1.2. Content of the application as filed: Parts of the application which determine the disclosure of the invention
1.2.4 Cross-references to other documents – incorporation by reference
In T 6/84 (OJ 1985, 238) the board took the view that structural features of a means for performing a chemical process (here the catalyst "offretite"), which were not mentioned in the application documents themselves but in a document (here a Canadian patent specification) to which they referred, could be incorporated into a patent claim if they unequivocally formed part of the invention for which protection was sought (see also T 590/94). However, it was not permissible to single out a particular one of their number (here a silica/alumina ratio) in the absence of evidence that this feature alone was a sufficient characterisation. It was instead necessary to recite fully the other essential components of the structure and the diffraction pattern figures which belonged together, as originally disclosed and defined in that document.
In T 689/90 (OJ 1993, 616) the board decided that features disclosed only in a cross-referenced document which was identified in the description as filed were prima facie not within "the content of the application as filed". Only under particular conditions would adding them to a claim not be an infringement of Art. 123(2) EPC 1973, namely if (a) the description of the invention as filed left the skilled reader in no doubt that protection was sought for those features; (b) they helped achieve the invention's technical aim and thus formed part of the solution to the technical problem underlying the invention claimed; (c) they implicitly clearly belonged to the description of the invention contained in the application as filed (Art. 78(1)(b) EPC 1973) and thus to the content of the application as filed (Art. 123(2) EPC 1973); and (d) they were precisely defined and identifiable within the total technical information contained in the reference document. In the case at issue these requirements were not fulfilled. See also T 196/92, T 558/03, T 1497/06, T 1415/07, T 1378/08, T 664/11, T 1451/12, T 2498/12, T 672/14; see also T 474/05 in which the reference in the application to a document was within a specific context, and the amendment went beyond this context and was thus not allowable; see also T 2477/12, applying T 689/90 in the context of Art. 76(1) EPC where the priority application, containing sequence listings, had been "incorporated by reference" in the parent application.
In T 1125/17 the board emphasised that requirement (a) of T 689/90 was very stringent. With reference to T 1415/07, it highlighted that it had to be unambiguously derivable to the skilled person which features of the application were to be taken from the reference document. A mere mention of a prior art document as an "example" was normally insufficient to identify which features or groups of features were of particular relevance for the citing application.
In T 737/90 the board held that a cross-referenced document could only be taken into account if the relevant addressees of the application containing the reference had ready access to the referenced document (the EPO before publication of the application and the public after it).
On incorporation by reference in the context of novelty, see chapter I.C.4.2 above.
- T 1084/22
Abstract
In T 1084/22 the patent concerned insulating glazing units, which typically consist of two glass sheets separated by a perimeter spacer. Specifically, it related to a method for creating such units. This involved providing a spacer body with adhesive on both sides in a storage container. Claim 1 was amended during examination to specify that the adhesive was a pressure sensitive adhesive.
The board was not convinced by the argument put forward by the appellant (patent proprietor) which aimed to show that the feature was implicitly derivable from the description.
The board found that the second line of argument submitted by the appellant was not convincing either. The appellant had submitted that the reference in the description of the application as filed to HBP8 (a US patent), which mentioned pressure sensitive adhesives, also provided an original basis for the added feature.
The board explained that the appealed decision referred to conditions developed in the case law for being able to incorporate features from a cross-referenced document (see in particular T 689/90). Thus, only under particular conditions would adding features from a cross-referenced document to a claim not be contrary to Art. 123(2) EPC, namely if (a) the description of the invention as filed left the skilled reader in no doubt that protection was sought or may be sought for those features; (b) that they implicitly clearly belonged to the description of the invention contained in the application as filed and thus to the content of the application as filed; and (c) that they were precisely defined and identifiable within the total technical information contained in the reference document.
The board viewed these conditions, along with alternative or reformulated criteria found in the cases cited in Case Law of the Boards of Appeal, 10th ed. 2022, II.E.1.2.4, as different applications of the "gold standard". While different tests had been developed, they could only assist in determining whether an amendment complied with Art. 123(2) EPC, but did not replace the "gold standard" and should not lead to a different result. Thus, the board considered it sufficient and appropriate to apply the "gold standard" principle to this case.
In a case of incorporating features from a cross-d document, the "gold standard" essentially required that the skilled reader had to be able to directly and unambiguously derive which subject-matter of the incorporated document was part of the original application. In other words, which features of the application were to be taken from the referenced document.
Therefore, the question that the board needed to answer was whether, in the absence of any hindsight or knowledge of the amended claim, the skilled person reading the original documents would directly and unambiguously derive from the cross-reference to HBP8 that the adhesive's pressure sensitive nature was a feature to be incorporated from HBP8 into the original application. This required that when the skilled reader of the application as filed consulted HPB8 as instructed it was immediately clear to them that it was that feature and that feature alone that was to be included. If that feature was disclosed in a certain technical context in the cross-referenced document, then, applying the same standard as for intermediate generalisations, isolation of the feature was justified only in the absence of any clearly recognisable functional or structural relationship.
In the board's view it was neither immediately clear to the skilled person from the cross-reference to HBP8 that it was the feature of the adhesive being pressure sensitive that was to be included, nor that that feature could be taken out of its context in HPB8.
Hence, the board concluded that the amendment to claim 1 specifying the adhesive as "pressure sensitive" extended the patent's subject matter beyond the content of the original application.