1.3.7 Novelty test

In T 201/83 (OJ 1984, 481) it was stated that the test for compliance with Art. 123(2) EPC 1973 was basically a novelty test, i.e. no new subject-matter may be generated by the amendment (see also T 136/88). T 17/86 (OJ 1989, 297, Corr. 415) added that novelty could be found in a limitation, the addition to a claim of a further feature, or even in the absence of one of the elements of a device. In G 2/10 the Enlarged Board held that after the amendment the skilled person "may not be presented with new technical information" and stressed the importance of applying a uniform concept of disclosure (with reference to Art. 54, 87 and 123 EPC).

The boards have highlighted the limitations of the novelty test (see T 194/84, T 133/85, T 177/86, T 118/89, T 187/91, T 288/92 and T 873/94; for summaries of these decisions see CLB, 10th edn. 2022, II.E.1.3.7). The boards have seldom expressly applied the novelty test in their recent case law, but it was referred to in e.g. T 60/03, T 1374/07, T 2202/08, T 1710/09 and T 2270/09. According to T 2537/10, the novelty test is no longer relevant for the assessment under Art. 123(2) EPC (see also T 1525/15). However, reference is still made to this test in the April 2025 version of the Guidelines (EPC Guidelines H‑V, 3.2) for inclusion of additional features: "If the resulting combination is novel over the application as originally filed, the amended claim does not fulfil the requirement of Art. 123(2) EPC [EPC]".