1. Article 123(2) EPC – added subject-matter

Catchword: 

1. There is no provision stipulating that examples within the meaning of Rule 42(1)(e) EPC should not be in the form of claim-like clauses, i.e. in the form of one or more independent clauses followed by a number of clauses referring to previous clauses, at the end of or in another part of the description. There is no justification for deleting such examples just because they were drafted as claim-like clauses. They are to be treated like any other part of the description and thus, inter alia, must support the claims (Article 84 EPC). (Reasons 3.4 and 3.5)  2. It is a general and overarching objective, and as such also a "requirement" of the Convention, that authorities, courts and the public interpreting the claims at a later stage should, as far as possible, arrive at the same understanding of the claimed subject-matter as the EPO bodies deciding on the patentability of the same subject-matter. The only tool for achieving this objective is the patent specification as the expression of a unitary legal title. The description, as an integral part of the patent specification, should therefore also serve this overriding objective, i.e. it should provide a common understanding and interpretation of the claims. If the description contains subject-matter which manifestly impedes a common understanding, it is legitimate to insist on its removal under Articles 84 and 94(3) EPC and Rules 42, 48 and 71(1) EPC. (Reasons 5.5.3)  3. The board approves the practice where instead of a direct removal, i.e. the deletion of the subject-matter not covered by the claims, a "removal" by way of an appropriate statement is made, leaving the technical disclosure unaffected. (Reasons 5.7.2)  4. A referral to the Enlarged Board of Appeal whose sole purpose is to correct the Guidelines and which is not necessary either for ensuring a uniform case law within the boards or for the board's decision is not admissible. Such a referral could be perceived as an attempt to encroach on the President's powers under Article 10(2)(a) EPC. (Reasons 8.2.2)

Catchword:

For assessing an intermediate generalisation in an amended claim for compliance with Article 123(2) EPC it has to be established whether, because of this generalisation, the subject-matter of the claim extends beyond what was, be it explicitly or implicitly, directly and unambiguously disclosed to the person skilled in the art using common general knowledge in the application as filed. This is the "gold" standard for assessing any amendment for its compliance with Article 123(2) EPC (G 2/10, point 4.3 of the Reasons). If an amended claim comprises only some features of an originally disclosed combination and the features left out of the claim were understood, by the person skilled in the art, to be inextricably linked to the claimed ones, the claim includes subject-matter extending beyond the application as filed. This is the case if the person skilled in the art would have regarded the omitted features to be necessary for achieving the effect associated with the added features. In such a situation the amended claim conveys the technical teaching that the effect can be obtained with the claimed features alone, which is in contrast with and extends beyond the original disclosure that the whole combination of features was needed. The criteria for assessing the validity of a priority for the subject-matter of a claim as set out in G 2/98, no matter whether or not the claim includes intermediate generalisations, correspond to the "gold" standard for assessing any amendment for its compliance with Article 123(2) EPC. In view of Article 88(4) EPC, it is not required that this subject-matter be disclosed in the form of a claim or in the form of an embodiment or example specified in the description of the application from which the priority is claimed. In the passage in point 4 of the Reasons of G 2/98 these items, as derived from the expression "in particular", are simply listed as exemplary parts of the application documents. (Reasons, points 2.4 and 3.2)

Catchword: 

The mere fact that features are described in the application as filed in terms of lists of more or less converging alternatives does not give the proprietor a "carte blanche" for freely combining features selected from a first list with features selected from a second list disclosed in the application as filed. Any such amendment will only be allowable under Article 123(2) EPC if it complies with the "gold standard" defined in decision G 2/10 (reasons 2.18 of the present decision).

Catchword:

Any unclarity that may arise from an ambiguity in an application as filed is to the detriment of a patent proprietor, who is ultimately responsible for the drafting of the application as filed and its claims. The fact that a feature in the application as filed is unclear cannot therefore justify or excuse the complete deletion of the unclear feature or its replacement by another feature if this results in an extension beyond the content of the application as filed. What prompted a patent proprietor to make a particular amendment to the claims cannot have any influence on the outcome of the assessment of the ground for opposition under Article 100(c) EPC (point 8 of the Reasons).

Catchword: 

Following the explicit reference in G 2/10 to the applicability of the existing jurisprudence regarding the singling out of compounds or sub-classes of compounds or other so-called intermediate generalisations not specifically mentioned nor implicitly disclosed in the application as filed (see G 2/10, section 4.5.4), the Board understands the notion of  "the remaining generic group of compounds differing from the original group only by its smaller size" versus "singling out an hitherto not specifically mentioned sub-class of compounds" and the notion of  "mere restriction of the required protection" versus "generating another invention" or "suitable to provide a technical contribution to the originally disclosed subject-matter"  as developed in the jurisprudence (see in section Case Law of the Boards of Appeal, supra, section II.E.1.6.3) not as modifications of the "gold standard" for the assessment of amendments in the form of additional or alternative criteria, but rather as considerations which may arise from the application of this standard when assessing amendments by deletion of options from multiple lists and which may affirm the result of such assessment. In particular, the observation that a deletion of options from multiple lists is an amendment suitable to provide a technical contribution to the originally disclosed subject-matter, can be used to support the assessment that this amendment is not in compliance with the "gold standard".

Catchword:

The description of a drawing may be inextricably linked to the specific disclosure of this drawing. If a feature in the description of the drawing is extracted from the very specific context of the drawing in order to be included in a claim, the specific disclosure of the drawing must be taken into account. If there is no literal support for this specific disclosure in the application as filed which could be used for supplementing the feature used for amending the claim, it may not be possible to avoid an unallowable intermediate generalisation. This may in particular occur if a feature from a specific and detailed embodiment is placed in the context of a schematic drawing. This may lead to a trap-like situation. (Reasons, 2.8.4 and 2.9)

Catchword: 

In view of the principles of multiple priorities and partial priority: undisclosed disclaimer based on a disclosure in an earlier application by the same applicant not allowed.

Catchword:

In general, an auxiliary request which is directed to a combination of granted dependent claims as new independent claim, and filed after the statement of grounds or the reply thereto, will be an amendment of the party's appeal case within the meaning of Article 13 RPBA 2020. See reasons 9. A skilled person assessing the contents of the original application documents uses his technical skill. If they recognise that certain elements of the original application documents are essential for achieving a technical effect then adding that technical effect to a claim without also adding the essential elements can create fresh subject-matter even if the essential elements are originally portrayed as being optional. See reasons 3.6.3.

Catchword:

To assess whether an amended patent claim contains added subject-matter under Article 123(2) EPC, the claimed subject-matter must first be determined by interpreting the claim from the perspective of the person skilled in the art. In a second step, it must be assessed whether that subject-matter is disclosed in the application as filed (Reasons 1.3.8 to 1.3.10).

Catchword: 

1.) Article 69 EPC in conjunction with Article 1 of the Protocol thereto can and should be relied on when interpreting claims and determining the claimed subject-matter in proceedings before the EPO, including for the purpose of assessing compliance with Article 123(2) EPC (Reasons 3.1-3.15).  2.) Although Article 69(1), second sentence, EPC requires that generally account be taken of the description and the drawings when interpreting a claim, the primacy of the claims according to Article 69(1), first sentence, EPC limits the extent to which the meaning of a certain claim feature may be affected by the description and the drawings (Reasons 3.16-3.16.2).  3.) Claim interpretation is overall a question of law which must as such ultimately be answered by the deciding body, and not by linguistic or technical experts. It does, however, involve the appraisal of linguistic and technical facts which may be supported by evidence submitted by the parties (Reasons 3.17).

Catchword: 

1. Mere inconsistencies among the indications in the request for grant of a European patent (EPO Form 1001), and between some of them and the originally filed application documents, are not sufficient to prove an alleged obvious error or the obviousness of a correction offered under Rule 139 EPC. 

2. The ban on corrections under Rule 139 EPC by replacement of at least the complete description is categorical.

Abstract

In T 1084/22 the patent concerned insulating glazing units, which typically consist of two glass sheets separated by a perimeter spacer. Specifically, it related to a method for creating such units. This involved providing a spacer body with adhesive on both sides in a storage container. Claim 1 was amended during examination to specify that the adhesive was a pressure sensitive adhesive.

The board was not convinced by the argument put forward by the appellant (patent proprietor) which aimed to show that the feature was implicitly derivable from the description.

The board found that the second line of argument submitted by the appellant was not convincing either. The appellant had submitted that the reference in the description of the application as filed to HBP8 (a US patent), which mentioned pressure sensitive adhesives, also provided an original basis for the added feature.

The board explained that the appealed decision referred to conditions developed in the case law for being able to incorporate features from a cross-referenced document (see in particular T 689/90). Thus, only under particular conditions would adding features from a cross-referenced document to a claim not be contrary to Art. 123(2) EPC, namely if (a) the description of the invention as filed left the skilled reader in no doubt that protection was sought or may be sought for those features; (b) that they implicitly clearly belonged to the description of the invention contained in the application as filed and thus to the content of the application as filed; and (c) that they were precisely defined and identifiable within the total technical information contained in the reference document.

The board viewed these conditions, along with alternative or reformulated criteria found in the cases cited in Case Law of the Boards of Appeal, 10^th ed. 2022, II.E.1.2.4, as different applications of the "gold standard". While different tests had been developed, they could only assist in determining whether an amendment complied with Art. 123(2) EPC, but did not replace the "gold standard" and should not lead to a different result. Thus, the board considered it sufficient and appropriate to apply the "gold standard" principle to this case.

In a case of incorporating features from a cross-d document, the "gold standard" essentially required that the skilled reader had to be able to directly and unambiguously derive which subject-matter of the incorporated document was part of the original application. In other words, which features of the application were to be taken from the referenced document.

Therefore, the question that the board needed to answer was whether, in the absence of any hindsight or knowledge of the amended claim, the skilled person reading the original documents would directly and unambiguously derive from the cross-reference to HBP8 that the adhesive's pressure sensitive nature was a feature to be incorporated from HBP8 into the original application. This required that when the skilled reader of the application as filed consulted HPB8 as instructed it was immediately clear to them that it was that feature and that feature alone that was to be included. If that feature was disclosed in a certain technical context in the cross-referenced document, then, applying the same standard as for intermediate generalisations, isolation of the feature was justified only in the absence of any clearly recognisable functional or structural relationship.

In the board's view it was neither immediately clear to the skilled person from the cross-reference to HBP8 that it was the feature of the adhesive being pressure sensitive that was to be included, nor that that feature could be taken out of its context in HPB8.

Hence, the board concluded that the amendment to claim 1 specifying the adhesive as "pressure sensitive" extended the patent's subject matter beyond the content of the original application.

Abstract

In T 566/20 the parties disagreed on the interpretation of the feature "the position information in association with the serial number information output from the position control device".

The appellant (opponent) submitted that the position control device could output the serial number information, possibly with the position information. In their opinion, this interpretation was grammatically correct, made technical sense and was not disclosed in the application as originally filed.

In the respondent's view, it was apparent from the claim that the output from the position control device concerned the position information in association with the serial number information. The respondent also noted that this interpretation was in accordance with the disclosure of the application as filed.

The board concurred with the appellant that outputting both the position information and the associated serial number information from the position control device was technically sensible. It further agreed with the appellant that the fact that the claim did not include a step of receiving serial number information did not necessarily mean that the position control device did not receive this information. Outputting both the position information and the serial number information allowed the vision measuring system to match position information with image information by unambiguously correlating serial number information associated with, or included in, each of them. This interpretation did not appear to give rise to incompatibilities with the remaining features of the claim.

Moreover, the board endorsed the view that a patent proprietor would be awarded an unwarranted advantage if it were allowed to restrict the claimed subject-matter by discarding at will technically reasonable interpretations in view of the description (see T 1127/16 and T 169/20). Therefore, the fact that the description and drawings support one interpretation of an ambiguous feature was not sufficient for other interpretations of the ambiguous feature that are technically reasonable in the context of the claim to be discarded.

Abstract

In T 1054/22 the examining division had concluded that claim 1 of the main request did not fulfil requirements of Art. 123(2) or 76(1) EPC, among other things, and it refused the patent application.

In its submissions on appeal, the applicant had argued that applying the criteria of G 1/93 (point 16 of the Reasons), the amendments did not result in an unwarranted advantage. Amended claim 1 of the main request was based on the earlier application as filed. This applied in particular to the amendments concerning the omega-6 to omega-3 ratio of 4:1 or greater and the concentration of omega-6 fatty acids (4-75% by weight of total lipids) and omega-3 fatty acids (0.1-30% by weight of total lipids).

The board dismissed the appeal. It explained that determining whether an amendment complied with the requirements of Art. 123(2) and 76(1) EPC was assessed using the "gold standard". This term was coined in G 2/10, in which the jurisprudence developed by the Enlarged Board in opinion G 3/89 and decision G 11/91 was confirmed.

The board explained that G 1/93 primarily concerned a case in which a granted claim could not be maintained unamended in opposition proceedings because the claim was found to contravene Art. 123(2) EPC. The examining division had allowed an amendment that should not have been allowed. As explained in G 2/10 (point 4.3 of the Reasons, last paragraph), G 1/93 was not intended to modify the "gold standard".

According to G 1/93, the purpose of Art. 123(2) EPC (and Art. 76(1) EPC) was to prevent an applicant from gaining an unwarranted advantage by obtaining patent protection for something it had not properly disclosed on the date of filing of the application. An added feature limiting the scope of the claim may still contravene Art. 123(2) EPC. An example of this, explicitly mentioned in G 1/93, is a limiting feature that creates an inventive selection not disclosed in the application as filed or otherwise derivable therefrom.

In the case in hand, value ranges had been added to claim 1 of the main request, in features a), (i) and (ii). The question was whether the skilled person would have derived these amendments directly and unambiguously, using common general knowledge, from the entirety of the earlier application as filed. What had to be examined was not only whether there was a basis for each of the features added by the amendments but also whether the skilled person would have derived the combination of features a), (i) and (ii), and that combination of features alone, from the earlier application as filed.

The board concluded that no basis could be found in the earlier application as filed for the combination of the concentration of omega-6 fatty acids of 4-75% by weight of total lipids and omega-3 fatty acids of 0.1-30% by weight of total lipids (feature (i) of claim 1 of the main request). As to the ratio (feature a) of claim 1 of the main request), there was no basis in the earlier application as filed for an open-ended ratio of omega-6 to omega-3 fatty acids of 4:1 or greater. Thus, claim 1 of the main request contravened Art. 76(1) EPC.

Abstract

In T 1809/20 appellants 1 and 2 (opponents) objected that claim 1 of the main request contained subject-matter extending beyond the content of the application as filed.

Claim 1 of the main request related to a method for producing a certain purified protein. The board agreed that, as submitted by the appellants, claim 1 of the main request comprised multiple selections regarding the type of protein to be purified (antibody, antibody fragment, or Fc fusion protein), the concentration of arginine or arginine derivative in the wash solution (in a range of 0.05-0.85 M), the concentration of the non-buffering salt in the wash solution (in a range of 0.1-2.0 M), and the pH of the wash solution (being greater than 8.0).

The board explained that it is established case law that the content of the application as filed must not be considered a reservoir from which features pertaining to separate embodiments are taken and combined to artificially create a particular embodiment without the presence of a pointer to combine the features of the separate embodiments.

In the case in hand, nothing in the application as filed pointed to the specific combination of selections made in claim 1 of the main request. Firstly, two selections were needed to arrive at the protein to be purified and nothing in the application as filed pointed to any preference for combining these selections. Secondly, the chosen range of the concentration of arginine or arginine derivative in the wash solution was only at an intermediate level of preference in the application as filed, while the most preferred range was narrower. Thirdly, the selected range of the concentration of the non-buffering salt in the wash solution represented the selection of the broadest range out of the list of ranges in the application as filed. Finally, the chosen pH of the wash solution was the broadest range of the pH disclosed in a passage of the description and it did not constitute a preferred embodiment.

Regarding the examples, the board explained that each of the concentration values of arginine and arginine-HCl in the wash solution in the examples of the application as filed fell within the range selected in claim 1 of the main request. However, the board observed that each of these concentration values also fell within the most preferred range disclosed in the application as filed. Moreover, each of the concentration values of the non-buffering salt (sodium chloride) in the wash solution of the examples in the application as filed fell within the range selected in claim 1 of the main request. However, each of these concentration values also fell within one of the other two ranges disclosed in the description of the application as filed. Therefore, the examples in the application as filed did not point to the combination of features resulting from the selections of at least the concentration of arginine or arginine derivative and the concentration of the non-buffering salt in the wash solution.

In view of the above, the board concluded that the combination of the features relating to the specification of the protein to be purified, the concentration of arginine or arginine derivative in the wash solution, the concentration of the non-buffering salt in the wash solution and the pH of the wash solution was based on multiple selections at different levels of preference without any pointer being present in the application as filed for these selections. The skilled person reading the application as filed would thus find no guidance as to which of the preferred features they had to start with and which of the other features were then to be combined.

It followed that claim 1 of the main request did not meet the requirements of Art. 123(2) EPC.

Abstract

In T 1886/22 the interpretation of feature F in claim 1 of auxiliary request 5, in particular the term "extends through", was relevant to assess compliance with Art. 123(2) EPC.

The board did not agree with the approach taken in T 1791/16 that all technically reasonable interpretations of an ambiguous claim must be considered in assessing whether the claim contains added subject-matter, and that it is sufficient that one of these interpretations leads to added subject-matter in order to conclude that the claim is not allowable. Rather, the board was of the view that it must first be determined how the person skilled in the art would interpret the relevant feature before it can be assessed whether this feature is disclosed in the application as filed and, accordingly, whether it adds subject-matter (see T 367/20).

The board stated that the terms in a given patent claim must be interpreted in a uniform, consistent and objective manner (see T 177/22), including for the purposes of assessing e.g. added subject-matter and novelty. In the case at issue only the narrower of the two possible – and both technically reasonable – claim interpretations could lead to added subject-matter. Hence, the approach suggested in T 1791/16 would also require a deviation from the established practice to interpret a claim in doubt rather more broadly than more narrowly.

The respondent (opponent) had argued that the word "through" in its ordinary and broadest interpretation meant "from one end to the other", so that feature F must be interpreted as requiring the proximal portion of each of the arms to extend through the entire bushing (interpretation (a)). However, as submitted by the appellant (patent proprietor), the word "through" can also mean "along within", as supported, inter alia, by the dictionary definition A.2 given in D15 (interpretation (b)). Interpreted with this different meaning, feature F required the proximal portion of each of the arms to extend "along within" the bushing, i.e. along a certain distance within the bushing. The board agreed with the appellant that both interpretations (a) and (b) were linguistically and technically sensible and that interpretation (b) was broader than and encompassed interpretation (a).

The board held that on the basis of the wording of feature F alone, and in the absence of any context, it could not be concluded which one of the two aforementioned interpretations took precedence over the other. One could only arrive at such a conclusion when interpreting feature F in the technical context of claim 1. The person skilled in the art reading claim 1 as a whole would understand that for the catheter tip portion to be coupled to the distal end of the catheter shaft it was sufficient that the proximal portion of each of the arms extended partially through the proximal bushing, in other words, that it extended into the bushing. It was irrelevant whether the proximal portion extended further into the bushing, in particular whether it extended through the entire bushing and thus terminated proximal thereto, or whether instead the proximal portion terminated somewhere within the bushing. The skilled person would therefore interpret feature F broadly according to interpretation (b), which left open where the proximal portion of the arms terminates, and would not interpret feature F narrowly according to interpretation (a). In fact, to do so would be tantamount to reading an unjustified limitation into the claim.

In the boards' view, interpreting feature F according to interpretation (b) was not inconsistent with the patent specification, which did not support one interpretation over the other.

The board referred to paragraph [0097] of the application as filed which disclosed explicitly that the longitudinally-extending arms "exit from the distal end of the proximal bushing". According to the board and contrary to the respondent's view, this implied necessarily that the arms extend at least partially through the bushing, i.e. along within it, otherwise they could not "exit" from the bushing. This view was also consistent with the figures of the application as filed which showed an embodiment of a catheter as claimed, such as Figure 33, where the arms were shown as being gripped within a notch formed within the bushing at its distal end. The board therefore concluded that feature F (according to interpretation (b)) did not constitute subject-matter extending beyond the content of the application as filed.

See also T 1345/23, which relates to a patent originating from a divisional application and addresses the same issues in the context of compliance with Art. 76(1) EPC. It was issued by the same board on the same date as T 1886/22 (joint hearing).

Abstract

In T 2103/22 the board, in order to assess compliance with the requirements of Art. 123(2) EPC, had to first determine the subject-matter effectively defined by claim 1 of the main request. In particular, the board interpreted the meaning of the following terms as well as the meaning of their combination:

a) "said polyester resin is a blended polyester resin which is a blend of a lowly crystalline polyester resin and a highly crystalline polyester resin at a weight ratio of 90:10 to 10:90 (…)"

b) "a layer of a polyester resin which comprises an ethylene terephthalate unit formed on at least one surface of the metal sheet".

The respondent (opponent) adhered to the conclusion of the opposition division which had been reached considering that "is" in term a) was to be read as "comprises", which meant that any other component different from the ones specifically mentioned in said claim 1 could be present in the blended polyester resin. The board disagreed and stated that, although it was correct that the normal rule of claim construction was that the terms used in a claim should be given their broadest technically sensible meaning, the literal reading of this passage defined that "said polyester resin" consisted of the lowly crystalline and highly crystalline polyester resins further defined in claim 1 of the main request, in the given weight ratio. In that regard, the board noted that, according to established case law (Case Law of the Boards of Appeal, 10th ed. 2022, II.A.6.2), the term "consists of" meant that the definition of "said polyester resin" was given in a "closed" manner, i.e. it excluded the presence of any other components other than the ones specifically defined (in the case at issue the lowly and highly crystalline polyester resins).

On b), the board found that the term "a layer of a polyester resin" defined, according to its literal reading, that the polyester therein mentioned, i.e. "which comprises an ethylene terephthalate unit", was the main component of the layer. However, this wording neither imposed that the polyester resin was the sole component of the layer, nor that it was the sole resin possibly present in the layer. The board further held that the reference to "unit" in that passage made it clear that the term "which" made reference to the polyester resin and not to the layer. This, in the board's view, would also be the logical reading of the claim made by the skilled person, considering that the term "which" usually makes reference to the word directly preceding it.

As the subject-matter of claim 1 of the main request was defined by the combination of terms a) and b), the board also determined the meaning of the combination of these two terms. It held that the polyester resin specified in the term "a layer of a polyester resin" was identical to the "said polyester resin" further defined in claim 1, i.e. it consisted of a blend of only the lowly and highly crystalline polyester resins.

Taking into account the further definitions of the lowly and highly crystalline polyester resins in claim 1, the board concluded that both of them were "a polyester resin that comprises an ethylene terephthalate unit". Therefore, the term "which comprises an ethylene terephthalate unit" of claim 1 of the main request was in fact redundant (i.e. not further limiting). Contrary to the view of the opposition division, the definitions of the highly and the lowly crystalline polyester resins further imposed that said terephthalate unit had to be present in majority since, otherwise, the resin would not be a "polyethylene terephthalate" anymore.

To determine whether the requirements of Art. 123(2) EPC were met, the board assessed if the deletion of the term "chiefly" from claim 1 of the application as filed resulted in added-matter. It saw no reason to deviate from the literal sense of the term "chiefly", which was that the polyester resin of the layer so defined should principally comprise an ethylene terephthalate unit not as the sole component but as the most important component of the polyester.

According to the board, adopting for the relevant passages of the application as filed the same reading as the one outlined for the corresponding passages of claim 1 of the main request, the term "which chiefly comprises an ethylene terephthalate unit" could only be held to be redundant (i.e. not further limiting) in view of the other features defining the valid support in the application as filed for the claimed subject-matter. Therefore, the presence or not in claim 1 of the main request of the terms "which chiefly comprises an ethylene terephthalate unit" or "chiefly" contained therein, did not lead to added-matter pursuant to Art. 123(2) EPC.