1.11.3 Addition to the claim of features originally presented as prior art

In T 912/08 the board held that an amendment that resulted in features originally presented as part of the prior art, being then presented as the invention could be damaging to the legal security of third parties relying on the content of the original application and added subject-matter contrary to Art. 123(2) EPC.

In T 1652/06 the board drew a distinction as to whether in the application as originally filed the feature in question was disclosed as part of the background art or as part of the invention. In the case at issue, the feature was taken from the background art and could not serve as basis for the amendment (see also T 626/11).

However, in T 293/12 the board distinguished its case from T 1652/06 and underlined that a case-by-case analysis of the structure and content of the description was necessary in order to come to a conclusion for a particular case. In the case in hand, a sentence under the heading "State of the art" was clearly intended to provide the skilled person with a definition of the disease to be treated and therefore related to the teaching of the invention.