Art. 123(2) EPC requires that a European patent application or patent must not be amended in such a way that it contains subject-matter that extends beyond the content of the application as filed.
In what has often been perceived as an increasingly strict interpretation of the added subject matter provisions, it is not uncommon for European Patent Office (EPO) examiners to require literal basis for amended claim wording. Applicants are frequently frustrated by the fact that equivalent amendments in other jurisdictions, such as the US, are often deemed acceptable by patent examiners there.
The established test behind the EPO’s assessment of added matter is that the amendments must not result in the skilled person being presented with information that is not directly and unambiguously derivable, using common general knowledge, from the application as filed. When requiring literal basis in the application as filed, is the role of the skilled person being overlooked?
Some recent EPO Board of Appeal decisions appear to have provided a check to proponents of an overly strict interpretation of the added matter provisions.
In T667/08, the Board stated the following:
“It is an undisputed principle in the jurisprudence of the Boards of Appeal of the EPO that an amendment is allowable under Article 123(2) EPC if the subject matter resulting from the amendment is directly and unambiguously derivable from the original application documents i.e. the description, the claims and the drawings, using common general knowledge. Thereby it is not necessary that the subject matter resulting from the amendment was explicitly disclosed in the original application.
It is therefore essential, when deciding on issues of added subject-matter, to identify the actual teaching conveyed by the original disclosure, i.e. the technical information that the skilled person reading the original disclosure would have derived its content (description, claims, drawings) considered in its entirety.
This approach might lead to the identification of subject matter which has not been explicitly revealed as such in the application as filed, but nevertheless derives directly and unambiguously from its content. Literal support is not required by the wording of Article 123(2) EPC. An amendment can therefore be allowable if it combines information which has not been disclosed in one and the same section as the original disclosure, but results, for instance, from information gathered from various embodiments possibly associated with general statements regarding the information derivable from the introductory section of the application.
If this were not the case, the original disclosure would be deprived of a part of the information it actually contained, namely the technical teaching that the skilled person would retrieve from the application but which may typically extend beyond a mere literal interpretation of the original text” (emphasis added).
Furthermore, in a different case T2619/11 the Board was mindful that the application was directed to a technical audience rather than to a philologist or logician. The Board also stated that in the particular case being considered, the Examining Division’s decision was disproportionately directed to the structure of the claims as filed to the detriment of what is really disclosed to the skilled person by the application as filed.
The EPO Guidelines (H-IV, 2.3), revised in September 2013, now refer to decision T667/08 and explicitly state that literal support is not required by the wording of Article 123(2) EPC. This should put applicants in a stronger position when arguing against objections raised by EPO Examiners requiring literal basis.
However, the EPO should not be seen to be assessing added-matter under a new test. Since T2619/11 and T667/08, a more recent decision T248/12 has referred to the established added-matter test as the “gold standard”, i.e. that any amendment can only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, from the application as filed. T248/12 suggests that there should be no departure from the gold standard.
So, although it appears the EPO will continue to interpret the added-matter provisions strictly, there is ammunition for applicants and proprietors facing an examiner who is taking an overly strict, literal approach to assessing added matter.
This article is for general information only. Its content is not a statement of the law on any subject and does not constitute advice. Please contact Reddie & Grose LLP for advice before taking before any action in reliance on it.