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Case Law of the Boards of Appeal

 
 
1.1.1 Directly and unambiguously derivable from content of earlier application as filed

The subject-matter of a divisional application must be directly and unambiguously derivable from the earlier application as filed (see G 1/06, OJ 2008, 307, headnote), More specifically, subject-matter of the divisional must be directly and unambiguously derivable by the skilled person from the disclosure of the earlier, parent application as filed, as determined by the totality of its claims, description and figures when read in context (see consolidated cases T 1500/07, T 1501/07, T 1502/07; see also T 961/09).

Subject-matter claimed in the divisional application has to be compared with the content of the earlier (parent) application as filed, whereby the content of an application comprises the whole disclosure, express or implied, that is directly and unambiguously derivable from the application including information which is implicit and immediately and unambiguously apparent to a person skilled in the art reading the application (T 423/03). In other words, it has to be established whether technical information has been introduced into the divisional application which a skilled person would not have objectively and unambiguously derived from the earlier application as filed (T 402/00).

The "content" within the meaning of Art. 76 EPC is to be interpreted as the whole technical content of the earlier application (G 1/05, point 9.2 of the Reasons). Art. 76 EPC does not require that the content be disclosed in the claims of the earlier application. It only requires that the subject-matter be disclosed as such anywhere in the whole disclosure of the earlier application (T 211/95, T 1026/03, T 314/06).

In T 1076/12 the board held that it was the text of the application as originally filed, even if the text was not in an official language of the EPO, that had to be used, together with any other non-text portions of the application as filed, in order to determine the "content of the earlier application as filed" as referred to in Art. 76(1) EPC.