1.9.1 Principles

According to established case law (as summarised e.g., in T 219/09, T 1944/10 or T 3069/19), it will normally not be allowable to base an amended claim on the extraction of isolated features from a set of features originally disclosed only in combination, e.g. a specific embodiment in the description or drawings of the original application (T 1067/97, T 714/00, T 25/03, T 2095/12, T 1365/16).

Amended subject-matter that amounts to a generalisation of a particular embodiment disclosed in the original application but is still more specific than the original definition of the invention in general terms is often called an "intermediate generalisation" (see e.g. T 461/05, T 191/04; see also T 2311/10) and sometimes an "intermediate restriction" (see T 461/05, T 879/09, T 2537/10). Other decisions understand "intermediate generalisation" to refer to an undisclosed – and thus unallowable – combination of selected features lying somewhere between an originally broad disclosure and a more limited specific disclosure (T 1408/04). An intermediate generalisation is different from a simple generalisation (as e.g. in T 910/03, T 404/03), since in the former case a definition of the invention in general terms forms part of the original disclosure (T 461/05).

In T 1238/08 the board observed that it would be contrary to the purpose of Art. 123(2) EPC to allow undisclosed intermediate generalisations only because the application as originally filed had not been drafted to contain appropriate fall-back positions.

An intermediate generalisation is justified only in the absence of any clearly recognisable functional or structural relationship among the features of the specific combination (see e.g. T 1067/97, T 25/03, T 876/05, T 1587/12, T 1561/14, T 2003/14, T 879/18) or if the extracted feature is not inextricably linked with those features (see e.g. T 714/00, T 2154/11, T 2287/11, T 775/17). See also e.g. T 1397/09, T 2172/11, T 2095/12, T 2489/13, T 2313/13, T 1469/15, T 152/16 and T 1365/16, which refer to both criteria; see also the abstracts on T 1500/07 and T 500/11 below.

The board in T 962/98 held that an intermediate generalisation was admissible only if the skilled person could recognise without any doubt from the application as filed that those characteristics were not closely related to the other characteristics of the working example and applied directly and unambiguously to the more general context (often cited, see e.g. T 1144/08, T 313/09, T 879/09, T 2185/10, T 500/11, T 2489/13, T 1002/14, T 978/15). In other words, in order to be acceptable, this intermediate generalisation had to be the result of unambiguous information that a skilled person would draw from a review of the example and the content of the application as filed.

In T 461/05 the board found that claim 4 as amended defined subject-matter which was less general than that defined by claim 1 in the original version but more general than the particular embodiment corresponding to case 2a as disclosed in the description and the subject-matter of claim 6 as originally filed. The amendment comprised the omission of certain characteristics of the combination of features of the particular embodiment. The board held that the provisions of Art. 123(2) EPC 1973 precluded such an amendment only where the amendment presented the skilled person with new information which did not follow directly and unambiguously from the application as originally filed. A restriction of a claim by adding a number of features from a particular embodiment originally disclosed did not in itself introduce such new information. By contrast, the omission of the remaining features of the embodiment would introduce new information if the omitted features were necessary to carry out the particular embodiment of the invention. In the case in hand, the board saw no reasons why these omitted features would be necessary to carry out the invention. Therefore, claim 4 as amended was in conformity with Art. 123(2) EPC. See also T 273/10.

In T 1906/11 the board emphasised that classifying an amendment as an "intermediate generalisation" or otherwise, for example as an "omission of an originally claimed feature" or a "multiple selection from two groups of alternative features" did not permit, as such, the drawing of any conclusion about the allowability of this amendment under Art. 123(2) EPC. According to that decision, the only relevant question would be whether a skilled person faced with the amended version of the application or patent, as compared to a skilled person having seen only the version originally disclosed, would derive from that amended version any additional technically relevant information. Only if such additional information was derivable can there be an infringement of Art. 123(2) EPC (cited in T 802/13). In T 248/12 the board stated that in respect of the "technical relevance" of the added information, case T 1906/11 could not be understood to define a new standard for judging amendments with respect to Art. 123(2) EPC since this would be at odds with the "gold standard" in G 2/10 (OJ 2012, 376). See also T 1791/12 where the board considered that no divergent interpretations of the principles contained in G 2/10 for judging amendments were apparent in T 1906/11. The board in T 1471/10 considered that the ultimate standard for assessing compliance with the requirements of Art. 123(2) EPC in the case of an intermediate generalisation remains the "gold standard" (as set out in chapter II.E.1.3.1; see also T 2392/10, T 1791/12, T 1762/21). This approach was followed in T 321/23 where the board observed that, also in the context of intermediate generalisations, the various tests developed for different cases of amendments might be an aid but they could not take the place of the "gold standard" and should not lead to a different result.

In T 2311/10 the board held that, in the case of an intermediate generalisation, the three-point or essentiality test was unhelpful or even misleading. See also T 1840/11, T 2095/12 and T 2489/13. On the three-point or essentiality test in general see in this chapter II.E.1.4.4 above. Also, in T 9/19, the board held that the degree of relevance or essentiality of a feature was not the relevant test for assessing whether an amendment introduced added subject-matter.

In T 1387/05 the board noted that the same principles were to be applied for both Art. 76(1) EPC and Art. 123(2) EPC 1973. It followed that it was normally not allowable under Art. 76(1) EPC 1973 to extract features from a set of features which were originally disclosed only in combination in a parent application and to claim such extracted features in a divisional application isolated from their context, namely the combination disclosed in the parent application. See also the abstract for the consolidated cases T 1500/07, T 1501/07 and T 1502/07 in chapter II.E.1.9.2 below.