a) Principles 

In T 727/00 the board held that the combination – unsupported in the application as filed – of one item from each of two lists of features meant that although the application might conceptually comprise the claimed subject-matter, it did not disclose it in that particular individual form. For that reason alone, claim 1 of the main request was not supported by the description and contravened Art. 123(2) EPC. See also T 714/08, T 1267/11 and T 3035/19.

According to T 1621/16 it is established case law that, under certain circumstances, amendments based on multiple arbitrary selections from lists represent an extension of the content of the application as filed under Art. 123(2) EPC. However the board noted that most decisions following this well-established approach related to amendments based on lists of non-converging alternatives. The board considered that selections from lists of converging alternatives should not be treated in the same way as selections from lists of non-converging alternatives (see the summary of this decision in point d) below).

In T 1937/17 the board held that, other than for the purposes envisaged in G 1/93 (OJ 1994, 541), a "technical contribution" was of no relevance when deciding on the allowability of amendments under Art. 123(2) EPC. Instead, the gold standard set out in G 2/10 (OJ 2012, 376) was the only criterion that had to be applied.

The board in T 1511/07 held that although the selection of explicitly disclosed borderline values defining several (sub)ranges, in order to form a new (narrower) sub-range, was not contestable under Art. 123(2) EPC when the ranges belong to the same list, the combination of an individual range from this list with another individual range emerging from a second list of ranges and relating to a different feature was not considered to be disclosed in the application as filed, unless there was a clear pointer to such a combination. According to T 1149/20 it is established case law that a combination of features originally disclosed separately or selected from several lists may still be directly and unambiguously derivable from the original application in the presence therein of explicit or implicit pointers to said specific combination. For decisions applying this criterion, see in this chapter II.E.1.6.2 c) below.

In T 783/09 the board considered that in the case in hand the skilled person would directly and unambiguously recognise forty-four individual combinations, among them the three "basic" combinations referred to in claim 1. The board referred to the statement in decision T 12/81 (OJ 1982, 296, in which this criterion was used in the context of novelty; see also above chapter I.C.6.2) that if "two classes of starting substances are required to prepare end products and examples of individual entities in each class are given in two lists of some length, then a substance resulting from the reaction of a specific pair from the two lists can nevertheless be regarded for patent purposes as a selection and hence as new". The board noted that given the term "can" in this citation, the absence of a direct and unambiguous disclosure for individualised subject-matter was not a mandatory consequence of its presentation as elements of lists. Thus, the "disclosure status" of subject-matter individualised from lists had to be determined according to the circumstances of each specific case by ultimately answering the question whether or not the skilled person would clearly and unambiguously derive the subject-matter at issue from the document as a whole.

In T 1710/09 the board insisted, however, that, in line with established jurisprudence, "can" within the meaning of T 12/81 was to be a taken as a "is to". In view of the implications of freely interpreting this word "can" as in T 783/09, there was deep concern that in this way the uniformity of the disclosure assessment process could not be warranted.

In T 1255/18, referring to T 783/09, the board emphasised that, while conditions had been developed by the case law, such as the so-called "two-lists principle", they were not meant to be additional or alternative conditions, but only a possible aid in certain cases to verify whether the gold standard was satisfied. The central question to be answered therefore was whether the claimed combination of features could be seen by the skilled person as directly and unambiguously derivable from the content as a whole of the parent application as filed.

In T 3035/19 the board was of the opinion that, while the notion of selection from two lists was not meant to take the place of the gold standard, it provided valuable guidance and found wide application in case law for the assessment not only of added subject-matter but also of novelty (see T 12/81, OJ 1982, 296, and Case Law of the Boards of Appeal, 9th ed., I.C.6.2). Consequently, in view of the importance of applying a uniform concept of disclosure for the purposes of Art. 54 and 123(2) EPC (see G 2/10, OJ 2012, 376, referring to G 1/03, OJ 2004, 413), and by the same token Art. 76(1) EPC, the board considered that a departure from this established criterion for selection inventions in the assessment of added subject-matter was not appropriate. The board emphasised that the combination of features resulting from selections from two or more lists, or pertaining to separate embodiments, only introduced added subject-matter in the absence of a pointer to that particular combination. In other words, the concept of selection from lists had to be applied with due regard to the whole content of the earlier application as filed.