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Case Law of the Boards of Appeal

 
 
1.1. Subject-matter extending beyond content of the earlier application

The wording of Art. 76(1) EPC and the wording of Art. 123(2) EPC is so similar (in all three languages) that it is clear that exactly the same principles are to be applied for both types of cases when determining what extends beyond the content of the earlier application (G 1/05, point 5.1 of the Reasons). The mere fact that the wording of the French version differs (Art. 76(1), second sentence, EPC: "éléments"; Art. 123(2) EPC: "objet") does not justify a different interpretation (T 276/97).

Art. 76(1) and Art. 123(2) EPC have the same purpose, i.e. to create a fair balance between the interests of applicants and patentees, on the one hand, and competitors and other third parties on the other. The idea underlying these provisions is 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 (G 1/93, OJ 1994, 541; T 873/94, OJ 1997, 456; T 276/97, T 701/97, Both Art. 76(1) EPC 1973 and Art. 123(2) EPC 1973 enshrine the principle that before grant the legal security of third parties is sufficiently protected by the prohibition of extending the content of the application by amendment beyond what was originally disclosed (T 1387/05).

The question whether the subject-matter of a divisional application extends beyond the content of the parent application will be decided by the examining division in the substantive examination (J 13/85, OJ 1987, 523). Since the underlying requirements of Art. 123(2) and 76(1) EPC are the same, there is no harm done if the examining division incorrectly refers to Art. 123(2) EPC (instead of Art. 76(1) EPC) when refusing a divisional application on the grounds that its subject-matter extended beyond the parent application (T 542/94).

According to the EPO practice, an unamended description identical to that contained in the parent application is normally accepted. In T 441/92, therefore, the board took the view that there was nothing in the EPC to prevent an applicant from repeating the earlier description in a divisional application and that Art. 76(1) EPC 1973 had not been contravened in this respect in the case in point.