2.1. Subject-matter extending beyond content of the earlier application
2.1.1 Directly and unambiguously derivable from content of earlier application as filed
The subject-matter of a divisional application must be directly and unambiguously derivable from the earlier application as filed (see G 1/06, OJ 2008, 307). More specifically, subject-matter of the divisional must be directly and unambiguously derivable by the skilled person from the disclosure of the earlier application as filed, as determined by the totality of its claims, description and figures when read in context (see consolidated cases T 1500/07, T 1501/07, T 1502/07; see also T 961/09).
Subject-matter claimed in the divisional application has to be compared with the content of the earlier (parent) application as filed, whereby the content of an application comprises the whole disclosure, express or implied, that is directly and unambiguously derivable from the application including information which is implicit and immediately and unambiguously apparent to a person skilled in the art reading the application (T 423/03). In other words, it has to be established whether technical information has been introduced into the divisional application which a skilled person would not have objectively and unambiguously derived from the earlier application as filed (T 402/00).
The "content" within the meaning of Art. 76 EPC is to be interpreted as the whole technical content of the earlier application (G 1/05 date: 2007-06-28, OJ 2008, 271, point 9.2 of the Reasons). Art. 76 EPC does not require that the content be disclosed in the claims of the earlier application. It only requires that the subject-matter be disclosed as such anywhere in the whole disclosure of the earlier application (T 211/95, T 1026/03, T 314/06).
The case law on the question of when subject-matter is directly and unambiguously derivable (including decisions applying Art. 76 EPC) is summarised in chapter II.E.1.
- 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”