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EPO & Added Matter: Board of Appeal pooh-poohs Examination Guideline Update

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epologoThe EPO’s Guidelines for Examination were updated in November last year. Section H-IV, 2.3 covers the general rules for assessing amendments for conformity with Article 123(2) EPC. Following general grumbles that the EPO was becoming a bit too strict when assessing whether amendments comprised added matter, section H-IV, 2.3 was updated to say that literal support is not required (based on T667/08) and that an added matter assessment which “disproportionally focusses on the structure of the claims” should be avoided (this position being taken from T2619/11).

However, a recent Board of Appeal decision, T1363/12, that was published shortly after the Exam Guidelines update, has reaffirmed the “gold standard” test in G2/10, has downplayed the significance of T2619/11 and has effectively suggested that the Guidelines do not accurately reflect the position in G2/10.

Paragraph 1.2 of the Reasons for the Decision in T1363/12 provides an overview of the question of assessing added matter along with an assessment of the appellant’s position and the statements made in T2619/11 and the Guidelines for Examination.

The final paragraph of H-IV, 2.3 states:

When assessing the conformity of the amended claims to the requirements of Art. 123(2), the focus should be placed on what is really disclosed to the skilled person by the documents as filed as directed to a technical audience. In particular, the examiner should avoid disproportionally focusing on the structure of the claims as filed to the detriment of the subject-matter that the skilled person would directly and unambiguously derive from the application as a whole.

The appellant suggested that the above paragraph supported the view that a more lenient standard than the “gold” standard of G210 (“directly and unambiguously derivable from the application as filed”) should be applied.

In reply the Board of Appeal pointed out the following:

  • The Boards of Appeal are not bound by the Guidelines for Examination
  • The principles established by the Enlarged Board of Appeal cannot be changed by issuing revised Guidelines
  • There has been no change to the standard to be applied under Article 123(2) EPC
  • H-IV, 2.3 of the Guidelines does not contain any reference to G2/10
  • T2619/11, although taken after G2/10, does not represent a development of the Enlarged Board’s decision
  • T2619/11 related to a specific factual context but no more general principle can be derived from this decision
  • In the Board’s view T2619/11 doesn’t contain any statements that suggest the decision was intended “to override or provide a new assessment of the “gold” standard” of G2/10. T2619/11 is also not trying to put a “gloss” on the gold standard

The Board in T1363/12 then found that the specific facts of T2619/11 didn’t apply in the case in question and that the claims comprised added matter.

This case suggests that despite the view expressed in the current version of the Guidelines there is not a general softening within the EPO to the assessment of added matter.

Mark Richardson 25 March 2015

1 Comment

  1. Conor says:

    First of all let me flag that I haven’t yet read the submissions or the decision of the Board in T1363/12 in detail.

    Nonetheless, it is a pity either that submissions are being made arguing that T2619/11 loosens EPC Article 123(2) requirements; or that they are being reported in this way.

    There should be no doubt that the decision in T2619/11 is completely compatible with G2/10 – T2619/11 still requires that the subject-matter of an amendment be directly and unambiguously derivable to a skilled person. T2619/11 simply requires Examiners not to be dull or obtuse in examining this requirement, especially by being prepared to consider only exactly and exclusively what has been explicitly stated in a patent specification and not what was meant by the disclosure when the latter is indeed directly and unambiguously derivable to the skilled person.

    The Board in T2619/11 have of course been more circumspect in their direction to examiners by encouraging examiners not to act as philologists or logicians when examining patent applications and it is a pity that what the Board meant and not just the headnote of their decision was transferred into the Guidelines for Examiners,

    Thus, efforts will continue to ensure the Guidelines for Examiners are as clear as possible in the future in requiring examiners to be willing (rather than unwilling) to consider what was meant in a patent specification when examining amendments for compliance with EPC Article 123(2).

    Conor Boyce

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