1.3. Standard for assessing compliance with Article 123(2) EPC
1.3.1 Gold standard: directly and unambiguously derivable
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; G 2/10, OJ 2012, 376, referring to this test as "gold standard"; confirmed for disclosed disclaimers in G 1/16, OJ 2018, A70; for undisclosed disclaimers, see however chapter II.E.1.7.2 c)). After the amendment the skilled person may not be presented with new technical information (G 2/10).
In T 1937/17 the board held that, other than for the purposes envisaged in G 1/93 (OJ 1994, 541), a "technical contribution" was of no relevance when deciding on the allowability of amendments under Art. 123(2) EPC. Instead, the gold standard set out in G 2/10 was the only criterion that had to be applied. Similarly, in T 768/20 the board found that G 1/93 concerned a limited exception (for disclaimers) to the general rule – referred to as the "gold standard" – governing the allowability of amendments. On the basis of a detailed analysis of the case law of the Enlarged Board of Appeal, the board rejected the argument made by the appellant (patent proprietor) that the gold standard was limited to amendments of the type making a technical contribution to the claimed invention.
As can be seen from the "gold standard", the assessment of the requirements of Art. 123(2) EPC is to be done from the standpoint of the skilled person (see chapter II.E.1.3.2 "Standpoint of the skilled person" below).
The subject-matter must be at least implicitly disclosed (T 860/00; see also G 2/10, OJ 2012, 376), see in this chapter II.E.1.3.3 "Implicit disclosure" below.
The boards have emphasised with regard to various tests developed for different cases of amendments that they are only meant to provide an indication of whether an amendment complies with Art. 123(2) EPC as interpreted according to the "gold standard". They may assist in determining the allowability of an amendment but do not take the place of the "gold standard" and should not lead to a different result. See e.g. T 648/10, T 2561/11, T 46/15, T 1420/15, T 1472/15, T 553/15, T 85/16, T 1189/16 and T 437/17 with regard to the "essentiality test", T 1471/10 and T 1791/12 with regard to "intermediate generalisation", T 1255/18 with regard to the "two-lists principle" and T 873/94, OJ 1997, 456, T 60/03 and T 150/07 with regard to the "novelty test"; note however that special criteria apply for undisclosed disclaimers; for more details on these tests, see chapter II.E.1.4.4 "The essentiality or three-point test", chapter II.E.1.9. "Intermediate generalisations", chapter II.E.1.3.7 "Novelty test" and chapter II.E.1.7. "Disclaimers".
In T 1121/17 the board recalled that the relevant question for the purposes of Art. 123(2) EPC was whether the amendments remained within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, from the whole of the application as filed ("gold standard" of G 2/10, OJ 2012, 376). An amendment having the effect of broadening the scope of protection of a claim as originally filed, for instance by generalising it so as to allow the presence of some materials in amounts which were originally excluded from the claim, did not infringe Art. 123(2) EPC if the amended subject-matter derived directly and unambiguously from the whole of the application as filed.
- 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.
- Annual report: case law 2022
- Summaries of decisions in the language of the proceedings