Art. 123(2) EPC ADDED MATTER A US Perspective by Enrica Bruno Patent Attorney
US Background: New matter Relevant provisions 35 USC 132 or 35 USC 251 If new subject matter is added to the disclosure, whether it be in the abstract, the specification, or the drawings 35 USC 112 1 st paragraph (pre-aia) 35 USC 112 (a) (Post AIA) - written description If new matter is added to the claims, whenever any of the claim limitations are affected by the added material MPEP 2163.06.I 2
US new matter EP new matter US practice Different rules apply to added matter in description and claims added matter in claims: intertwined with the requirement of written description (original disclosure must reasonably convey to one skilled in the art that the inventor had possession of the claimed invention) which is per se absent in the EP patent culture TurboCare Division of Demag Delaval Turbomachinery Corp. v. General Electric Co., 264 F.3d 1111, 1118 (Fed. Cir. 2001) ("The written description requirement and its corollary, the new matter prohibition of 35 U.S.C. 132, both serve to ensure that the patent applicant was in full possession of the claimed subject matter on the application filing date") 3
US new matter EP new matter EPO practice Art 123(2) EPC applies to the European patent application (description, drawings and claims) Art 123(2) EPC identifies added matter as subject-matter which extends beyond the content of the application as filed with no ties to open ended criteria such as convey possession E.g. Art 123(2) EPC is not tied to Art 84 EPC (EP counterpart of 35 USC 112 1 st written description although radically different) Art 84 EPC requires a support having technical character, correspondence of technical features between claims and description, with no need to convey possession (although considering as a factor the extent of technical contribution to the art together with Art. 83 EPC) 4
Art 123(2) EPC US perspective Compared to US practice Application of Art 123(2) EPC with reference to amendment of the description presents some significant differences but results from application of homogeneous criteria Application of Art 123(2) EPC with reference to amendment of the claims results in a practice that is radically different if not opposed to the rules applying in the US 5
Art 123(2) EPC US perspective - Description US added matter- description Departure from or an addition to the original disclosure (37 CFR 1.118 transferred in 37 CFR 1.121) Original disclosure: Comprises abstract, description, claims and drawings EP added matter- description 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. (Guidelines F-IV.2.2) Application: Comprises description, drawings and claims - no abstract - priority document and other docs if cross referenced only under very limited circumstances 6
Art 123(2) EPC US perspective Claims US added matter- claims the fundamental factual inquiry is whether the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed (Vas-Cath, Inc., 935 F.2d at 1563-64, 19 USPQ2d at 1117) EP added matter- claims 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. (Guidelines F-IV.2.2) 7
Art 123(2) EPC US perspective - Description Acceptable amendments under US practice "clarify or complete" the original disclosure (MPEP 2163.06 and MPEP 2163.07) conforming different parts of the disclosure including drawings and claims (MPEP 2163.06), Rephrasing (MPEP 2163.07.I), Inclusion of dictionary or art recognized definition, if definition clearly included in original application (MPEP 2163.07.I), Correction of obvious errors, if correction recognized in original application (MPEP 2163.07.II) 8
Art 123(2) EPC US perspective - Description Acceptable amendments under US practice (ct d) make explicit that which was inherent in the original application's disclosure (MPEP 2163.07(a) structure or operational element necessarily present or implicit in the original disclosure, theory in cases contours of invention cannot be adequately understood apart from the theory, advantages or properties that flow inherently from the claimed subject matter when used in the disclosed manner as evidence of patentability the missing descriptive matter is necessarily present in the thing described in the reference (MPEP 2163.07(a)) 9
Art 123(2) EPC US perspective Description Acceptable amendments under US practice (ct d) includes portions of a document incorporated by reference (37. CFR 1.57) US patent/applications for essential material (37. CFR 1.57(c)) Foreign applications, papers other documents for non - essential material (37. CFR 1.57(d)) 10
Art 123(2) EPC US perspective Claims Acceptable amendments under US practice No haec verba requirements - newly added claim limitations must be supported in the specification through express, implicit, or inherent disclosure (MPEP 2163.I.B) Factors to be considered i) the level of skill and knowledge in the art, ii) partial structure, iii) physical and/or chemical properties, iv) functional characteristics alone or coupled with a iv) known or disclosed correlation between structure and function, and v) the method of making the claimed invention. (MPEP 2163.I.A and MPEP 2163.II.2.A.1, MPEP 2163.II.3(a), A written description decision often is determined almost entirely by the claim construction Harari v. Lee, 656 F.3d 1331, 1340-42 (Fed. Cir. 2011) (MPEP 2163.II.A.1) 11
Art 123(2) EPC US perspective Description/Claims Acceptable amendments under EPO practice Directly and unambiguously derivable from application taking into account implicit disclosure (H-IV.2.2, T823/96) Conforming parts of application ( support for the claims in the description and drawings under Art. 84 EPC; H-IV.4.2) Technical definition in place of a feature only if no new information Correction of error ( Straightforward clarification of an obscurity generally allowed, H-IV.2.3.8, H-4, 6; see also R. 139 EPC) Allowability of any amendment conditioned by intermediate generalization (H-V.3.2.1). Disclaimers (G01/03) Test for novelty (addition) (G-VI, 2) 12
Art 123(2) EPC US perspective Description/Claims Acceptable amendments under EPO practice (ct d) Directly and unambiguously derivable (ct d) Clear and unambiguous consequence of what explicitly mentioned in application as filed (H-IV.2.3) Common knowledge, but not what obvious in view of common knowledge (F-IV.2.3) clarification of a technical effect (possibly) (H-V.2.1) additional technical matter can be separately submitted to the Examining Division outside description only to support inventive step (H.V.2.3) structural feature specified if unambiguously derivable from a stated advantage 13
Art 123(2) EPC US perspective Description/Claims Acceptable amendments under EPO practice (ct d) Directly and unambiguously derivable(ct d) Parts drawn from a referenced document (may be needed under Art. 83 EPC) only if description as originally filed leaves no doubt to a skilled reader that (H-IV.2.3.1) (i) protection is sought for such features; (ii) features contribute to solving technical problem; (iii) features at least implicitly clearly belong to invention description in application as filed (Art. 78(1)(b)) and thus to the content of the application as filed (Art. 123(2)); and (iv) features precisely defined and identifiable within the disclosure of the reference document. 14
Art 123(2) EPC US perspective Description/Claims Main difference from the US point of view Focus in the US is whether specification conveys with reasonable clarity for a skilled person that the inventor had possession of the invention Focus in the EP is whether the information added is directly and unambiguosly 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 15
Art 123(2) EPC US perspective Raising the Bar Raising the bar policy Over the years, the EPO has moved towards a very strict interpretation of Art 123(2) EPC. Current EPO practice mostly allowing amendments only when a literal, or quasi-literal, basis for the amendment is shown. Application of the above literal criterion appears at times less strict in opposition with respect to examination. Strict approach also for priority claim (with awkward scenarios where a priority deemed invalid at a late stage of prosecution, with European priority application becoming a Art. 54(3) EPC document and self publication becoming Art. 54(2) EPC document against later application). 16
Art 123(2) EPC US perspective Future Developments Future Developments From statements provided during the FICPI meeting of June 2013 it appears that EPO is planning to abandon the literal approach in the application of Art. 123(2) EPC The issue is which criteria will be set by the EPO 17
Art 123(2) EPC US perspective Future developments Points of discussion Possibility of establishing EPO criteria allowing an open ended reading of the description Taking into account Art. 84 EPC- terms of a claim should be commensurate with, or be justified by, the invention's technical contribution to the art as a counterpart to US convey possession? Common factors with US practice: correlation between structure and function, relevance of level of skill and knowledge of the art 18
Art 123(2) EPC US perspective Future developments Points of discussion (ct d) Possibility of establishing EPO criteria allowing an open ended reading of the description Taking into account protocol of Art 69 EPC and related concepts of interpretation of the claims, equivalents and fair protection also when examining Art 123(2) EPC not just Art. 123(3) EPC as the counterpart to the claim construction factor of the written description? Common factors with US practice are interpretation of the claims and criteria for reasonable interpretation 19
THANK YOU - QUESTIONS? Enrica Bruno STEINFL(&)BRUNO LLP 155 N. Lake Ave, Suite 700 Pasadena, CA 91101 Tel. (626)792-0536 Fax. (626)792-1342 E-mail: bruno@sbpatlaw.com 20