1.2. Content of the application as filed: Parts of the application which determine the disclosure of the invention
1.2.1 Description, claims and drawings
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Regarding the concept of the content of the application as filed, G 3/89 (OJ 1993, 117) and G 11/91 (OJ 1993, 125) laid down that it related to the parts of the European patent application which determined the disclosure of the invention, namely the description, the claims and the drawings. Note however that since the revision of the EPC, when determining the application documents "as filed", account has to be taken of R. 40 and 56(3) EPC.
Amendments can only be made within the limits of what a skilled person would derive from the whole of these documents as filed (G 2/10, OJ 2012, 376). In T 676/90 the board considered that the content of an application was defined not only by features mentioned or shown therein but also by their relationship to each other. Accordingly, it found that a figure could never be interpreted in isolation from the overall content of the application but only in that general context.
In T 1544/08 the board held that, if the drawings of the originally filed application were in colour, it was these figures which must be used as the basis for determining whether subsequently filed figures contained added subject-matter within the meaning of Art. 123(2) EPC.
- T 1121/17
The criteria set out in the Guidelines for Examination in the European Patent Office (November 2016 update) at paragraph H.IV.3.5, concerning the allowability of amendments under Article 123(3) EPC, are inappropriate for the assessment of compliance with Article 123(2) EPC (see point 1.5.1 of the reasons).
- Case law 2020
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In T 1121/17 the application as filed concerned a composition comprising a peroxide source (in amounts defined by a range) and an adhesion system. Claim 1 of the main request differed from claim 1 of the application as filed inter alia in that it introduced a feature that limited the nature of the peroxide source (feature (ii)). In first-instance proceedings, the examining division had raised an objection under Art. 123(2) EPC with respect to the then pending auxiliary request against a limitation corresponding to feature (ii). In its reasoning the examining division relied on Guidelines section H-IV, 3.5 (November 2016 version; same paragraph in H-IV, 3.4 of the November 2019 version) dealing with allowability of amendments under Art. 123(3) EPC. This section related to cases in which the initial claim was directed to a composition comprising a component in an amount which was defined by a numerical range of values and in which this claim was then amended by restricting the breadth of that component. In a claim directed to an openly defined composition such a restriction could have the effect of broadening the scope of protection of the claim. The examining division concluded from this that such amended claims contained added subject-matter, as restricting the breadth of the component meant that certain materials were no longer limited by the claim, and therefore could be present in amounts which were excluded from the claim as originally filed. The board however emphasised that the criterion referred to in the Guidelines was inappropriate for the assessment of compliance with Art. 123(2) EPC. The relevant question for the purposes of Art. 123(2) EPC was whether the amendments remained within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, from the whole of the application as filed ("gold standard" of G 2/10, OJ 2012, 376). An amendment having the effect of broadening the scope of protection of a claim as originally filed did not infringe Art. 123(2) EPC if the amended subject-matter derived directly and unambiguously from the whole of the application as filed. In the case in hand the amendment at issue resulted from the literal incorporation of dependent claim 3 into claim 1 and therefore did not present the skilled person with new technical information.