b) Meaning of "selection from two lists" 

The board in T 1374/07, referring to T 811/96, said that a selection of two components (here: fat and enzymes) from one list is in fact equivalent to a twofold selection from two identical lists (see also T 2375/09, T 1506/13). Thus, the board concluded that the addition of the feature "fat and enzymes" to claim 1 infringed Art. 123(2) EPC.

In T 197/08 the board observed that the feature "FIE as the sole active ingredient" was not as such mentioned in the original application. The respondent (opponent) had argued that the introduction of "as the sole active ingredient" in combination with FIE, which was selected from a group of compounds in which it was not its most preferred active ingredient, constituted an unallowable selection from two lists. The board considered that FIE was selected from a list of six particularly preferred active ingredients and combined monotherapy (as the sole active ingredient), which constituted de facto the only administration form envisaged in the original application. Under these circumstances, the feature was not the result of two selections from different lists, as basically only one selection, i.e. the selection of FIE, had to be made in order to arrive at the feature. As a consequence, the requirements of Art. 123(2) EPC were met.

In T 236/08 the feature "suitable for administration by inhalation" in claim 1 was not present in the claims as originally filed. A basis for this feature could however be found as part of a list in the description, where it was one way among different possible ways of administration. A consequence was however that the combination of the subject-matter of claim 1 with the subject-matter of any dependent claim which also resulted from a selection among different possibilities would constitute an unallowable selection from multiple lists.

According to the board in T 2134/10, there was no combination of independent features from two lists. The board found that a specific degree of sequence identity (in claim 1(d): "at least 95%") is not a property that, in combination with a particular molecule selected from Table 1 (disclosing 113 open reading frames encoding potentially antigenic peptides of S. pneumoniae), could single out a particular molecule or confer properties to the claimed subject-matter not directly and unambiguously derivable from the application as filed.

In T 1581/12 claim 1 was directed to a combination of sequences SEQ ID NO 4, 6 with fragment length of "20 or more consecutive amino acids", and a selection of those fragments containing an epitope of these sequences. In the parent application, sequences SEQ ID NO 4, 6 were disclosed as members of a list of several hundred sequences. Likewise, the fragment length indicated in claim 1 was disclosed in the parent application within a long list of lengths to be selected "depending on the particular sequence". Distinguishing its case from T 583/09 and T 2134/10 the board observed that the values of the fragment length disclosed in the parent application would be understood by a skilled person to apply to each and every member of the list of disclosed amino acid sequences (SEQ ID NOs), wherein the upper length of these fragments varied "depending on the particular sequence"; the list of fragment lengths was actually not independent from the list of amino acid sequences. The combination of the value "20 or more consecutive amino acids" with the amino acid sequences SEQ ID NOs 4, 6, therefore only limited the original disclosure in the parent application. This limitation did not create new subject-matter.

T 119/15 distinguished its case from T 1511/07 (see the summary in point a) above), as it did not relate to lists within the meaning of T 1511/07. Similarly, in T 2695/16 the board did not accept the argument of the appellant that the combination of amendments resulted from a selection from two lists of compounds.

In T 1442/19 the board observed that the concept of lists did not require a list to have a particular format. The crucial aspect was the information conveyed to the skilled person. If the skilled person was confronted with an indication of equally preferred items, this indication of items formed an enumeration or list. T 1442/19 distinguished its case from T 2635/18. In T 2635/18 the board held that starting from the embodiment of a dependent claim of the application as filed did not constitute a selection. However, contrary to T 1442/19, with regard to the dependent claim in question, there were no other dependent claims with regard to which a selection would have had to be made. Instead, in T 1442/19 claims 19 to 21 formed a list. The board held that the mere fact that cobicistat was individualised in claim 20 could not be understood as a pointer to this compound as argued by the respondent, a view that might possibly have been accepted if cobicistat had been the only compound mentioned in the claims.

With regard to the length of the list, see T 1442/19, where the board held that even if lists were regarded as very short, this did not render a selection superfluous, whereas in T 2037/17 the board held that selecting two independent and individual options from a very short list did not generate any new teaching.