2.1. Subject-matter extending beyond content of the earlier application
Overview
2.1. Subject-matter extending beyond content of the earlier application
The wording of Art. 76(1) EPC and the wording of Art. 123(2) EPC is so similar (in all three languages) that it is clear that exactly the same principles are to be applied for both types of cases when determining what extends beyond the content of the earlier application (G 1/05 date: 2007-06-28, OJ 2008, 271). The mere fact that the wording of the French version differs (Art. 76(1), second sentence, EPC: "éléments"; Art. 123(2) EPC: "objet") does not justify a different interpretation (T 276/97). The case law on added subject-matter is summarised in chapter II.E.1.
Art. 76(1) and Art. 123(2) EPC have the same purpose, i.e. to create a fair balance between the interests of applicants and patentees, on the one hand, and competitors and other third parties on the other. The idea underlying these provisions 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 (G 1/93, OJ 1994, 541; T 873/94, OJ 1997, 456; T 276/97, T 701/97). Both Art. 76(1) EPC 1973 and Art. 123(2) EPC 1973 enshrine the principle that before grant the legal security of third parties is sufficiently protected by the prohibition of extending the content of the application by amendment beyond what was originally disclosed (T 1387/05).
Since the underlying requirements of Art. 123(2) and 76(1) EPC are the same, there is no harm done if the examining division incorrectly refers to Art. 123(2) EPC (instead of Art. 76(1) EPC) when refusing a divisional application on the grounds that its subject-matter extended beyond the parent application (T 542/94).
- T 795/21
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".
- 2023 compilation “Abstracts of decisions”