1.3. Standard for assessing compliance with Article 123(2) EPC
1.3.1 Gold standard: directly and unambiguously derivable
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Any amendment to the parts of a European patent application or of a European patent relating to the disclosure (the description, claims and drawings) is subject to the mandatory prohibition on extension laid down in Art. 123(2) EPC and can therefore, irrespective of the context of the amendment made, only be made 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 these documents as filed (G 3/89, OJ 1993, 117; G 11/91, OJ 1993, 125; G 2/10, OJ 2012, 376, referring to this test as "gold standard"; confirmed for disclosed disclaimers in G 1/16, OJ 2018, A70; for undisclosed disclaimers, see however chapter II.E.1.7.2 c)). After the amendment the skilled person may not be presented with new technical information (G 2/10).
As can be seen from the "gold standard", the assessment of the requirements of Art. 123(2) EPC is to be done from the standpoint of the skilled person (see section II.E.1.3.2 "Standpoint of the skilled person" below).
The subject-matter must be at least implicitly disclosed (T 860/00; see also G 2/10, OJ 2012, 376), see in this chapter II.E.1.3.3 "Implicit disclosure" below.
The boards have emphasised with regard to various tests developed for different cases of amendments that they are only meant to provide an indication of whether an amendment complies with Art. 123(2) EPC as interpreted according to the "gold standard". They may assist in determining the allowability of an amendment but do not take the place of the "gold standard" and should not lead to a different result. See e.g. T 2561/11, T 755/12, T 2095/12, T 2599/12, T 46/15, T 1472/15 and T 553/15 with regard to the "essentiality test", T 1471/10 and T 1791/12 with regard to "intermediate generalisation", and T 873/94, OJ 1997, 456, T 60/03 and T 150/07 with regard to the "novelty test"; note however that special criteria apply for undisclosed disclaimers; for more details on these tests, see chapter II.E.1.4.4 "The essentiality or three-point test", chapter II.E.1.9. "Intermediate generalisations", chapter II.E.1.3.7 "Novelty test" and chapter II.E.1.7. "Disclaimers".
- T 768/20
Exceptions to the "gold standard" (point 2.2 of the reasons)
- T 1362/15
See points 3.1 to 3.7.3 of the Reasons
- Case law 2019
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In T 1362/15 the board issued a provisional opinion that the "US-style" dependency of the original claims (i.e. with the relevant dependent claims separately referring back to the independent claim) did not seem to provide a basis for the combination claimed in claim 10 of auxiliary requests 2 to 4. The appellant (proprietor) requested that questions be referred to the Enlarged Board to ask firstly whether it complied with Art. 123(2) EPC if the features of a plurality of dependent claims were incorporated into an independent claim in a situation in which the application as originally filed included a claims set with a "US-style" dependency and an embodiment in which the features of the independent claim and the dependent claims were shown in combination; and secondly whether the fact that the embodiment possibly showed additional features might result in a violation of Art. 123(2) EPC. The board did not consider this referral to be necessary for, inter alia, the following reasons: Concerning the issues at hand, the Enlarged Board has already clearly defined the general principles which govern the requirements of Art. 123(2) EPC in, inter alia, G 2/98 (OJ EPO 2001, 413) and G 2/10 (OJ EPO 2012, 376), i.e. that the skilled person must be able to derive the claimed subject-matter directly and unambiguously, using common general knowledge, and, seen objectively and relative to the date of filing, from the original application as a whole. Regarding the "US-style" claim dependency, the board noted that there was no actual limitation regarding the possible combinations of features in the claims of a US application. 35 U.S.C 112 stated only that a multiple dependent claim shall not serve as a basis for any other multiple dependent claim. This was however not an insurmountable limitation. The appellant had further argued that, in cases where the amended claim was a combination of features containing features from originally filed dependent claims that did not respect the original dependency, the existence of an embodiment in the disclosure containing all the combined features (albeit with even more features) should be enough to fulfil the requirement of Art. 123(2) EPC and this was a relevant point of law in which boards diverged considerably. The board analysed the allegedly diverging decisions T 2619/11 and T 1414/11 and came to the conclusion that both decisions relied on the same criteria and did not contradict each other.