G 1/93 (OJ 1994, 541) and T 384/91 (OJ 1995, 745), the findings of which were summarised in e.g. T 220/99, show that, under Art. 123 EPC, it must be ascertained whether or not an added characteristic not disclosed in the application as filed makes a technical contribution to the claimed subjectmatter. For an analysis of G 1/93, see also G 1/03, point 2.1.2 of the Reasons. The case law on this issue is reported in detail below.
G 1/93 (OJ 1994, 541) stated that the underlying idea of Art. 123(2) EPC 1973 was clearly that an applicant should not be allowed to improve his position by adding subject-matter not disclosed in the application as filed, which would give him an unwarranted advantage and could be damaging to the legal security of third parties relying on the content of the original application. If, however, an added feature merely excluded protection for part of the subject-matter of the claimed invention as covered by the application as filed, the adding of such a feature could not reasonably be considered to give any unwarranted advantage to the applicant. Nor did it adversely affect the interests of third parties. Therefore, a feature which had not been disclosed in the application as filed but which had been added to the application during examination was not to be considered as subject-matter which extended beyond the content of the application as filed within the meaning of Art. 123(2) EPC 1973, if it merely limited the protection conferred by the patent as granted by excluding protection for part of the subject-matter of the claimed invention as covered by the application as filed, without providing a technical contribution to the subject-matter of the claimed invention (see also T 112/95).
The question of whether an added feature made a technical contribution or merely limited the scope of protection was discussed in several decisions.
In T 384/91 of 27.9.1994 (OJ 1995, 745) it was held that the added feature did make a technical contribution. This decision was based on the following considerations: the example mentioned by the Enlarged Board illustrated a case where the feature was clearly not merely a limitation. However, the borderline beyond which a feature was no longer to be considered as making a technical contribution to the subject-matter of the claimed invention and was merely limiting the protection conferred, was not co-terminous with this example but lay between it and the limit of complete technical irrelevance. According to the board this view was consistent with the fact that the Enlarged Board had rejected relevance as a criterion for novelty and inventive step, which would also have implied a comparison with the cited prior art documents. The board explained that the term "invention" did not necessarily imply the presence of novelty and inventive step, as was apparent from the wording of Art. 52, Art. 54 and Art. 56 EPC 1973.
The board concluded that there was no need to take into account the prior art documents, but that the assessment of whether the exception for mere limitations applied in a particular case should depend only on the technical relationship of the added feature to the content of the application as originally filed, as understood by a skilled reader. At the least, a feature went beyond providing a mere limitation not involving a technical contribution to the invention if it interacted with the way in which the other features of the claim solved the technical problem, as it was understood from the application as originally filed.
In case T 64/96, a patent relating to a cover for automobile sun visor mirrors comprising rectangular plates overlapping and connected together in chain-like succession was revoked by the opposition division. The third auxiliary request of claim 1 was amended in that it was included as an additional feature that lugs were "integrally formed in said plates". The appellant (patent proprietor) argued first that this feature was disclosed, at least implicitly, in the original application. Indeed since the plates were described according to the appellant as being of plastics, the person skilled in the art would not seriously consider forming the plates without lugs and then attaching the lugs thereafter, for to do so would unnecessarily increase the production costs of what was after all a mass-produced article. The appellant also argued in the alternative that the requirement that the lugs be "integrally formed in said plates" was of the class of feature allowed by G 1/93 (OJ 1994, 541) (in short, no technical contribution). In particular, the appellant argued in this respect that all he was doing was limiting the scope of protection of the patent by means of non-inventive selection since the original application covered both integrally formed lugs and separately formed lugs subsequently attached to the plates.
In the board's opinion the first line of argument confused two essentially different questions, namely what the person skilled in the art would do on the basis of his general common knowledge when seeking to put the teachings of the original application into practical effect and what the original application directly and unambiguously disclosed to him. The answer to that second question was that the skilled person was told that the plates "are provided" with lugs, nothing else. That statement certainly included the possibility of forming the lugs integrally with the plates but did not disclose it.
The board then examined the second line of argument and came to the conclusion that applying the criterion, as set out in G 1/93 (OJ 1994, 541) and T 384/91 (OJ 1995, 745), to the present case, it could be seen that the feature in question did indeed make a technical contribution to the subject-matter of the claim since forming the lugs integrally with the plates led to a simpler and cheaper construction of cover which, at least by implication, was the technical problem which the invention set out to solve. Thus the addition of this feature to claim 1 of the third auxiliary request offended against Art. 123(2) EPC 1973.
The board in T 89/00, citing T 260/85 (OJ 1989, 105), T 64/96 and T 415/91, held that, according to the jurisprudence of the boards of appeal, a distinction must be made between what the original documents of a patent directly and unambiguously disclosed to a skilled person and what said skilled person on the basis of this disclosure may do upon reflection and using his imagination. His thinking is not part of the content of the original documents of the patent.
The board in T 1269/06 held that, for the assessment of whether, contrary to Art. 100(c) EPC 1973, the subject matter of the patent extends beyond the content of the application as filed, the key question is whether the amendments made in the description, or - as in the case at issue - the claims, did indeed provide the skilled person with additional, technically relevant information which was not contained in the original application documents. This cannot be inferred from the fact alone that terms not present in the application documents were subsequently introduced, or from a purely semantic analysis of the contested passages. Instead, the party or department raising the objection must be able to identify clearly the technical teaching as such which has supposedly been added.
The board in T 931/00 stated that although figures in examples might, under specific conditions, be used to limit a range which was already present in the original application, they could not be used to define an entirely new relationship between parameters which had never been linked before. Such arbitrary new links between existing parameters introduced new matter, contrary to the requirements of Art. 123(2) and Art. 100(c) EPC 1973.
Another question which arose was whether deleting a feature could constitute a technical contribution to an invention.
On this matter, in T 802/92 (OJ 1995, 379), an ex parte case, the application as filed contained only product claims relating to "a double heterojunction p-i-n photovoltaic cell having at least three different semiconductor compound layers composed together of at least four different elements, comprising ... first and second ohmic contacts ...". In the course of examination proceedings the applicant also claimed the method of making such a photovoltaic cell. However, the method claim did not contain a feature relating to the formation of first and second ohmic contacts.
The board allowed the deletion of this feature in the method claims. It explained that the aim of the invention was to make photovoltaic cells with certain abilities. This aim was achieved by the use of three different semiconductor layers formed of at least four different elements. In the board's view, it followed from the description that the presence of ohmic contacts did "not provide a technical contribution to the subject-matter of the claimed invention". Therefore, the presence or absence of such ohmic contacts did not affect the carrying out of the described invention since they were not an essential part of it. The board invoked the principles underlying the interpretation of Art. 123(2) EPC 1973 set out by the Enlarged Board in G 1/93 (OJ 1994, 541). According to the board in this case these considerations were equally applicable to cases where a feature had been removed from a claim or omitted, so as to broaden its protection. Thus the removal from a claim of a feature which did not provide a technical contribution to the subject-matter of the claimed invention and whose removal merely broadened the protection conferred by the claim did not contravene Art. 123(2) EPC 1973.
In T 10/97 not all the compounds listed in the original claim were included in amended claim 1. However, since the claimed group of compounds was obtained not by restricting an originally disclosed generic definition of a substituent in a generic formula to a specific one selected from worked examples, but by deleting some members from a list of individualised equally useful compounds in order to improve the chances of patentability over the available prior art, the board found that such deletions must be considered admissible in accordance with the case law of the boards of appeal (see T 393/91). For the remaining compounds, no particular technical effect was either disclosed or alleged.
In T 783/09 the opposition division stated that the subject-matter of the claim 1 at issue was a selection from two lists and therefore contravened Art. 123(2) EPC. In particular, it stated that the list comprising pioglitazone, rosiglitazone and troglitazone could not be considered in isolation, since no hint existed in the application as filed that the three compounds in question would be preferred over the other preferred "further antidiabetic compounds". The board considered that a first issue in the case before it was whether or not the skilled person would derive directly and unambiguously each of the three "basic" combinations to which claim 1 pertained, i.e. LAF237 combined with either of pioglitazone, rosiglitazone or troglitazone, from the application as filed. The board concluded that the skilled person would directly and unambiguously recognise forty-four individual combinations, among them the three "basic" combinations referred to in claim 1. The board referred to the statement in decision T 12/81 (OJ 1982, 296, point 13 of the Reasons) and noted that many boards have denied a direct and unambiguous disclosure for individualised subject-matter that was only derivable from a document by combining elements from lists. The board stated however that, given the term “can” in the citation from decision T 12/81, the absence of a direct and unambiguous disclosure for individualised subject-matter is not a mandatory consequence of its presentation as elements of lists. Thus, the "disclosure status" of subject-matter individualised from lists has to be determined according to the circumstances of each specific case by ultimately answering the question whether or not the skilled person would clearly and unambiguously derive the subject-matter at issue from the document as a whole.
In T 783/09 all combinations resulting from the combination of the elements of the two lists according to the passage on page 21 were directly and unambiguously disclosed in that passage. Thus, each of the combinations according to claim 1 was disclosed in an individualised manner in the application as filed and therefore there was no breach of Art. 123(2) EPC in this respect. A further issue was whether or not the claiming of only three of the forty-four combinations disclosed en bloc in the passage on page 21 extended the content of the application as filed in an unallowable way. This passage advertised the forty-four combinations as "very preferred embodiments". By this statement the skilled person was taught that each of the forty-four combinations had the same quality, i.e. they were all very preferred combinations in the context of the invention. Nothing else was derivable from the remainder of the application, i.e. a particular quality, for example a particular technical effect, was attributed neither to the three combinations of claim 1 nor to the remaining forty-one. Hence, the group of combinations in claim 1 could not be considered as the result of a selection of three qualitatively equal elements from a list of forty-four qualitatively non-equal elements - for which selection there would be no hint in the application as filed and the claiming of which group therefore would have to be considered as adding matter. Rather the group of claim 1 was to be considered as the result of the deletion of forty-one elements from a list of forty-four qualitatively equal elements. In the board's judgement, under these circumstances, claim 1 was not directed to subject-matter extending beyond the content of the application as filed. The board's view was supported by case law, for example decision T 10/97. In summary, the subject-matter of claim 1 complied with the requirements of Art. 123(2) EPC. The decision of the opposition division was set aside.
In T 592/99 the board noted that, the feature as originally disclosed having been replaced by the feature objected to under Art. 100(c) EPC 1973, the claim as such related to different products. The board concluded that in keeping with "Order 1" of G 1/93 (OJ 1994, 541) the patent in suit contained subject-matter which extended beyond the content of the application as filed, which was prohibited by Art. 123(2) EPC 1973. Thus, the patent could not be maintained unamended, because the ground for opposition under Art. 100(c) EPC 1973 prejudiced the maintenance of the patent. On the other hand, the board observed that it could not be amended since deleting the limiting subject-matter from the claims would extend the protection conferred, which was prohibited by Art. 123(3) EPC 1973.
The board observed that in the case of a product claim concerning a composition defined by its components and their relative amounts given in terms of ranges, it could not be accepted that such ranges, which constituted essential features, did not provide a technical contribution to the subject-matter of the claimed invention, as suggested by the appellant. Any amendment to the ranges had to have the effect of modifying the claimed subject-matter, and thus also provided a technical contribution. If the newly claimed limited range were allowed even though unsupported, any subsequent selection invention based on the new range would have to be refused as not novel, which would otherwise not necessarily be the case. To allow this would, of course, give an unwarranted advantage to the patentee, contrary to the purpose of Art. 123(2) EPC 1973. In the board's view, that was exactly what was meant in the "typical example" given in point 16 of G 1/93, "where the limiting feature is creating an inventive selection not disclosed in the application as filed or otherwise derivable therefrom". Obviously, in the quoted text, such an "inventive selection" could not mean anything other than a potential (inventive) selection. Therefore the new feature constituted added subject-matter.
The board noted that the respondents could not be requested to demonstrate the potential character of the selection without making, or preventing themselves from making, a further selection invention. Thus, the burden of proof could not reasonably be shifted to them, as demanded by the appellant.
In T 1004/01 the opposition division had decided that the requirements of Art. 123(2) EPC 1973 were not fulfilled. In particular, the feature specifying that the peel strength be "at least 24 grams", a value only disclosed in a specific example, was associated with a multiplicity of further features of that example and could not be detached from those further features. The question that arose before the board of appeal was whether or not there was a basis in the application as originally filed for a peel strength "of at least 24 grams" to define the claimed laminate. According to the application as filed, the peel strength of the laminate was defined by an open-ended range as an essential feature of the invention. In the general description and the claims there was no further mention of any preferred peel strength range.
According to the board, the examples in the application as filed only illustrated specific laminates which were prepared from specific polymer blends and a specific nonwoven web, using specific lamination conditions and provided specific values of the peel strength. Thus, the exemplified laminates and the peel strength thereof were disclosed only in a concrete technical context, without providing any preference for a peel strength of at least 24 grams. Nor was any such preference given in the description, which could justify the lower limit. Since, however, a peel strength of 24 grams was disclosed, the question arose as to the conditions under which such an exemplified feature could form the basis for a new range as claimed. The peel strength of 24 grams could not be detached from the exemplified laminates to form a basis for a generalised lower limit of the claimed peel strength range without taking into consideration the other particulars closely associated therewith. It followed that the claimed subject-matter in all requests could not be directly and unambiguously derived from the application as filed. As to the technical contribution, the board said that the amended feature involved an interaction with the other features, i.e. a technical contribution to the invention, and did not provide a mere limitation of scope. Furthermore, the board pointed out that the general criteria of G 1/93 (OJ 1994, 541) had to be met, namely that the limitation did not involve a technical contribution to the subject-matter of the claimed invention and did not provide an unwarranted advantage. Since the claimed peel strength led to a technical contribution of the claimed subject-matter, the question whether or not the limiting feature created an inventive selection could be left unanswered. Consequently, the added feature could not be regarded as a mere limitation of the protection.
The invention in T 2230/08 concerned a method of regenerating a catalyst/absorber. The undisclosed modification contained in claim 1 as granted and still present in claim 1 of the auxiliary request would therefore be prejudicial to third parties relying on the invention as described in the application as originally filed, as that undisclosed modification which was technically sensible might possibly be the basis for a valuable invention. Claim 1 of the auxiliary request was not restricted to any specific method which would deprive the definition of the temperature of the regenerating gas of all technical contribution within the context of that claim. In the absence of any additional disclosed restricting feature to that effect, the temperature of the incoming regenerating gas was therefore considered to interact with the remaining features of the claim in such terms that it influenced the solution of the technical problem which could be understood from the application as originally filed. It followed that the condition that no missing technical contribution be provided, set out in decision G 1/93 (OJ 1994, 541) and on the basis of which added matter can be considered as not extending beyond the application as filed, was not met in the case at issue (violation of Art. 123(2) EPC).