1.2. Content of the application as filed: Parts of the application which determine the disclosure of the invention

In T 1424/23 the board explained that when assessing compliance with Art. 123(2) EPC, it has to be established whether the application has been amended in such a way that it contains subject-matter which extends beyond the content of the application as filed. Citing G 3/89, the board recalled that the content of the application as filed consists of the description, claims and drawings as filed, i.e. on the filing date. In the case in hand, the application as filed had been published during the international phase.

However, the decision under appeal discussed the amendments made to claim 1 compared to the amended claim 1 filed on entry into the European phase. The board observed that the claims filed on entry into the European phase did not correspond to those of the application as filed. It therefore established that the claims filed on entry into the European phase did not provide a basis for assessing compliance with Art. 123(2) EPC.

As it appeared that the examining division had incorrectly relied on the claims filed on entry into the European phase for its Art. 123(2) EPC assessment, the board concluded that a proper Art. 123(2) EPC assessment might not have been carried out. Consequently, it remitted the case to the examining division for further prosecution.