1. ‍‍Article 123(2) EPC – added subject-matter

ABl. EPA 2021, Zusatzpublikation 2
OJ EPO 2021, Supplementary publication 2
JO OEB 2021, Publication supplémentaire 2

In T 1362/15 the board issued a provisional opinion that the "US-style" dependency of the original claims (i.e. with the relevant dependent claims separately referring back to the independent claim) did not seem to provide a basis for the combination claimed in claim 10 of auxiliary requests 2 to 4. The appellant (proprietor) requested that questions be referred to the Enlarged Board to ask firstly whether it complied with Art. 123(2) EPC if the features of a plurality of dependent claims were incorporated into an independent claim in a situation in which the application as originally filed included a claims set with a "US-style" dependency and an embodiment in which the features of the independent claim and the dependent claims were shown in combination; and secondly whether the fact that the embodiment possibly showed additional features might result in a violation of Art. 123(2) EPC. The board did not consider this referral to be necessary for, inter alia, the following reasons: Concerning the issues at hand, the Enlarged Board has already clearly defined the general principles which govern the requirements of Art. 123(2) EPC in, inter alia, G 2/98 (OJ EPO 2001, 413) and G 2/10 (OJ EPO 2012, 376), i.e. that the skilled person must be able to derive the claimed subject-matter directly and unambiguously, using common general knowledge, and, seen objectively and relative to the date of filing, from the original application as a whole. Regarding the "US-style" claim dependency, the board noted that there was no actual limitation regarding the possible combinations of features in the claims of a US application. 35 U.S.C 112 stated only that a multiple dependent claim shall not serve as a basis for any other multiple dependent claim. This was however not an insurmountable limitation. The appellant had further argued that, in cases where the amended claim was a combination of features containing features from originally filed dependent claims that did not respect the original dependency, the existence of an embodiment in the disclosure containing all the combined features (albeit with even more features) should be enough to fulfil the requirement of Art. 123(2) EPC and this was a relevant point of law in which boards diverged considerably. The board analysed the allegedly diverging decisions T 2619/11 and T 1414/11 and came to the conclusion that both decisions relied on the same criteria and did not contradict each other.

In T 1218/14 the board clarified the meaning of the criterion mentioned in G 1/03 (OJ EPO 2004, 413) that an accidentally novelty-destroying disclosure had to be completely irrelevant for inventive step. The finding that the claimed subject-matter was inventive in view of D1 as a secondary document did not mean that D1 was irrelevant to inventive step within the meaning of this criterion. This criterion had to be understood not as an alternative, or additional criterion, but as a consequence of the criterion in G 1/03 and G 1/16 (OJ EPO 2018, A70) that, from a technical point of view, said disclosure was so unrelated and remote that the person skilled in the art would never have taken it into consideration when making or working the invention.

In G 1/16 (OJ EPO 2018, A70) the Enlarged Board had endorsed the concept that the undisclosed disclaimer may not be related to the teaching of the invention and specified that the question to be asked in this context is not whether an undisclosed disclaimer quantitatively reduces the original technical teaching – this is inevitably the case – but rather whether it qualitatively changes it in the sense that the applicant's or patent proprietor's position with regard to other requirements for patentability is improved.

In T 660/14 claim 1 of auxiliary request 4 contained two additional features according to which the operating and control members of the claimed bicycle control device were pivotable about non-common offset axes and were not pivotable commonly about either of the offset axes. The board, applying the criterion of G 1/03 (OJ EPO 2004, 413) as interpreted by G 1/16 (OJ EPO 2018, A70), considered that the disclaimers provided a technical contribution to the subject-matter disclosed. Claims 7 and 8 as filed addressed the operating member and the control member being arranged to be pivotable about parallel and/or offset axes. As indicated in the description, this may be seen as providing ergonomic advantages. The board concluded from this that the disclaimers introduced a technical difference to the amended claim when compared to the content of the original application. The pivotable arrangement of the operating and control members about the axes was of a technical nature, not least through the disclosure of the ergonomic benefits; the board concluded the disclaiming of this arrangement would have to be as well. The board held that this finding was furthermore confirmed by considering whether merely a quantitative change to the original technical teaching had occurred or indeed whether a qualitative change had resulted from the introduction of the undisclosed disclaimers (G 1/16). By disclaiming both common offset axes and common pivoting about either of the offset axes, the ergonomic considerations identified in the application as filed had been modified, resulting in a qualitative change to the originally disclosed technical teaching in the sense that the proprietor's position with regard to inventive step would be changed.

In T 437/14, taking into account the answers to the questions on undisclosed disclaimers which it referred to the Enlarged Board in case G 1/16 (OJ EPO 2018, A70), the board recalled that, for undisclosed disclaimers, the proper test is whether the criteria of G 1/03 (OJ EPO 2004, 413) are fulfilled. The gold standard test referred to in G 2/10 (OJ EPO 2012, 376) is not the relevant test. The board had already decided in its interlocutory decision of 17 October 2016 that the disclaimers inserted into claim 1 were undisclosed disclaimers, that they established novelty over accidental anticipations under Art. 54(2) EPC and that they did not remove more than what was necessary to restore novelty over those documents. In the present decision the board further considered that there was no evidence that the disclaimers provided a technical contribution adding subject-matter extending beyond the content of the application as filed. In particular, the board noted that no evidence had been put forward by the opponents, and the board did not see any either, that the limitation of the genus of compounds covered by the formula in claim 1, which resulted from the excision of the seven specific compounds defined in the disclaimer, became relevant for establishing inventive step or sufficiency of disclosure. Accordingly, the disclaimers also met the conditions laid down in points 2.6 and 2.6.1 of the Reasons for the decision in G 1/03, and in the second paragraph of the Order of G 1/16. Concerning the aspect of validity of the priority right and novelty, see also chapter II.D.3.1.