1. Article 123(2) EPC – added subject-matter

Catchword: 

1. There is no provision stipulating that examples within the meaning of Rule 42(1)(e) EPC should not be in the form of claim-like clauses, i.e. in the form of one or more independent clauses followed by a number of clauses referring to previous clauses, at the end of or in another part of the description. There is no justification for deleting such examples just because they were drafted as claim-like clauses. They are to be treated like any other part of the description and thus, inter alia, must support the claims (Article 84 EPC). (Reasons 3.4 and 3.5)  2. It is a general and overarching objective, and as such also a "requirement" of the Convention, that authorities, courts and the public interpreting the claims at a later stage should, as far as possible, arrive at the same understanding of the claimed subject-matter as the EPO bodies deciding on the patentability of the same subject-matter. The only tool for achieving this objective is the patent specification as the expression of a unitary legal title. The description, as an integral part of the patent specification, should therefore also serve this overriding objective, i.e. it should provide a common understanding and interpretation of the claims. If the description contains subject-matter which manifestly impedes a common understanding, it is legitimate to insist on its removal under Articles 84 and 94(3) EPC and Rules 42, 48 and 71(1) EPC. (Reasons 5.5.3)  3. The board approves the practice where instead of a direct removal, i.e. the deletion of the subject-matter not covered by the claims, a "removal" by way of an appropriate statement is made, leaving the technical disclosure unaffected. (Reasons 5.7.2)  4. A referral to the Enlarged Board of Appeal whose sole purpose is to correct the Guidelines and which is not necessary either for ensuring a uniform case law within the boards or for the board's decision is not admissible. Such a referral could be perceived as an attempt to encroach on the President's powers under Article 10(2)(a) EPC. (Reasons 8.2.2)

Catchword:

For assessing an intermediate generalisation in an amended claim for compliance with Article 123(2) EPC it has to be established whether, because of this generalisation, the subject-matter of the claim extends beyond what was, be it explicitly or implicitly, directly and unambiguously disclosed to the person skilled in the art using common general knowledge in the application as filed. This is the "gold" standard for assessing any amendment for its compliance with Article 123(2) EPC (G 2/10, point 4.3 of the Reasons). If an amended claim comprises only some features of an originally disclosed combination and the features left out of the claim were understood, by the person skilled in the art, to be inextricably linked to the claimed ones, the claim includes subject-matter extending beyond the application as filed. This is the case if the person skilled in the art would have regarded the omitted features to be necessary for achieving the effect associated with the added features. In such a situation the amended claim conveys the technical teaching that the effect can be obtained with the claimed features alone, which is in contrast with and extends beyond the original disclosure that the whole combination of features was needed. The criteria for assessing the validity of a priority for the subject-matter of a claim as set out in G 2/98, no matter whether or not the claim includes intermediate generalisations, correspond to the "gold" standard for assessing any amendment for its compliance with Article 123(2) EPC. In view of Article 88(4) EPC, it is not required that this subject-matter be disclosed in the form of a claim or in the form of an embodiment or example specified in the description of the application from which the priority is claimed. In the passage in point 4 of the Reasons of G 2/98 these items, as derived from the expression "in particular", are simply listed as exemplary parts of the application documents. (Reasons, points 2.4 and 3.2)

Catchword: 

The mere fact that features are described in the application as filed in terms of lists of more or less converging alternatives does not give the proprietor a "carte blanche" for freely combining features selected from a first list with features selected from a second list disclosed in the application as filed. Any such amendment will only be allowable under Article 123(2) EPC if it complies with the "gold standard" defined in decision G 2/10 (reasons 2.18 of the present decision).

Catchword:

Any unclarity that may arise from an ambiguity in an application as filed is to the detriment of a patent proprietor, who is ultimately responsible for the drafting of the application as filed and its claims. The fact that a feature in the application as filed is unclear cannot therefore justify or excuse the complete deletion of the unclear feature or its replacement by another feature if this results in an extension beyond the content of the application as filed. What prompted a patent proprietor to make a particular amendment to the claims cannot have any influence on the outcome of the assessment of the ground for opposition under Article 100(c) EPC (point 8 of the Reasons).

Catchword: 

Following the explicit reference in G 2/10 to the applicability of the existing jurisprudence regarding the singling out of compounds or sub-classes of compounds or other so-called intermediate generalisations not specifically mentioned nor implicitly disclosed in the application as filed (see G 2/10, section 4.5.4), the Board understands the notion of  "the remaining generic group of compounds differing from the original group only by its smaller size" versus "singling out an hitherto not specifically mentioned sub-class of compounds" and the notion of  "mere restriction of the required protection" versus "generating another invention" or "suitable to provide a technical contribution to the originally disclosed subject-matter"  as developed in the jurisprudence (see in section Case Law of the Boards of Appeal, supra, section II.E.1.6.3) not as modifications of the "gold standard" for the assessment of amendments in the form of additional or alternative criteria, but rather as considerations which may arise from the application of this standard when assessing amendments by deletion of options from multiple lists and which may affirm the result of such assessment. In particular, the observation that a deletion of options from multiple lists is an amendment suitable to provide a technical contribution to the originally disclosed subject-matter, can be used to support the assessment that this amendment is not in compliance with the "gold standard".

Catchword:

The description of a drawing may be inextricably linked to the specific disclosure of this drawing. If a feature in the description of the drawing is extracted from the very specific context of the drawing in order to be included in a claim, the specific disclosure of the drawing must be taken into account. If there is no literal support for this specific disclosure in the application as filed which could be used for supplementing the feature used for amending the claim, it may not be possible to avoid an unallowable intermediate generalisation. This may in particular occur if a feature from a specific and detailed embodiment is placed in the context of a schematic drawing. This may lead to a trap-like situation. (Reasons, 2.8.4 and 2.9)

Catchword: 

In view of the principles of multiple priorities and partial priority: undisclosed disclaimer based on a disclosure in an earlier application by the same applicant not allowed.

Catchword:

In general, an auxiliary request which is directed to a combination of granted dependent claims as new independent claim, and filed after the statement of grounds or the reply thereto, will be an amendment of the party's appeal case within the meaning of Article 13 RPBA 2020. See reasons 9. A skilled person assessing the contents of the original application documents uses his technical skill. If they recognise that certain elements of the original application documents are essential for achieving a technical effect then adding that technical effect to a claim without also adding the essential elements can create fresh subject-matter even if the essential elements are originally portrayed as being optional. See reasons 3.6.3.

Catchword:

To assess whether an amended patent claim contains added subject-matter under Article 123(2) EPC, the claimed subject-matter must first be determined by interpreting the claim from the perspective of the person skilled in the art. In a second step, it must be assessed whether that subject-matter is disclosed in the application as filed (Reasons 1.3.8 to 1.3.10).

Catchword: 

1.) Article 69 EPC in conjunction with Article 1 of the Protocol thereto can and should be relied on when interpreting claims and determining the claimed subject-matter in proceedings before the EPO, including for the purpose of assessing compliance with Article 123(2) EPC (Reasons 3.1-3.15).  2.) Although Article 69(1), second sentence, EPC requires that generally account be taken of the description and the drawings when interpreting a claim, the primacy of the claims according to Article 69(1), first sentence, EPC limits the extent to which the meaning of a certain claim feature may be affected by the description and the drawings (Reasons 3.16-3.16.2).  3.) Claim interpretation is overall a question of law which must as such ultimately be answered by the deciding body, and not by linguistic or technical experts. It does, however, involve the appraisal of linguistic and technical facts which may be supported by evidence submitted by the parties (Reasons 3.17).

Catchword: 

1. Mere inconsistencies among the indications in the request for grant of a European patent (EPO Form 1001), and between some of them and the originally filed application documents, are not sufficient to prove an alleged obvious error or the obviousness of a correction offered under Rule 139 EPC. 

2. The ban on corrections under Rule 139 EPC by replacement of at least the complete description is categorical.