1.14. Amending the description
1.14.2 Impact on the claimed subject-matter
The board in T 835/11 held (in relation to a divisional application) that an amendment to the description could result in an inadmissible extension only if it changed the subject-matter. That might be the case, for instance, if the description initially defined a feature in the claims more narrowly than its usual meaning; deleting the definition from the description could then result in an inadmissible extension of the patent's subject-matter. Removing or adding examples might also affect how the claims were understood and so also change the patent's subject-matter (see e.g. T 1239/03, in chapter II.E.1.14.4 below). The boards had also repeatedly held that reformulating the problem to be solved could inadmissibly extend the patent's subject-matter (see e.g. T 13/84, OJ 1986, 253, in chapter II.E.1.14.6). By contrast amendments to the description which had no effect on the claimed subject-matter were not open to objection. In the case in hand, Art. 100(c) EPC had not been infringed. See also chapter II.E.1.14.4 "Shift in the interpretation of a claim by amendment of the description"; however, see also chapter II.E.1.14.5 "Shift in the information provided by the examples after amendment of claims".
- T 438/22
Catchword:
1. There is no provision stipulating that examples within the meaning of Rule 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 is no justification for deleting such examples just because they were drafted as claim-like clauses. They are to be treated like any other part of the description and thus, inter alia, must support the claims (Article 84 EPC). (Reasons 3.4 and 3.5) 2. It is 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 is 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 contains subject-matter which manifestly impedes a common understanding, it is legitimate to insist on its removal under Articles 84 and 94(3) EPC and Rules 42, 48 and 71(1) EPC. (Reasons 5.5.3) 3. The board approves 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. (Reasons 5.7.2) 4. A referral to the Enlarged Board of Appeal whose sole purpose is to correct the Guidelines and which is not necessary either for ensuring a uniform case law within the boards or for the board's decision is not admissible. Such a referral could be perceived as an attempt to encroach on the President's powers under Article 10(2)(a) EPC. (Reasons 8.2.2)