1. Article 123(2) EPC – added subject-matter
1.1. General principles
According to Art. 123(2) EPC the European patent application or the European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed. The revision of the EPC has introduced a purely editorial change to the wording of Art. 123(2) EPC.
The concept of "content of the application as filed" relates to the parts of the European patent application which determine the disclosure of the invention, namely the description, the claims and the drawings (G 3/89, OJ 1993, 117, and G 11/91, OJ 1993, 125). See in this chapter at II.E.1.2. "Content of the application as filed: Parts of the application which determine the disclosure of the invention" below.
The underlying idea of Art. 123(2) EPC is that an applicant should not be allowed to improve his position by adding subject-matter not disclosed in the application as filed, which would give him an unwarranted advantage and could be damaging to the legal security of third parties relying on the content of the original application (see G 1/93, OJ 1994, 541); otherwise, at a later stage the public could be faced with claims extending beyond what was disclosed in the application as filed and published (T 740/91 and T 1227/10). The public may not be confronted with an extent of protection, which could not have been established by a skilled person having studied the whole content of the technical disclosure of the originally filed patent application (T 157/90; see also T 187/91 and T 2327/18, which cites G 2/10, OJ 2012, 376, point 4.5.5 of the Reasons).
The "gold standard" (G 2/10, OJ 2012, 376) for assessing compliance with Art. 123(2) EPC is the following: 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). After the amendment the skilled person may not be presented with new technical information (G 2/10; see however G 1/16 for undisclosed disclaimers). For details, see in this chapter II.E.1.3. "Standard for assessing compliance with Article 123(2) EPC" further below; for more details on G 1/16, OJ 2018, A70, see chapter II.E.1.7."Disclaimer" below.
Art. 123(2) EPC applies to all amendments to the patent application or patent. These include corrections of the description, claims or drawings under R. 139, second sentence, EPC (for details, see in this chapter II.E.4. "Correction of errors in the description, claims and drawings – Rule 139 EPC").
The Enlarged Board has stressed the importance of applying a uniform concept of disclosure (with reference to Art. 54, 87 and 123 EPC; see G 2/10, OJ 2012, 376, point 4.6 of the Reasons, citing G 1/03, OJ 2004, 413; see also G 1/15, OJ 2017, A82, with reference to G 2/98, OJ 2001, 413). See also e.g. T 330/14.
In the case of divisional applications, the same principles are to be applied for determining whether subject-matter extends beyond the content of the earlier application as filed (G 1/05 date: 2007-06-28, OJ 2008, 271, point 5.1 of the Reasons). The decisions dealing with such cases are therefore also reported in this chapter.
The same principles also apply to the ground for opposition under Art. 100(c) EPC.
The ground for opposition under Art. 100(c) EPC and the corresponding requirement of Art. 123(2) EPC in regard to any amendment carried out on the patent in the course of the opposition and opposition appeal proceedings are of equal fundamental importance compared to other requirements, such as e.g. novelty, inventive step or sufficiency of disclosure, when it comes to deciding whether a patent can be maintained; also, extension of subject-matter in the terms of Art. 123(2) EPC is not a question of "form" of the patent, which might fall under the heading of a "formal requirement", but a substantive one (T 2171/14).
- T 1054/22
Abstract
In T 1054/22 the examining division had concluded that claim 1 of the main request did not fulfil requirements of Art. 123(2) or 76(1) EPC, among other things, and it refused the patent application.
In its submissions on appeal, the applicant had argued that applying the criteria of G 1/93 (point 16 of the Reasons), the amendments did not result in an unwarranted advantage. Amended claim 1 of the main request was based on the earlier application as filed. This applied in particular to the amendments concerning the omega-6 to omega-3 ratio of 4:1 or greater and the concentration of omega-6 fatty acids (4-75% by weight of total lipids) and omega-3 fatty acids (0.1-30% by weight of total lipids).
The board dismissed the appeal. It explained that determining whether an amendment complied with the requirements of Art. 123(2) and 76(1) EPC was assessed using the "gold standard". This term was coined in G 2/10, in which the jurisprudence developed by the Enlarged Board in opinion G 3/89 and decision G 11/91 was confirmed.
The board explained that G 1/93 primarily concerned a case in which a granted claim could not be maintained unamended in opposition proceedings because the claim was found to contravene Art. 123(2) EPC. The examining division had allowed an amendment that should not have been allowed. As explained in G 2/10 (point 4.3 of the Reasons, last paragraph), G 1/93 was not intended to modify the "gold standard".
According to G 1/93, the purpose of Art. 123(2) EPC (and Art. 76(1) EPC) was to prevent an applicant from gaining an unwarranted advantage by obtaining patent protection for something it had not properly disclosed on the date of filing of the application. An added feature limiting the scope of the claim may still contravene Art. 123(2) EPC. An example of this, explicitly mentioned in G 1/93, is a limiting feature that creates an inventive selection not disclosed in the application as filed or otherwise derivable therefrom.
In the case in hand, value ranges had been added to claim 1 of the main request, in features a), (i) and (ii). The question was whether the skilled person would have derived these amendments directly and unambiguously, using common general knowledge, from the entirety of the earlier application as filed. What had to be examined was not only whether there was a basis for each of the features added by the amendments but also whether the skilled person would have derived the combination of features a), (i) and (ii), and that combination of features alone, from the earlier application as filed.
The board concluded that no basis could be found in the earlier application as filed for the combination of the concentration of omega-6 fatty acids of 4-75% by weight of total lipids and omega-3 fatty acids of 0.1-30% by weight of total lipids (feature (i) of claim 1 of the main request). As to the ratio (feature a) of claim 1 of the main request), there was no basis in the earlier application as filed for an open-ended ratio of omega-6 to omega-3 fatty acids of 4:1 or greater. Thus, claim 1 of the main request contravened Art. 76(1) EPC.