Our final post covering the EPO’s recent roadshow for professional representatives around Europe is on the subject of added matter. The first article in this series looked at the rule 164 procedure and the second article covered early processing, PCT Direct and rule 71(3).

European patent applications, of course, should disclose the invention in a sufficiently clear and complete manner that the invention can be carried out by a skilled person. Applications should not be amended such that they contain subject matter that extends beyond the content of the application as filed. Extended added matter is both a ground for opposition under Art 100(c) and revocation under Art 138(1) EPC.

The EPO representative at the roadshow confirmed the general approach the Examiners take when assessing whether an amendment represents added matter. The practice at first instance is:

• based on the EPC;
• inspired by the decisions of the Boards of Appeal;
• defined by the Guidelines (see H-IV and V);
• monitored by quality control measures;
• and reviewed by 3^rd parties in opposition.

The idea behind the restrictions on added matter is that there should be protection for 3^rd parties, no surprises for 3^rd parties and no unwarranted advantages for applicants.

The current gold standard for assessing added matter may be found within G2/10 which states that added matter should be assessed “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 the documents as filed”. A further case, T667/08, notes that photographic support is not required.

The EPO representative commented that at a recent user symposium on the subject of Art 123(2) EPC it was felt that, as far as the assessment of added matter was concerned, there was room for improvement in practice. From the EPO side the user symposium suggested that Examiners were still approaching added matter in a literal manner*. From the user side it was suggested that better use of rule 137(4)EPC (indicating basis) should be made and that applicants should actively provide arguments why an amended claim satisfied Art 123(2) EPC.

[*Though the Guidelines on added matter assessment do highlight that the Examiner should avoid “disproportionally focusing on the structure of the claims as filed to the detriment of the subject matter the skilled person would directly and unambiguously derive from the application as a whole”.]

The roadshow then moved onto the tests that Examiners use when assessing added matter. For the addition of features the “novelty test” is used and the amendment should be compared to the application as filed. If the amendment is new over the disclosure of the application as filed then it cannot be allowed. However, if the amendment is not new then it is not necessarily allowable. For example, where a feature is removed the amendment may not be new but may not be allowable.

Removal of features is assessed by the “essentiality test” though it was noted that some of the caselaw of the Boards of Appeal challenge the essentiality test. Under this test the replacement/removal of a feature will be allowable under Art 123(2) EPC if the skilled person directly and unambiguously recognises that (i) the feature wasn’t explained as essential in the disclosure; (ii) the feature is not indispensable for the function of the invention in the light of the technical problem to be solved; and (iii) the replacement/removal doesn’t require any real modification of the remaining features to compensate.

Intermediate generalisation is the extraction in isolation of a specific feature from a combination of originally disclosed features. The general principle when assessing whether an intermediate generalisation is allowable is that there cannot be a structural and functional relationship between the originally disclosed features in combination. It is also wrong to consider the content of the originally filed application as a reservoir from which individual features relating to separate embodiments can be used to create an artificial combination of features.

The test for intermediate generalisation used to be a three part test which incorporated the essentiality test as the second part of the test. However, this condition was not supported by caselaw and was removed from the 2014 version of the Guidelines. The test for assessing intermediate disclosure is therefore (i) the feature cannot be related or inextricably linked to the other features of the embodiment from which the feature has been removed and (ii) the overall disclosure justifies the generalisation and the introduction of the feature into the claim.

It was suggested that the removal of the essentiality test from the assessment of intermediate generalisations will made it harder to justify that such generalisations are allowable.

On the subject of disclaimers (see Guidelines H-V, 3.5, 4.1 4.2) it was noted that the various tests to be applied are not alternatives or additions to the gold standard of G2/10 but are implementations of the gold standard.

Under rule 137(4) EPC applicants need to identify the basis for amendments made. It was noted at the roadshow that providing the information requested by this rule and providing convincing arguments to the Examiner is the best way of getting amendments accepted.

Case T1363/12 was reviewed next. This case related to a drum washing machine and the assessment of an intermediate generalisation. The appellant, by way of their argument at appeal, had apparently highlighted the discussion in the Guidelines section H-IV, 2.2 that suggests the Examiner should not disproportionally focus on the claim structure. It was suggested in the roadshow however that the appellant hadn’t gone much further than citing this section of the guidelines as their argument.

Lists

In a section on the issue of added matter and lists, a number of cases were highlighted:

• T615/95 in the context of the shrinking of lists
• T686/99 in the context of singling out a particular combination
• T12/81 in the context of the two lists principle. A novel selection is possible if chosen from two lists of some length (see also GL G-VI, 8)
• As far as deleting from double lists is concerned then shrinking lists may be OK (see T615/95; T888/08) but individualising the list is not (see T859/94; T942/98; T727/00; T98/09)
• “What is a list?” is considered in T783/09 where 41 out of 44 combinations were deleted from a list.

Ranges

Case T612/09 related to numerical sub-ranges where the preferred sub-range sat within the overall general range. The teaching of this case is that all combinations of limits are possible. For example, if the general range is 1-10 and the preferred range is 3-8, it is now possible to claim the ranges 1-3 or 8-10 (as well as 1-8 and 3-10).

19 November 2015