Résumé de EPC2000 Art 123(2) pour la décision T0110/20 du 26.09.2023

In T 110/20 the board recalled that in G 1/93 the Enlarged Board acknowledged the inescapable trap that may result from Art. 123(2) and (3) EPC (see point 1 of the Order). The Enlarged Board then went on to specify certain circumstances under which an undisclosed feature was not to be considered to infringe Art. 123(2) EPC (see point 2 of the Order): "A feature which has not been disclosed in the application as filed but which has been added to the application during examination and which, without providing a technical contribution to the subject-matter of the claimed invention, merely limits the protection conferred by the patent as granted by excluding protection for part of the subject-matter of the claimed invention as covered by the application as filed, is not to be considered as subject-matter which extends beyond the content of the application as filed in the sense of Art. 123(2) EPC." The board explained that several decisions had assessed whether an undisclosed feature was to be considered added subject-matter under Art. 123(2) EPC in view of point 2 of the Order of G 1/93. Occasionally, an undisclosed feature was found allowable under Art. 123(2) EPC on the basis of point 2 of the Order of G 1/93 (see for example T 1779/09, T 1595/11, T 824/08 and T 535/08). However, in most cases, the competent board had found that the undisclosed feature provided a technical contribution, concluding that the conditions set out in point 2 of the Order of G 1/93 were not fulfilled (see for example T 412/22 and T 312/16). Also in the case in hand, the board established that the undisclosed feature added to claims 1 and 4 provided a technical contribution to the subject-matter of the claimed invention within the meaning of point 2 of the Order of G 1/93. The board noted that T 768/20 stated that point 2 of the Order of G 1/93 seemed to address undisclosed disclaimers, which were later examined in greater detail in G 1/03. The present board further noted that the allowability criteria according to point 2 of the Order of G 1/93 were different from those laid down for undisclosed disclaimers in G 1/03. Accordingly, an undisclosed disclaimer could fulfil the criteria according to point 2 of G 1/93 without fulfilling the (stricter) criteria set out in G 1/03. In the board's view this could only mean that, to the extent that point 2 of the Order of G 1/93 concerned undisclosed disclaimers, it had to be considered to have been superseded by G 1/03 and G 1/16. Moreover, regardless of whether or not point 2 of the Order of G 1/93 addressed undisclosed disclaimers, the present board referred to T 768/20 in which it was stated that the case law of the Enlarged Board did not seem to provide for any further exception to the gold standard other than the exception concerning undisclosed disclaimers under G 1/03. The board concluded that the only claim request comprised added subject-matter thus infringing Art. 123(2) EPC.