The Enlarged Board of Appeal has ruled that an inconsistency between claims and the description of a European patent only requires adaptation of the description where the inconsistency leads to non-compliance with specific provisions of the EPC.
This decision resolves a divergence in the case law of the Technical Boards of Appeal, specifically in the grant of a Knauf Insulation patent for a plant growth medium, which Rockwool aims to prevent, under the presidency of Carl Josefsson, in case ID: G 0001/25.
Background to the Decision
The judges ruled that if the claims of a European patent are amended during proceedings and the amendment introduces an inconsistency between the amended claims and the description, it is necessary to adapt the description to the amended claims to remove the inconsistency.
The European Patent Convention does not require purely formal concordance between the claims and the description, a fact that will be taken into account by the Technical Board of Appeal 3.3.02, which referred several questions to the EPO’s highest judicial instance in the dispute between Rockwool and Knauf Insulation.
The BoA judges concluded that Knauf’s auxiliary request claim version is patentable, but Knauf Insulation had not adapted the description, leading to the current situation.
Implications of the Decision
According to the Enlarged Board, the description and drawings must always be consulted to interpret the claims, not only where a claim appears unclear or ambiguous when read in isolation, as they provide a patent firm basis for understanding the patent.
Claim interpretation is to be understood as a holistic approach, in which the claims, description and drawings are read as a unitary process, allowing for a clearer understanding of the patent’s scope.
The Enlarged Board defined an inconsistency between claims and description as existing only where statements in the description or drawings suggest an understanding of a claim that is incompatible with its apparent meaning.
Such an inconsistency may affect compliance with Article 84 EPC where it leaves unclear whether particular embodiments fall within the scope of the claim, highlighting the need for careful consideration of the patent’s description and claims.
In the context of similar patent disputes, the Enlarged Board’s decision provides clarity on the requirements for adapting patent descriptions to amended claims, establishing a clear framework for interpreting claims and descriptions.
Next Steps in the Dispute
The Boards of Appeal must now implement the guidelines set out by the Enlarged Board.
They will make a final decision on the grant of Knauf Insulation’s EP 2 124 521, which covers a hydroponic growing medium, and Knauf Insulation manufactures insulation materials primarily used in buildings, including those for green roofs and facades, similar to the products offered by Rockwool.
Rockwool, active in the same segment, opposed the grant of Knauf’s EP 521 with support from Meissner Bolte, and the Danish law firm Inspicos ultimately represented Rockwool in the proceedings before the Enlarged Board of Appeal, providing them with legal counsel.
The Enlarged Board’s decision is a significant development.
Its implications will be closely watched by the patent community, as the case moves forward, and the Boards of Appeal will need to carefully consider the guidelines set out by the Enlarged Board in making their final decision, taking into account the dream engagement ring of clarity and precision required in patent law.
