question to refer to the full Protocol, including Art 2 on equivalence. They reason then that Art 69 EPC may only apply post grant. T56/21 features the same argumentation that Art 69 is inapplicable in the EPO proceedings for patentability. However, the Respondent asks that the President’s request (to consider amendment of the description) is not considered in the proceedings.  The Appellant argues that Art 69 EPC applies for patentability (see G 6/88 cited in the Referral, T439/22) so that how the EPO, Courts and public interpret the claims results in the same understanding of the claimed subject matter. Art 69 EPC is the only provision of the EPC that specifically addresses claim interpretation, and this provision explicitly states that the description and drawings must be used to interpret the claims, without condition. The Appellant supports Pegram’s arguments that amendment of the description is not part of the Referral (paragraph 157), yet it positively supports amendment of the description, noting that sometimes the practice may be ‘insufficient’ (paragraph 21). Curiously, the Appellant seems not to support Pegram’s argument that third parties should be given the right to be heard if the EBA decides to consider the President’s arguments (paragraph 156). The Appellant applies the general principles of EU Administrative Procedural law (paragraphs 24 to 43) which is applicable in most but not all EPC contracting states, as a guide for the legal principles on interpretation (Art 125 EPC) to support its arguments for harmonised claim interpretation, in applying Art 69 EPC.  It observes such an approach: would increase certainty in court decisions; is enabled by the commencement of the UPC; and would result in higher quality granted patents, which is in-line with the interests of the EPO. Points to Note for the Hearing There are many points at play in these proceedings. In view of the Preliminary Opinion, it is likely that the proceedings will focus on the first Referral Question: if the principles of Art 69 (1) EPC and its Protocol are applied to claim interpretation for patentability and if these provisions provide legal basis. The parties to the proceedings and the EPO (which will also participate in the hearing today) appear to have differing views.  Some key issues appear to be:  Will the EBA decide that the principles of Art 69 EPC and its Protocol (or even as legal basis) should be applied pre-grant for claim interpretation to assess patentability in place of Art 84 EPC? Will the EBA accept the Appellant’s arguments that the EPO should harmonise its approach to claim interpretation with the UPC? This appears to be the legal issue upon which this Referral appears to turn, and it is only supported by the Appellant.   Will the Respondent’s efforts to reformulate the first Referral Question to incorporate Art 2 of the Protocol succeed? Should the EBA accept this argument, the Referral could be swiftly concluded but given the Preliminary Opinion’s acknowledgement of the interest in consistent interpretation before the EPO and the Courts, this outcome is perhaps unlikely. How will the EBA respond to the President’s argument that the decision should account for the practice of amendment of the description? The parties to the proceedings, the two late filed Amicus Briefs and Pegram in his Observations argue that the EBA should not account for this practice when answering the Referral Questions. If the EBA does consider the President’s argument, would third parties be able to file new Amicus Briefs? There is no precedent so that outcome appears unlikely and third parties appear not have attempted to add substantial arguments, as such, in response to the President’s argument; rather the two late filed amicus briefs mainly argued against the EBA considering Amendment of the Description when answering the Referral Questions. In any event, the EBA will answer the Referral Questions as is necessary to address the issues from the originating appeal: which is unrelated to amendment of the description. It will be interesting to see the EBA’s approach on this point.  Is reference to amendment of the description completely avoidable? It is unclear if the decision can avoid reference to the amendment of the description entirely because the decision is highly likely to refer to Art 84 EPC. Further the Appellant explicitly refers to EPO practice in its arguments (paragraph 21). If the EBA decides not to consider the question of amendment of the description, it will be interesting to see how it formulates its decision in view of the Appellant’s arguments without consequences for the practice of amendment of the description. Summary These and other questions will be considered by the Enlarged Board of Appeal in the hearing today at 10am CET. The hearing can be followed by livestream using the link supplied here: Oral proceedings in case G1/24 ("Heated aerosol"). The decision is expected later this year."  Related IPKat Articles BREAKING: Referral to the Enlarged Board of Appeal on claim interpretation confirmed (G1/24) - The IPKat Deletion of claim-like clauses: Board of Appeal finds legal basis for adaptation of the description from "the EPC as a whole" (T 0438/22) - The IPKat Board of Appeal back-pedals on referral in view of "unequivocal" lack of legal basis for the description amendment requirement (T 56/21) - The IPKat GuestPost: A referral broadened? To have one’s cake, to eat it...or not yet to get it (G 1/24) - The IPKat

    EBA's preliminary opinion in G1/24: "the description and the figures can be referred to in the course of claim interpretation"

    The Enlarged Board of Appeal (EBA) has issued its preliminary opinion in the closely watched referral G1/24 relating to the role of the description in claim interpretation. The preliminary opinion provides the EBA's initial view on the three referred questions ahead of oral proceedings scheduled for 28 March 2025. The EBA's thoughts on the three questions are very brief, and only Questions 1 and 2 are considered admissible.  Legal background: Claim interpretation The referral in G1/24 originated from T 0439/22 and relates to fundamental questions regarding claim interpretation at the EPO. The question at the heart of the referral in G1/24 is whether, and to what extent, the description should be taken into account when interpreting the claims. The referred questions particularly seek clarity on the relationship between Article 69(1) EPC and Article 84 EPC. Article 69(1) EPC states that "the extent of protection conferred by a European patent or a European patent application shall be determined by the claims" whilst "the description and drawings shall be used to interpret the claims". Article 84 EPC states that "the claims shall define the matter for which protection is sought" and "shall be clear and concise and be supported by the description". The Board of Appeal in T 0439/22 found disparity in the case law on how and if the provisions of Articles 69 and 84 should be applied to claim interpretation.  And then there were two Case background: G1/24 - spiralled or gathered? The referral stems from pending appeal T 0439/22  concerning Philip Morris' European patent EP3076804. The patent, which survived opposition at first instance, relates to a cartridge for a "heat-not-burn" smoking device where tobacco is heated rather than burnt. The central issue in the appeal is whether the claims lack novelty. The dispute hinges on the interpretation of the term 'gathered' in the claims, which specify that the cartridge comprises 'gathered' smoking material. The prior art discloses a cartridge comprising 'spirally wound' smoking material. The description provides an unusually broad definition of 'gathered'. The Board of Appeal noted that this definition appeared to conflict with the normally narrower meaning of the term in the tobacco industry. The Opposition Division had applied what the Board of Appeal termed the "classical approach" to claim interpretation, following the principle that the description should only be consulted to construe unclear claim terms. Under this approach, recourse to the description is prohibited when interpreting otherwise clear claim language. Nonetheless, the Board of Appeal identified a divergent line of case law, exemplified by T 1473/19, which holds that definitions provided in the description "cannot be left unconsidered". The outcome of the appeal turns on this point of claim interpretation. Considering the description's broad definition would favour the Opponent's novelty attack, whilst interpreting the claim term 'gathered' according to its normal meaning without reference to the description would support the Patentee's case for novelty.  The questions referred to the EBA are as follows:  Question 1: Application of Article 69(1) EPC during examination The first referred question asks: "Is Article 69(1), second sentence, EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC to be applied to the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC?". In other words, Question 1 asks whether Article 69(1) EPC is relevant during pre-grant examination and opposition.  Question 2: Role of description and drawings The second question asks: "May the description and figures be consulted when interpreting the claims to assess patentability and, if so, may this be done generally or only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation?". In other words, Question 2 asks whether the description should be used to interpret the claims, and if so, whether this should only be to resolve otherwise unclear claim language. There is a significant body of Board of Appeal case law finding that the description should only be consulted if the claim language would be unclear to a skilled person.  Question 3: Definitions in the description The third question asks: "May a definition or similar information on a term used in the claims which is explicitly given in the description be disregarded when interpreting the claims to assess patentability and, if so, under what conditions?" The EBA's preliminary opinion The EBA's initial view is that Questions 1 and 2 are admissible, whilst Question 3 is deemed inadmissible.  On Question 1, the EBA notes the interest in the "uniform application of the principles of claim interpretation both in patent grant proceedings [...] and also in post-grant revocation and infringement proceedings before the courts of the EPC contracting states, including the Unified Patent Court". So far, the UPC has taken the approach of considering the patent as a whole such that the description should always be used to interpret the claims. The EBA considers Question 1 to raise at least two issues that need addressing. First, whether the principles of Article 69 EPC and the Protocol should be applied during examination, and second, whether they provide the legal basis for the principles to be applied the interpretation of the claims.  For Question 2, regarding whether the description and figures may be consulted when interpreting claims, the EBA's preliminary view is that "the description and the figures can be referred to in the course of claim interpretation" (r. 2). The EBA's thoughts on this question are very brief and so we await the final decision for the EBA's analysis.  The EBA's preliminary view is that Question 3 is inadmissible. Again, the EBA's reasoning is very brief. The EBA merely notes that "an answer to it is not required for the referring Board to reach a decision on the case before it" (r. 3). Final thoughts The EBA in its preliminary opinion has also chosen to so-far ignore the intervention of the President of the EPO that the referral should be broadened to consider the question of description amendments (IPKat). Instead of the referral being broadened, from the preliminary opinion of the EBA, it appears that it may in fact be narrowed. However, the normal note of caution that this is only the preliminary view of the EBA applies, and we await the final decision following the March hearing.  Further reading GuestPost: A referral broadened? To have one's cake, to eat it...or not yet to get it (G 1/24) (Jan 2025) BREAKING: Referral to the Enlarged Board of Appeal on claim interpretation confirmed (G1/24) (July 2024) Will we have a referral on using the description for claim interpretation or is the Board of Appeal jumping the gun? (T 439/22) (Jan 2024) EPO tries to have its cake and eat it on claim interpretation (T 0169/20) (March 2023)

    Adding matter by amending the description to exclude embodiments (Ensygnia v Shell [2023] EWHC 1495 (Pat))

    The recent High Court decision in Ensygnia v Shell ([2023] EWHC 1495 (Pat)) is highly relevant to the ongoing controversy of claim interpretation and description amendments (IPKat). In Ensygnia v Shell, Miss Charlotte May KC (sitting as Deputy Judge in the High Court of England and Wales) considered how a post-grant amendment which added the phrase that certain embodiments "fell outside the scope of the claims", might affect claim interpretation. The Deputy Judge found that this statement changed the natural reading of the claim language in added matter and infringement analysis. The decision in Ensygnia v Shell is a fresh warning, if one was needed, of the substantial risks of description amendments.  Case Background - Ensygnia v Shell Customer recognitionEnsygnia sued Shell for infringement of their UK patent (GB 2489332 C2). Shell counterclaimed that the patent was invalid. The patent related to a method for identifying whether a user was authorised to access a service. Claim 1 specified a method comprising a user using their phone to scan "a graphical encoded objection" (e.g. a QR code) "displayed on a display of a computing apparatus". The alleged infringement was Shell's petrol station app which allowed registered customers to purchase petrol using their phone and a QR code displayed on a card at the pump.  The Patentee had amended the description and claims of the patent post-grant (Section 27, UKPA). Particularly, the Patentee amended the claims to specify that the "display" of the computing apparatus displaying the e.g. QR code was a "sign". The Patentee also amended the description to state that some of the embodiments and figures were "outside the scope of the claims", ostensibly to bring the description in line with the amended claims (see amended page 22 of the description).  Legal Background: Principles of claim interpretation Article 69 EPC provides that the extent of protection of a European patent "shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims". The UK courts have interpreted Article 69 EPC as permitting a construction of the claims that takes account of the inventor's purpose as indicated in the description and drawings of the patent. However, purposive construction does not allow an obviously deliberate limitation in the claims to be ignored. Accordingly, as recently summarised by Lord Justice Arnold, the three key considerations for claim interpretation in the UK are 1) the wording of the claim, 2) the context provided by the specification and 3) the inventor’s purpose (InterDigital v Lenovo [2023] EWCA Civ 105).  The UK approach to claim interpretation under Article 69 EPC contrasts with the EPO's approach. Recent Boards of Appeal have emphasised that the description and figures of a patent should only be referred to when the natural meaning of the claim language is unclear (IPKat) (see also the "catastrophic comma loss cases", IPKat). Construing the claims in view of the description The Deputy Judge applied the principles of construction to the word "sign" as used in the claims. Ensygnia argued that the "sign" specified by claim 1 related to a non-electronic static sign, and therefore included in its scope the paper QR codes used by Shell. Shell argued that their petrol pump app did not infringe the claim because the "sign" specified in the claim should be understood as being limited to an electronic display on a computer screen.  The Deputy Judge looked to the description and the inventor's purpose to understand how the term "sign" should be understood. Under a natural reading, the Deputy Judge agreed that the sign on a display forming part of a "computing apparatus" would generally be understood to be an electronic one (para. 152). However, the description of the patent had been amended by the Patentee post-grant to specify that a particular embodiment having an electronic display was "outside the scope of the claims". In view of this passage, the Deputy Judge agreed with Patentee's interpretation that the "sign" specified in the claim did not have to be an electronic display. Applying the principles of claim interpretation, the Deputy Judge concluded that "since the patentee has deliberately limited the claim to a display on a sign, this limitation cannot be disregarded even though it conflicts with some of the teaching of the Patent and does not provide all the advantages of the invention that an electronic display would bring" (para. 154).  Added matter & extended protection Unsurprisingly, Shell argued that the post-grant description and claim amendments added matter and extended the scope of protection of the patent. In the interests of legal certainty, post-grant amendments must not increase the scope of protection of a granted patent.  For the Deputy Judge, the added statement that the embodiments comprising an electronic display were "outside the scope of the claims", was critical to the interpretation of "sign" in the claims as including non-electronic signs: "Without hindsight, I do not think it would even occur to the skilled reader reading this passage in the context of the application as a whole that the invention could be implemented using a sign that is not electronic or which cannot be changed." (para. 177). The Deputy Judge thus agreed with the Defendant that the statement "outside the scope of the claims" added matter to the application as filed and also extended the scope of protection beyond the patent as granted. The Deputy concluded that the patent should thus be revoked for added matter and extended protection.  The Patentee in this case therefore found themselves stuck in an added matter/claim construction squeeze; the claim construction required to cover the alleged infringement (introduced by the Patentee post-grant) was also the claim construction that added matter.  Final thoughts In this case, the description amendment was critical for claim interpretation. The Patentee had changed the meaning of the claims by the back-door of description amendments. Such an approach is unlikely to be successful in view of the added matter/claim construction squeeze. None-the-less, the Ensygnia v Shell is a timely reminder of the potential danger of description amendments dictated by the patent office.  The EPO Guidelines for Examination currently state that "[a]ny inconsistency between the description and the claims must be avoided if it could throw doubt on the subject-matter for which protection is sought and therefore render the claim unclear". Specifically, according to the Guidelines "[t]he applicant must remove any inconsistencies by amending the description either by deleting the inconsistent embodiments or marking appropriately so that it is clear that they do not fall within the subject-matter for which protection is sought" (F-IV-4.3).  There has been long-standing concern that the description amendments currently required by the EPO based on these Guidelines could affect the interpretation of the claims in doctrine of equivalent analysis. Ensygnia v Shell highlights that including statements that exclude certain embodiments from the scope of the invention may even affect claim interpretation in purposive construction. A difference between interpretation of the claims pre-grant and post-grant may then invalidate the patent for added matter. This danger is further compounded by the different approach taken by the EPO Boards of Appeal and the UK courts to claim interpretation under Article 69 EPC.  We are now awaiting to see if a Board of Appeal will refer the issue of description amendments and claim interpretation to the Enlarged Board of Appeal (EBA) (IPKat). In the meantime, wise applicants will take care with their description amendments.  Further reading Claim interpretation Boeing's comma drama: Commas and taking the description into account when construing a claim (T 1127/16) (12 April 2021) Another case of catastrophic comma loss (T 1473/19): Interpreting the claims in view of the description (16 Jan 2023) EPO tries to have its cake and eat it on claim interpretation (T 0169/20) (16 March 2023) Construing the claims to include technical effects mentioned in the description (T 1924/20) (April 2023) The risk of pre-grant description amendments (T 450/20) (17 July 2023) Description amendments Board of Appeal finds no legal basis for the requirement to amend the description in line with the claims (T1989/18) (26 Dec 2021) Can amending the description to summarize the prior art add matter to the patent application as filed? (T 0471/20) (5 Jan 2022) EPO Board of Appeal toes the party-line on description amendments (T 1024/18) (4 April 2022) Board of Appeal case law against the description amendment requirement starts to mount up (T 2194/19) (16 Nov 2022) Another Board of Appeal enters the fray on description amendments (T 3097/19) (27 Nov 2022) Board of Appeal poised on the brink of a referral on description amendments (T 56/21) (26 July 2023)

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