Exceptions to the "gold standard" (point 2.2 of the reasons)

A new definition or the re-defining of a known term does not add subject matter, if there is pertinent disclosure in the application as a whole (point 18).

If a claim is ambiguous/unclear, all technically reasonable claim interpretations must be considered. If one of those interpretations contains matter that extends beyond the content of the application as originally filed, it must be concluded that added subject-matter is present (reasons point 11).

(1) With respect to the assessment of compliance with Article 123(2) EPC, the fact that a claim of a patent is to be construed by a mind willing to understand and not a mind desirous of misunderstanding does not mean that the description and the drawings have automatically to be consulted when an "ambiguous" feature (i.e. a feature which at least theoretically allows more than one interpretation) occurs in the claim, or where the claim as a whole includes one or more inconsistencies, to resolve that ambiguity or inconsistency. Rather, the claim should essentially be read and interpreted on its own merits (see points 2.6.1 and 2.6.2 of the Reasons).

(2) As to the issue of an "inescapable trap", see point 4 of the Reasons.

See points 3.1 to 3.7.3 of the Reasons

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.