Quick Navigation
III.A.1. General issues
Regarding the concept of the content of the application, G 11/91 (OJ 1993, 125) laid down that it related to the parts of the European patent application which determined the disclosure of the invention, namely the description, the claims and the drawings. It was reaffirmed that the description, claims and any drawings in the application documents determined the content of the application as filed (G 2/95, OJ 1996, 555; T 382/94, OJ 1998, 24).
In addition, as pointed out in T 860/00, the disclosure implicit in the patent application - i.e. what any person skilled in the art would consider necessarily implied by the patent application as a whole (e.g. in view of basic scientific laws) - is relevant for the requirements of Art. 123(2) EPC 1973 (see also T 1772/06).
In T 246/86 (OJ 1989, 199) the board decided that as the abstract was intended solely for documentation purposes and did not form part of the disclosure of the invention, it could not be used to interpret the content of the application for the purposes of Art. 123(2) EPC 1973 (solution confirmed in T 606/06). For the purpose of Art. 123(2) EPC 1973, "the content of the application as filed" also did not include any priority documents, even if they were filed on the same day as the European patent application (T 260/85, OJ 1989, 105).
Concerning the content of the application as originally filed, the board in T 1018/02 stated that although a claim was not to be interpreted in a way which was illogical or did not make sense, the description could not be used to give a different meaning to a claim feature which in itself imparted a clear, credible technical teaching to the skilled reader. That also applied if the feature had not initially been disclosed in the form appearing in the claim.
In T 605/93 the board held that where the application documents of the European application as filed were a translation of the international application as it was filed, the content of the "application as filed" (for the purpose of Art. 123(2) EPC 1973) was that of the international application as it was filed. In all normal circumstances, it ought however to be assumed that the published European application was identical in content with the published international application.
In T 658/03 the board stated that any change of attribution of claimed subject-matter in an application or patent having different (sets of) claims for different contracting states, to a contracting state under which that subject-matter was not previously included, amounted to an amendment within the meaning of Art. 123 EPC 1973. Such an amendment was subject, in principle, to full examination as to its conformity with the requirements of the Convention.
In T 382/94 (OJ 1998, 24) a European patent application was filed with a description and claims in German, accompanied by 25 drawings. Three of the drawings contained so-called flow sheets with text matter in English. The application was published in this form.
In the light, at the time of its decision, of Art. 80(d) EPC 1973, Art. 14(1) and (2) EPC 1973 and Art. 91 EPC 1973 together with R. 43 EPC 1973, the board ruled that the accordance of a date of filing could relate only to the whole of the application documents. It appeared to be alien to the Convention not to consider certain parts of the description, claims or drawings actually filed on the date of filing to be part of the documents as filed. The amendment of the application, based on the English-language text matter in the drawings as filed, did not represent an infringement of Art. 123(2) EPC 1973.
In T 287/98, the word "scrap" originally comprised in the disputed passage of the English version of the application, which means "refuse or waste in general" had been replaced in claim 1 by "scrap metal". The original application in Dutch contained the word "schroot", which means scrap metal, as substantiated by the copies of various dictionaries provided by the appellant. According to the board, this word was not correctly translated into English and nothing other than "scrap metal" was meant in the application as originally filed. The board further decided that the replacement of the word "scrap" by "scrap metal" was allowable under Art. 123(2) EPC 1973 since Art. 70(2) EPC 1973 provided that in a case referred to in Art. 14(2) EPC 1973, i.e. in which the European patent application was filed in a language of a contracting state other than English, French or German, the original text had to be taken into account in proceedings before the European Patent Office, in order to determine whether the subject‑matter of the application extended beyond the content of the application as filed.
In T 23/02, the board said that although the claims as originally filed contained no reference to a method of measurement for the average particle diameter, that did not mean that any method could be used to determine that parameter. If anything, the claims raised doubts as to how the average particle diameter had to be determined, in particular because the skilled person would be aware of the fact that the method of measurement was of a decisive nature in particle size analysis. Therefore the skilled person would use the description and drawings when deciding how the average particle diameter was to be measured, and would come to the conclusion that when properly interpreted in the light of the original description, the claims as originally filed already contained restrictions as to the method of measurement for the average particle diameter of the various particles. Furthermore, the method of measurement for the average particle diameter did provide a technical contribution because it affected the actual value of that parameter.
In T 500/01 the board stated that a claim, the wording of which was essentially identical to a claim as originally filed, could nevertheless contravene the requirements of Art. 123(2) EPC 1973 if it contained a feature whose definition was amended in the description in a non-allowable way. The specific definition of a feature which according to the description was an overriding requirement of the claimed invention was applied by a skilled reader to interpret that feature whenever it was mentioned in the patent. Since in this case the definition had no basis in the application as filed, claim 1 did not meet the requirements of Art. 123(2) EPC 1973.
The appeal in T 1228/01 lay from the examining division's decision to refuse the European patent application entitled "Method of preparation and use for zona pellucida antigens and antibodies for sterilization and contraception" because it contained subject-matter which extended beyond the content of the application as filed, contrary to Art. 123(2) EPC 1973. The appellants inferred that the reference to a deposited phage in a claim, whose correct deposit was mentioned in the application as originally filed, was an implicit disclosure of a part of a nucleotide sequence contained in the phage, although the sequence was not disclosed per se. Reference was made to T 301/87, whose conclusions also applied here and in which it had been decided that if an entity itself was disclosed to the skilled person, this did not necessarily mean that a component part was also disclosed for the purpose of priority if this could not be envisaged directly and unambiguously as such and required considerable investigation to reveal its identity. Thus in T 1228/01 the board stated that the disclosure in the application as originally filed of the deposition of the recombinant bacteriophage Lgt11-P3 was not considered to be a basis within the requirements of Art. 123(2) EPC 1973 for the disclosure of a DNA sequence designated as "the P3 coding sequence" which was allegedly contained in that bacteriophage, but which as such was not disclosed in the application as originally filed.
In T 792/94 the board ruled that since the teaching of claim 1 as amended was ambiguous (Art. 84 EPC 1973), allowing scope for an interpretation which extended beyond the overall teaching of the initial application, the amendment contravened Art. 123(2) EPC 1973.
Decisions T 673/89 and T 685/90 prohibited the later inclusion of equivalents. T 673/89 concerned a dual circuit braking system. The board held that the mere fact that the original claim did not indicate how the signals were transmitted in the brake circuits was not a basis for deliberately supplementing its teaching with a further embodiment not referred to in the application documents as originally filed. In T 685/90 the board stated that specific equivalents of explicitly disclosed features did not automatically belong to the content of a European patent application as filed, when this content was used as state of the art according to Art. 54(3) and (4) EPC 1973 against a more recent application. It therefore concluded that such equivalents could not belong to the content of a European patent application either, when this content was assessed to determine whether an amendment was admissible under Art. 123(2) EPC 1973. In T 265/88 the board refused to allow originally undisclosed equivalents to be added by using a wider technical term in place of the single technical means originally disclosed. T 118/88 had concluded that the obviousness of a feature was no replacement for the original disclosure.
In T 40/97 the board considered what the originally filed application taught the person skilled in the art and took the view that in a case where a number of generally similar embodiments were discussed in equivalent terms, the person skilled in the art would, in normal circumstances and when nothing pointed to the contrary, notionally associate the characteristics of an element of one embodiment described in some detail with the comparable element of another embodiment described in lesser detail.
In T 243/89 the applicant had originally claimed a catheter only for medical use; during examination proceedings he filed a further claim for its manufacture. The board of appeal saw no reason to refuse the filing of an additional method claim for forming the apparatus, in view of the similar wording and thus of the close interrelationship between both independent claims. Since the result of the activity was in itself patentable, such methods were also patentable unless the disclosure was insufficient.
In T 157/90 and T 397/89 it was stressed that it was insufficient for the generalisation of a feature to have only formal support in the application as filed. If, for example, the application as filed only described specific embodiments, and the feature's general applicability was not evident to the skilled person, then generalisation could not be allowed.
In T 906/97 the board stated that an a posteriori demonstration that the original claims, considered in isolation from the rest of the application documents, could possibly be construed in such a way as to cover a specific type of apparatus failed to provide convincing evidence that such specific apparatus was actually disclosed to the skilled person.
In T 770/90 the board ruled that an unduly broad claim not supported by the description as originally filed was not a suitable "reservoir" for amendments. On the issue of Art. 123(2) EPC 1973, the board stated in T 296/96 that the content of a document was not to be viewed as a reservoir from which features pertaining to separate embodiments could be combined in order to artificially create a particular embodiment. When assessing whether a feature had been disclosed in a document, the relevant question was whether a skilled person would seriously contemplate combining the different features cited in that document. That was not the case in the application as filed.
In T 54/82 (OJ 1983, 446) the board held that an objection under Art. 123(2) EPC 1973 did not necessarily arise when an amendment was proposed which involved combining separate features of the original subject-matter of an application. When considering whether different parts of the description in an application could properly be read together, the state of the art might also be taken into account.
Expanding on T 13/84 (OJ 1986, 253) it was stated in T 547/90 and T 530/90 that reformulating the technical problem was not in breach of Art. 123(2) EPC 1973 provided the problem as clarified and the solution proposed could have been deduced from the application as a whole in the form originally filed.
Decision T 784/89 (OJ 1992, 438) ruled on a computer-controlled method of producing NMR images disclosed explicitly in the documents as filed. By reference to another patent application an apparatus was implicitly disclosed comprising a programmable component which, when suitably programmed, was used for the claimed method. The board considered that only this specific combination had been disclosed. To claim an apparatus for carrying out a method was considered an inadmissible extension of the European patent application because the claim covered apparatus which could also be used in other methods and to achieve other effects. The only allowable claim was for an apparatus for carrying out a method comprising a programmable component which could be suitably programmed to carry out the method.
In T 526/92 the patent related to an additive concentrate having a high TBN of at least 235 for incorporation in a lubricating oil composition. The application as filed contained no explicit reference to TBN apart from the examples where 235 was the lowest value mentioned. The feature "having a high TBN of at least 235" was introduced during the examination proceedings to distinguish the claimed subject-matter from compositions with low TBN values up to 100 disclosed in a citation. The board revoked the patent on the grounds that it breached Art. 123(2) EPC 1973, stating that the precondition of the disclaimer had not been met (see G 1/03 concerning law now applicable to disclaimers in Chapter III.A.4 below).
In this case, TBN values had not been originally disclosed as a "broad" range but only as single, punctate values; thus a new range was defined which had not been disclosed originally. Furthermore, the generic part of the original specification did not contain any information indicating that TBN played any role in the framework of the application in suit. This meant that there was also no information whatsoever concerning a TBN range, whether open-ended or not. Nor was there any information at all in the description regarding the contribution of a TBN to the solution of a technical problem. Moreover, it could not be concluded that the individual TBN values disclosed in the examples were representative of a TBN range starting at 235 and without any upper limit. The board held that if values of a parameter are only given in the examples, without the significance of this parameter becoming evident from the original specification, no range must be arbitrarily formed, which is open ended at one side and has one limit selected from the examples.
T 201/83 (OJ 1984, 481) and T 17/86 (OJ 1989, 297) started from the assumption that a limitation could also constitute an inadmissible extension of the subject-matter of the application. In T 201/83, however, the board came to the conclusion that the amendment of the concentration range for a component of a claimed alloy was admissible on the basis of a value described in a specific example since the skilled person could have readily recognised that this value was not so closely associated with the other features of the example as to determine the effect of that embodiment of the invention to a significant degree. The new limit could therefore be deduced from the original documents. In T 17/86 the examining division took the view that, although the introduction into a claim of a particular technical feature constituted a limitation, it nevertheless contravened Art. 123(2) EPC 1973 since the feature concerned had been described in the application solely in association with another feature not included in the claim. The board, however, stated that the application as filed unmistakably showed that the combination of technical features in the new claim thus amended was sufficient to produce the result sought in the application.
In T 433/01 the board's view was that the second auxiliary request would in all probability also have failed to meet the requirements of Art. 123(2) EPC 1973 because it did not satisfy the criterion derived from T 201/83 (OJ 1984, 481) that for a generalisation based on a value described in an example to be admissible, that value had to be manifestly independent of the other features of the example in terms of the relevant technical properties.
The board in T 876/06 suggested that according to EPO practice, as stated for instance in T 201/83, an amendment of a concentration range in a claim for a mixture is allowable on the basis of a particular value described in a specific example, if the skilled person could have readily recognised this value as not so closely associated with the other features of the example as to determine the effect of the invention as a whole in a unique manner and to a significant degree. Applying this principle, the board said that it had to be decided in the case at issue whether or not the weight ratio of liquid rubber to solid rubber set out in several examples was in this sense closely associated with the other features of these examples. The board came to the conclusion that the skilled person could have recognised in the application as originally filed that the weight ratio of liquid rubber to solid rubber was not so closely associated with the other features of the examples as to determine the effect of the invention as a whole in a unique manner and to a significant degree. Thus, in the board's judgment, in the case at issue it was permissible to use the particular value used in several examples to limit the range of the weight ratio of liquid rubber to solid rubber. The limitation of the claim represented merely a quantitative reduction of a range to a value already envisaged within the document and not an arbitrary restriction providing a technical contribution to the subject-matter of the claimed invention in accordance with point 10 of the Reasons in T 201/83. The board also found incorrect the argument of the respondent/opponent that the amendment in T 201/83 was only considered allowable because it represented the lowest value disclosed with regard to the then claimed invention. In the board's view this fact played no role at all. Nor did the board agree with the argument that decision T 201/83 had been overruled by later decisions of the Enlarged Board of Appeal. The requirements of Art. 123(2) EPC 1973 were fulfilled.
The board decided in case T 184/05 relating to Art. 123(2) EPC that an impurity concentration value of a product obtained under specific process conditions could not be taken in strict isolation from the examples unless it had been demonstrated that this value was not so closely associated via the applied process with specific (undisclosed) maximum values of all other impurities comprised in the product.
In T 570/05 the invention related to a solar-control coated substrate with high reflectance, and the proposed amendment read as follows: "…the … coating layer has a thickness of from 220 to 500 nm", for which the only literal basis in the application as originally filed for the lower value of 220 nm of the claimed coating thickness range was to be found in examples 18, 21 and 25. The formal disclosure of the value "220" already existed ; the issue to be decided was whether or not new subject-matter was added by forming a new range in a claim using said figure of 220 nm, it being evident that nowhere in the documents as filed did said value form the lower (or indeed any) endpoint of a range of thicknesses. Recalling the relevant case law namely, T 201/83, T 1067/97 and T 714/00, dealing with extracting an isolated feature, the board examined whether or not there existed a functional or structural relationship between the coating layer thickness, in particular its lower limit, and the remaining features of the claim. The board concluded that the condition of absence of any clearly recognisable functional or structural relationship under which an isolated extraction of a feature of an example would be allowable under Art. 123(2) EPC according to the relevant case law was not satisfied in the present case.
In T 727/00 the board held that the combination - unsupported in the application as filed - of one item from each of two lists of features meant that although the application might conceptually comprise the claimed subject-matter, it did not disclose it in that particular individual form. For that reason alone, claim 1 of the main request was not supported by the description.
Although the selection of explicitly disclosed borderline values defining several (sub)ranges, in order to form a new (narrower) sub range, is not contestable under Art. 123(2) EPC when the ranges belong to the same list, the combination of an individual range from this list with another individual range emerging from a second list of ranges and relating to a different feature is not considered to be disclosed in the application as filed, unless there is a clear pointer to such a combination (T 1511/07).
In T 942/98, precisely this had occurred through the deletion of all other meanings, residues X1, X2 and R5 had been narrowed down to a single meaning, leading to a combination of specific meanings of residues not disclosed in the application as filed. Consequently, claim 1 as filed did not in itself provide adequate support for claim 1 as amended.
In T 615/95 there were three independent lists of sizeable length specifying distinct meanings for three residues in a generic chemical formula in a claim. One originally disclosed meaning was deleted from each of the three independent lists. The board stated that the present deletions did not result in singling out a particular combination of specific meanings, i.e. any hitherto not specifically mentioned individual compound or group of compounds, but maintained the remaining subject‑matter as a generic group of compounds differing from the original group only by its smaller size. Such a shrinking of the generic group of chemical compounds was not objectionable under Art. 123(2) EPC 1973, since these deletions did not lead to a particular combination of specific meanings of the respective residues which was not disclosed originally or, in other words, did not generate another invention (see also T 948/02, which refers in detail to the case law on the deletion of one originally disclosed meaning and which did not allow the amendment of a generic chemical formula; see also T 659/97 and T 894/05).
The board in T 1146/01 had to answer the question of whether one measurement of a selected characteristic or property of a sample disclosed only in an individual example could be relevant to the generality of the claimed subject-matter, separately from and irrespectively of the other parameters inherent to the same sample. The situation in this case was different from the case in T 201/83. In T 201/83 an amendment was allowed on the basis of a particular value described in a specific example, provided the skilled person could readily have recognised that value as not so closely associated with the other features of the example as to determine the effect of that embodiment of the invention as a whole in a unique manner and to a significant degree. In T 1146/01, however, the board stated that formulating a new range on the basis of individual values taken from selected examples, which were not at all directly related to each other, meant that the reader was confronted with new information not directly derivable from the text of the application as originally filed.
In T 653/03, the original term "diesel engine" in claim 1 was replaced by the term "combustion engine". Thus the suitability of the claimed method was generalised to any type of combustion engine. The board decided that the treatment of exhaust gas in the original application was always related to a diesel engine, and it could not be inferred by the skilled person that the subject-matter of the granted patent extended to a method which was suitable for any type of combustion engine. The technical contribution was that the amended method was suitable for any type of combustion engine, whereas in the original form it was suitable only for a diesel engine. The generalisation was not admissible.
In T 1241/03, in view of the general disclosure of the application as filed, the reference in a claim to a combination of compounds in specific concentrations, explicitly disclosed in different passages of the application, was not considered by the board to be an amendment of the patent which extended beyond the content of the application as originally filed.
In T 1067/02 the board came to the conclusion that the unclear nature of the amendment introduced upon grant in claim 1 as filed, i.e. the introduction of the term "complete", allowed two different interpretations and, although they were both technically sensible, neither of them was directly and unambiguously derivable from the general disclosure of the application as filed. Consequently, claim 1 of the main request extended beyond the overall teaching of the application as originally filed.
In T 1239/03, it was not in dispute between the parties that no part of the patent contained a definition of the ethylene content of the elastomeric copolymer in terms of weight percent. Prior to the amendment, preference was given to the interpretation "mol percent", which, with the deletion of example 3, had shifted towards "weight percent". In the board's view, Art. 123(2) EPC 1973 was to be interpreted as referring to the patent (or application) as a whole, rather than to the claims only. This was directly suggested by the clear wording of the Article. Hence it was not crucial in which part of the patent (or application) an amendment had been carried out, but only whether the overall change in the content of the patent (or application) resulted in the skilled person being presented with information which was not clearly and unambiguously set out in the originally filed application, even when account was taken of matter which was implicit to a person skilled in the art. In such a case, where it was certain that a shift in the interpretation of the claims had occurred, but doubts nevertheless existed, the board took the view that it should be incumbent upon the patent proprietor or applicant as the author of such amendment(s) to demonstrate that the requirements of Art. 123(2) EPC 1973 were complied with in making them.
In the case at issue, the patent proprietor was unable to show that the percentage value could have been consistently interpreted as "weight percent" before and after the amendments. This led to the conclusion that the author of the amendments in the patent in suit, i.e. the respondent, had not discharged the burden of proof which rested upon him. In the specific circumstances of this case, the deletion of the two examples in order to exclude the possibility of interpreting the relevant percentage as mol percent provided a lateral shift of information corresponding to the extension of subject matter beyond the content of the application as filed.
T 97/05 concerned an amendment of a claim resulting in a shift in the information provided by examples. During the opposition proceedings, claim 1 was modified by replacing the term "chemically" with "covalently" in order to specify the nature of the bond between the anionic groups and the core. The board held that in examining an amendment for compliance with the requirements of Art. 123(2) EPC 1973 it was necessary to consider not only the claims but also other parts of the application or patent, i.e. the description and examples. The information provided by the description was that the bonding between the core and the anionic group was "chemical" and that one type or species of "chemical" bonding was "covalent". The term "chemically bonded" as employed in the general description of the application as filed encompassed, but did not specifically disclose, compounds in which the anionic moieties were "covalently" bonded to the core.
The board came to the conclusion that as a consequence of the amendment of the claims the information content of the general part of the description was changed compared to the information content of the application as filed. The bonding between the core and the anionic groups in the activated catalyst compositions was no longer defined generically as "chemical" but was now more narrowly and specifically defined as being a species of "chemical", namely "covalent". The examples did not discuss or otherwise elucidate - even by implication - the nature of the bonding between the core and the anionic groups in the resulting polyionic compounds. This was not disputed by the patent proprietor. The information provided by the examples in this respect was no more specific than that of the description, i.e. did not provide any restriction of the type of bonding to a particular species of bonding encompassed by the term "chemical". In the board's view a consequence of the amendment of the claims by replacement of the generic term "chemically bonded" by the specific term "covalently bonded" was that the examples of the patent acquired by association information, i.e. that the anionic groups were covalently bonded to the core, which was not - even implicitly - contained by the same examples in the application as filed. Thus there was a shift in the information provided by the examples in the patent as amended according to the main request compared to that provided by the same examples in the application as filed, even though the examples themselves had not been modified (by analogy with T 1239/03). Therefore the main request did not meet the requirements of Art. 123(2) EPC 1973.