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Guidelines for Examination

 
 

2.3.1 Features described in a document cross-referenced in the description

Features which are not disclosed in the description of the invention as originally filed but which are only described in a cross-referenced document which is identified in such description are prima facie not within "the content of the application as filed" for the purpose of Art. 123(2). It is only under particular conditions that such features can be introduced by way of amendment into the claims of an application.

Such an amendment would not contravene Art. 123(2) if the description of the invention as originally filed leaves no doubt to a skilled reader (see T 689/90) that:

(i)
protection is or may be sought for such features; 
(ii)
such features contribute to solving the technical problem underlying the invention; 
(iii)
such features at least implicitly clearly belong to the description of the invention contained in the application as filed (Art. 78(1)(b)) and thus to the content of the application as filed (Art. 123(2)); and
(iv)
such features are precisely defined and identifiable within the disclosure of the reference document. 

Moreover, documents not available to the public on the date of filing of the application can only be considered if (see T 737/90):

(i)
a copy of the document was available to the EPO, or to the receiving Office if the application is a Euro-PCT application which was not filed at the EPO as the receiving Office, on or before the date of filing of the application; and
(ii)
the document was made available to the public no later than on the date of publication of the application under Art. 93 (e.g. by being present in the application dossier and therefore made public under Art. 128(4)).