Added subject-matter Added subject-matter in Europe The European patent application should disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed Extended added subject-matter is a ground for opposition (Art. 100(c) EPC) and a ground for revocation (Art. 138(1) EPC) 2 Guidelines2DAY + Article 123(2) EPC 1
Assessment of Article 123(2) EPC by examiners The practice in the first instance is: inspired by the decisions of the BoA defined in the Guidelines (H-IV and V) monitored by the quality control measures reviewed by third parties in opposition 3 Protection of interests of 3rd parties no surprises, no unwarranted advantages 4 Guidelines2DAY + Article 123(2) EPC 2
Disclosure test 5 Gold standard G 3/89 G 11/91 G 1/93 G 2/98 G 2/10 "within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of the documents as filed" 6 Guidelines2DAY + Article 123(2) EPC 3
Directly and unambiguously derivable 7 Amendments after grant of the patent The European patent may not be amended in such a way as to extend the protection it confers Article 123(3) EPC 8 Guidelines2DAY + Article 123(2) EPC 4
Article 123(2) EPC Symposium with users Discussions with experts in four technical fields: mechanics, electrophysics, chemistry and biotechnology Result: Room for improvement in practice EPO Consistency in approach Consideration of the invention - skilled person Directly and unambiguously does not mean literally Less time should be spent on added subject-matter Applicants Better use of Rule 137(4) EPC GL H-IV, 2.5.5 Actively provide arguments There is a broad consensus that the same criteria should be used for the assessment of added subject-matter, novelty and priority 9 Content of the application as originally filed General rules Literal support for an amendment not required GL H-IV, 2.3 Outcome of Symposium Art. 123(2): feeling that EPO still too academic when assessing Art. 123(2) Change to GL H-IV, 2.3 "When assessing the conformity of the amended claims to the requirements of Art. 123(2), focus should be given to what is really disclosed to the skilled person by the documents as filed as directed to a technical audience. In particular, the examiner should avoid disproportionally focusing on the structure of the claims as filed to the detriment of the subject-matter the skilled person would directly and unambiguously derive from the application as a whole." 10 Guidelines2DAY + Article 123(2) EPC 5
Addition of features: "Novelty test" (GL, H-IV, 2.2) The amendment should be compared to the application as filed Novelty test aims at determining how far the application as filed anticipates the amendment If the amendment is new over the disclosure of the application as filed, it cannot be allowed under Art. 123(2) This test is not reversible: if amendment not new, not necessarily allowable (e.g. in case of removal of a feature) 11 Removal of features When a feature is removed from a claim, the test to be applied is the so-called essentiality test (T 331/87) A replacement or removal of a feature from a claim does not infringe Art. 123(2) EPC if the skilled person would directly and unambiguously recognise that: i. the feature was not explained as essential in the disclosure ii. the feature is not, as such, indispensable for the function of the invention in the light of the technical problem the invention serves to solve; and iii. the replacement or removal requires no real modification of other features to compensate for the change Test can allow applicant to remove a feature from a claim although it was present in all embodiments of the description Essentiality test challenged by some decisions but supported by others Guidelines have not yet been changed on this test 12 Guidelines2DAY + Article 123(2) EPC 6
Intermediate generalisation What is an intermediate generalisation: An intermediate generalisation is when a specific feature is extracted in isolation from a combination of features originally disclosed in the description and is added to a claim for restricting the claimed subject-matter General principle: Intermediate generalisation may be allowed only if there is no structural and functional relationship between the features originally described in combination When evaluating whether adding to a claim a feature extracted from a combination of features fulfils the requirements of Art. 123(2), it is wrong to consider the content of the originally filed application as a reservoir from which individual features relating to separate embodiments can be combined in order to artificially create a particular combination 13 Test for intermediate generalisation Test: When a feature is taken from a particular embodiment and added to the claim, it has to be established that: the feature is not related or inextricably linked to the other features of that embodiment the removal of the omitted features from the embodiment passes the essentiality test (see slide on removal of a feature), and the overall disclosure justifies the generalising isolation of the feature and its introduction into the claim Trend: Second condition challenged by the case law (T 2311/10) This condition has no support in the case law and is considered redundant with the first condition Deleted in the 2014 version of the Guidelines 14 Guidelines2DAY + Article 123(2) EPC 7
Disclaimers Three possible situations: 1) The negative feature is disclosed in the application as filed, i.e. the original application already indicates that the disclaimed embodiment is not part of the invention. To be assessed under Art. 123(2), as for positive features GL H-V, 3.5 2) Neither the negative feature nor the subject-matter to be excluded have been disclosed in the application as originally filed (so-called undisclosed disclaimer) GL H-V, 4.1 3) The negative feature is not disclosed in the original application but the subject-matter to be excluded is disclosed in the application as originally filed GL H-V, 4.2 15 Undisclosed disclaimers with excluded subject-matter not originally disclosed GL H V 4.1: Limiting the scope of a claim by using a "disclaimer" to exclude a technical feature not disclosed in the application as filed may be allowable under Art. 123(2) in the following cases See G 1/03 and G 2/03 Restoring novelty over a disclosure under Art. 54(3) Restoring novelty over an accidental anticipation under Art. 54(2) Removing subject-matter which, under Art. 52 to Art. 57, is excluded from patentability for non-technical reasons For example, the insertion of "non-human" in order to satisfy the requirements of Art. 53(a) is allowable 16 Guidelines2DAY + Article 123(2) EPC 8
Undisclosed disclaimers with excluded subject-matter originally disclosed GL H V 4.2: When the negative feature is not disclosed in the original application but the subject-matter to be excluded is disclosed, the test to be applied G 2/10 - headnote 1a General principle: The test to be applied on the remaining subject-matter is the same as the test applied for assessing the allowability of a claim after addition of a positively defined feature Test to be applied: Would the skilled person, using common general knowledge, regard the remaining claimed subject-matter as explicitly or implicitly, but directly and unambiguously, disclosed in the application as filed? 17 Rule 137(4) EPC Best practice when filing amendments is that applicants/patentees: 1) identify the amendments and 2) indicate their basis in the application as originally filed. Providing the information requested by Rule 137(4) EPC is the best guaranty that examiners will allow amendments under Art. 123(2) EPC! To encourage the applicant to clearly identify the amendments and indicate their basis, the following has been added to GL H-III, 2,1: "This requirement should be understood as an opportunity for the applicant to provide convincing arguments to the division as to why the amendment(s) is/are directly and unambiguously derivable from the application as filed. These arguments will be taken into account by the examining division for the assessment of Art. 123(2). They are particularly important for the outcome of the division's assessment where literal support for the amendment(s) is not present in the application as filed." 18 Guidelines2DAY + Article 123(2) EPC 9
T 1363/12 - EP 1 529 873 Claim 1 - as filed originally 1. A drum washing machine comprising: a cabinet (10) having, at an upper portion thereof, an opening (1); a top plate (20) to cover the opening; and a reinforcement (70) placed at a predetermined position of the opening to support and reinforce the top plate (20). Fig. 2 Fig.1 19 T 1363/12 - EP 1 529 873 Claim 1 - main request in appeal 1. A drum washing machine comprising: a cabinet (10) ; a top plate (20) ; a water tub (12) ; a rotary tub ; a front opening ; a door (30) ; a control panel (13) ; an electric wire (60) ; characterized in that: (next page) Fig. 2 Fig.1 20 Guidelines2DAY + Article 123(2) EPC 10
T 1363/12 - EP 1 529 873 Claim 1 - main request in appeal 1. A drum washing machine characterized in that: a reinforcement (70) is mounted to extend across the opening (11) in a position to reinforce the strength of the cabinet (10) and to couple the front wall of the cabinet (10) to the rear wall of the cabinet (10); and the electric wire ( 60) is supported by the reinforcement (70) extending from the front wall of the cabinet (10) to the rear wall of the cabinet (10) and is spaced from the water tub (12). Fig. 2 Fig.1 21 T 1363/12 - EP 1 529 873 Claim 1 - as filed originally a reinforcement (70) placed at a predetermined position of the opening to support and reinforce the top plate (20). Claim 1 - main request in appeal characterized in that: a reinforcement (70) is mounted to extend across the opening (11) in a position to reinforce the strength of the cabinet (10) and to couple the front wall of the cabinet (10) to the rear wall of the cabinet (10); and the electric wire ( 60) is supported by 22 Guidelines2DAY + Article 123(2) EPC 11
T 1363/12 - EP 1 529 873 Extracts from the description According to embodiments of the present invention, the wire holders 91 are provided on the predetermined portions of the reinforcement 70 which are installed in the opening 11 defined at the upper portion of the cabinet 10 to reinforce the strength of the cabinet 10. Thus, when the reinforcement 70 is installed in the opening 11 of the cabinet 10, the reinforcement 70 reinforces the strength 25 of the top plate 20, and allows a manufacturer to easily hold the electric wires 60 in the cabinet 10. In a detailed description, when the manufacturer passes the electric wires 60 through the wire holders 91 of the reinforcement 70, a process of holding the electric wire 60 in the cabinet 10 is completed. Thereafter, when the top plate 20 covers the opening 11 of the cabinet 10, the reinforcement 70 supports the top plate 20, thus reinforcing the strength of the top plate 20. The reinforcement may include a support plate mounted to a predetermined portion of the cabinet while extending across the opening, and a side plate extending upward from each of both side edges of the support plate to support a lower surface of the top plate. 23 Guidelines H-IV, 2.3 Under Art. 123(2) EPC, it is impermissible to add to a European application subject-matter which is not directly and unambiguously derivable from the disclosure of the invention as filed, also taking into account any features implicit to a person skilled in the art in what is expressly mentioned in the document. Literal support is, however, not required by the wording of Art. 123(2) EPC T 667/08 The term "implicit disclosure" means no more than the clear and unambiguous consequence of what is explicitly mentioned in the application as filed. Thus, the common general knowledge must be taken into account in deciding what is clearly and unambiguously implied by the explicit disclosure of a document. However, the question of what may be rendered obvious by that disclosure in the light of common general knowledge is not relevant to the assessment of what is implicitly disclosed by that document T 823/96 24 Guidelines2DAY + Article 123(2) EPC 12
Guidelines H-IV, 2.3 When assessing the conformity of the amended claims to the requirements of Art. 123(2) EPC, the focus should be placed on what is really disclosed to the skilled person by the documents as filed as directed to a technical audience. In particular, the examiner should avoid disproportionally focusing on the structure of the claims as filed to the detriment of the subjectmatter that the skilled person would directly and unambiguously derive from the application as a whole. T 2619/11 25 Guidelines H-IV, 2.2 - T 1363/12 "Gold Standard" An amendment should be regarded as introducing subject-matter which extends beyond the content of the application as filed, and therefore unallowable, if the overall change in the content of the application (whether by way of addition, alteration or excision) results in the skilled person being presented with information which is not directly and unambiguously derivable from that previously presented by the application, even when account is taken of matter which is implicit to a person skilled in the art. 26 Guidelines2DAY + Article 123(2) EPC 13
Thank you for your attention! 27 Guidelines2DAY + Article 123(2) EPC 14