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Case Law of the Boards of Appeal

 
 
1.1.1 Notion of content of the application

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 (on the account taken of implicitly disclosed matter, see also T 1772/06; G 2/10).

Literal support is not required by the wording of Art. 123(2) EPC (T 667/08, point 4.1.4 of the Reasons).

In T 1171/08, the appellant/opponent contended that the claimed subject matter could not be clearly and unambiguously derived from the application as filed. The respondent/patent proprietor countered that there had been no inadmissible extension, if only because all the conditions needed to achieve selective COS removal were implicitly included in the claim by virtue of the indication of purpose. The board found that indicating the purpose as a functional feature in a use claim limited the claim to those embodiments whereby the purpose could be achieved. Only to that extent could the indication of purpose implicitly comprise features essential to achieving the desired selectivity. By no means, however, could the indication substitute the essential features specifically disclosed in that connection in an application. In the end, the board held that, in the absence of such a reference to the use of the specific wash fluid defined in claim 9 as filed to remove COS selectively, the skilled person could not derive the new combination of features directly and unambiguously from the application as 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". According to the board, 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.

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.

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 (see T 260/85, OJ 1989, 105; and Guidelines H-IV, 2.3.5 on priority documents - June 2012 edition).

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 (see also - all citing this decision - T 396/01; T 1195/01; T 1172/06; T 1202/07).

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 (T 1408/10, point 1.2.1 of the Reasons).

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.

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 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.

In T 1228/01 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.

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 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.

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.

The board in T 2619/11 took the view that the focus of the first-instance decision was disproportionately directed to the structure of the claims as filed to the detriment of what was really disclosed to the skilled person by the documents as filed. The application was directed to a technical audience rather that to a philologist or logician, for which audience an attempt to derive information from the structure of dependent claims would lead to an artificial result.

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.