Blurred Lines

A long-standing complaint of patent applicants and patentees at the EPO has been the strict assessment of added subject matter caused by amendment of an application or patent. Various tests have been developed for the assessment of whether an amendment complies with the requirement that:

“The European patent application or European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed.” [Article 123(2) EPC]

These tests have amounted, in many cases, to a requirement for practically verbatim basis for compliance. In an apparent attempt to soften the EPO’s approach, the Guidelines for Examination have been amended, with the new version taking effect on 1st November 2014. Of particular note is the new paragraph added to the section on added subject matter (H-IV, 2.3):

“When assessing the conformity of the amended claims to the requirements of Art. 123(2), the focus should be placed on what is really disclosed to the skilled person by the documents as filed as directed to a technical audience. In particular, the examiner should avoid disproportionally focusing on the structure of the claims as filed to the detriment of the subject-matter that the skilled person would directly and unambiguously derive from the application as a whole.”

An EPO Director has implied that this is intended as an instruction to Examiners to be more sympathetic to the assessment of compliance with Article 123(2) EPC. While on the face of it this appears to be good news for applicants and patentees, it is worth remembering that a change to the Guidelines will not affect the approach taken by the Boards of Appeal. In the author’s view, the Boards of Appeal already take a stricter approach to added subject matter than the Examining and Opposition Divisions. Consequently, the gulf between the standard applied at first instance and that applied on appeal may be set to widen. It is predicted that this will result in (even) more patents being revoked for added subject matter at the appeal stage.

In order to avoid the potentially dire consequences of non-compliance with this patentability requirement, it is suggested that applicants and patentees exercise more rigorous self-policing of their amendments. An assessment should be made as to whether an amendment is potentially terminal to the validity of the claims if found to contravene Article 123(2) EPC. Fall-backs to potentially problematic amendments should be sought and included in dependent claims so as to provide a procedurally straightforward amendment during post grant validity proceedings. In general, a conservative approach should be taken and the desirability of filing a divisional application as ‘insurance’ should also be assessed, particularly in respect of ‘must win’ cases.

For more information regarding the changes to the guidelines, or for the assessment of compliance with Article 123(2) EPC, please contact Lucy Samuels or Arnie Clarke.