Abstract on EPC2000 Art 123(3) for the decision T2257/19 of 18.04.2023

In T 2257/19 the invention concerned a security element having magnetic elements in which the magnetic difference of the regions (magnetic codes) could not be detected by normal instruments, but exclusively by means of dedicated sensors. The appellant held that feature (H) was not disclosed in the underlying original patent application. As to feature (G), it was allegedly based on the originally filed description. However, by removing feature (G) from the specific context of the corresponding embodiment and by placing it in the context of the originally claimed features (A) to (F) together with the new feature (H), new subject-matter was created. Amended feature (G) meant that the magnetic areas had to be separated in the horizontal as well as in the vertical direction. However, such a vertical separation was not disclosed anywhere in the originally filed application. Removing the feature of vertical separation would infringe the requirements of Art. 123(3) EPC. Feature (G) thus represented an inescapable trap. Therefore, new auxiliary requests 4A to 4C could not overcome the objections and therefore should not be admitted. The board agreed with the arguments of the appellant. By filing auxiliary requests 4A to 4C the respondent attempted to overcome the "Art. 123(2)/(3) EPC trap" situation by better defining the horizontal separation of the magnetic areas and excluding vertical separation of the magnetic areas. However, the board observed that as usual with an "Art. 123(2)/(3) EPC trap", the exclusion of vertical separation would lead to a violation of Art. 123(3) EPC, as this would broaden the scope of protection granted. On the other hand, healing of the violation of Art. 123(2) EPC was impossible as the original application documents did not provide a sufficient basis for the presence of a vertical separation. The elimination of feature (G) (and (H)) as a whole would be all the more contrary to the requirements of Art. 123(3) EPC. An inescapable trap intrinsically precluded the admission of new requests under Art. 13(1) and (2) RPBA 2020, as the requirements of Art. 123(2) and (3) EPC could not both be satisfied. Consequently, and irrespective of the discussion as to whether there were exceptional circumstances that would justify filing the new requests at this very last stage of the procedure, auxiliary requests 4A to 4C were not admitted into the proceedings under Art. 13(2) and (1) RPBA 2020 because they prima facie could not overcome the objections under Art. 123(2) EPC without infringing the requirements of Art. 123(3) EPC.