5.5.2 No replacement of invention

The decisions below consider the application of R. 88 EPC 1973:

In G 2/95 (OJ 1996, 555) the Enlarged Board held that the complete documents forming a European patent application, that is the description, claims and drawings, cannot be replaced by way of a correction under R. 88 EPC by other documents which the applicants had intended to file with their request for grant (overruling T 726/93, OJ 1995, 478). The interpretation of R. 88 EPC 1973 had to be in accord with Art. 123(2) EPC 1973. This meant that a correction under R. 88 EPC 1973 was thus bound by Art. 123(2) EPC 1973, in so far as it related to the content of the European patent application as filed (see G 3/89 (OJ 1993, 117). Such a correction could therefore be made only within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge and seen objectively and relative to the date of filing, from the whole of the documents forming the content of the European patent application (referring to G 3/89).

The content of the European patent application was formed by the parts of the application which determined the disclosure of the invention, namely the description, claims and drawings (referring to G 3/89). As a result of the prohibition of extension under Art. 123(2) EPC 1973, documents other than the description, claims and drawings could only be used in so far as they were sufficient for proving the common general knowledge on the date of filing (referring to G 3/89). On the other hand, documents not meeting this condition could not be used for a correction even if they were filed together with the European patent application. These included, inter alia, priority documents, the abstract and the like (referring to G 3/89). See also J 5/06.

In decision J 21/94, taken on 20.1.1997 and terminating the appeal proceedings following the referral to the Enlarged Board of Appeal dealt with in G 2/95 (OJ 1996, 555), the Legal Board concluded that the originally disclosed invention B could be accorded a filing date even if there were contradictions between the request for grant (which related to invention A) and the application documents (which disclosed invention B). If a further invention (here invention A) was disclosed during grant proceedings, it could not be given a filing date unless it was clear that protection for this invention was now sought.

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