Any inconsistency between the description and the claims must be avoided if it may throw doubt on the extent of protection and therefore render the claim unclear or unsupported under Art. 84, second sentence or, alternatively, render the claim objectionable under Art. 84, first sentence. Such inconsistency can be of the following kinds:
For example, there is a statement in the description which suggests that the invention is limited to a particular feature but the claims are not thus limited; also, the description places no particular emphasis on this feature and there is no reason for believing that the feature is essential for the performance of the invention. In such a case, the inconsistency can be removed either by broadening the description or by limiting the claims. Similarly, if the claims are more limited than the description, the claims may be broadened or the description may be limited. See also paragraph (iii) below.
For example, it may appear, either from general technical knowledge or from what is stated or implied in the description, that a certain described technical feature not mentioned in an independent claim is essential to the performance of the invention, or, in other words, is necessary for the solution of the problem to which the invention relates. In such a case, the claim does not meet the requirements of Art. 84, because Art. 84, first sentence, when read in conjunction with Rule 43(1) and Rule 43(3), has to be interpreted as meaning not only that an independent claim must be comprehensible from a technical point of view but also that it must clearly define the subject-matter of the invention, that is to say indicate all the essential features thereof (see T 32/82). If, in response to this objection, the applicants show convincingly, e.g. by means of additional documents or other evidence, that the feature is in fact not essential, they may be allowed to retain the unamended claim and, where necessary, to amend the description instead. The opposite situation in which an independent claim includes features which do not seem essential for the performance of the invention is not objectionable. This is a matter of the applicant's choice. The division therefore does not suggest that a claim be broadened by the omission of apparently inessential features;
Where parts of the description give the reader the impression that they disclose ways to carry out the invention but are not or, due to amendments to the claims, are no longer encompassed by the wording of the claims, these parts often throw doubt on the scope of protection and therefore render the claims unclear or unsupported under Art. 84, second sentence, or, alternatively, render the claims objectionable under Art. 84, first sentence. The description must be adapted to the claims in order to avoid inconsistencies between the claims and the description.
Embodiments in the description which are no longer covered by the independent claims must be deleted (for example if the description comprises an alternative for at least one feature which is no longer covered by the amended claims) unless these embodiments can reasonably be considered to be useful for highlighting specific aspects of the amended claims. In such a case, the fact that an embodiment is not covered by the claims must be prominently stated (T 1808/06).
For example, if the claims are amended to specify a vehicle employing electric motors but one of the embodiments in the description and drawings employs a combustion engine instead, the inconsistency can be rectified by removing the embodiment with the combustion engine from the description and drawings. Alternatively, this embodiment must be marked as not being covered by the claimed invention (e.g. "embodiment not covered by the claimed invention"). It is not sufficient to use generic statements such as "embodiments not falling under the scope of the appended claims are to be considered merely as examples suitable for understanding the invention" without indicating which parts of the description are no longer covered.
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 the claimed invention.
Similarly, subject-matter in the description being excluded from patentability needs to be excised, reworded such that it does not fall under the exceptions to patentability or prominently marked as not being according to the claimed invention.
Moreover, features required by the independent claims may not be described in the description as being optional using wording such as "preferably", "may" or "optionally". The description must be amended to remove such terms when preceding a feature of an independent claim.
See also H-V, 2, for the allowability of amendments to the description.
See F-IV, 4.4.
The case under (iii) may frequently occur when, after a limitation of the claims following an invitation under Rule 62a(1) or Rule 63(1), the subject-matter excluded from the search is still present in the description. Unless the initial objection was not justified, such subject-matter is objected to under Art. 84 (inconsistency between the claims and the description).
Furthermore, the case under (iii) will occur when, after a non-unity objection (Rule 64 or Rule 164), the claims have been limited to only one of the originally claimed inventions: the embodiments and/or examples of the non-claimed inventions must be either deleted or, if they can reasonably be considered to be useful for highlighting specific aspects of the amended subject-matter, clearly indicated as not being part of the claimed invention.
Case (iv) is often observed in divisional applications where the original set of claims from the parent application is appended to the description.
Date retrieved: 17 May 2021