Gill Jennings & Every LLP has an extensive EPO opposition practice and has long played a leading role in the development of EPO case law.  The EPO Board of Appeal has recently issued a rare ‘B’ decision in case T1621/16, where the patentee was represented by John Fisher (Partner at GJE).  ‘B’ decisions are issued only in respect of cases that establish an important point of law.  T1621/16 established a significant and patentee-friendly precedent in relation to the assessment of added subject matter by the EPO.

Article 123(2) EPC states 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.

As noted by the Enlarged Board of Appeal in decision G 1/93, the fundamental principle behind Article 123(2) EPC is that an applicant or patentee is not permitted to achieve an unfair advantage and jeopardize the legal security of third parties by introducing new information that was not disclosed in the original application.  However, this apparently simple provision belies a complex area of law, with numerous frustrations for those who are not versed in the strict approach of the EPO to the assessment of added subject matter.  Under EPO practice, added subject matter does not relate only to features that were not disclosed at all, but also to the way in which those features that were disclosed may be combined.

T1621/16 relates to a patent for liquid hand dishwashing detergent composition.  Claim 1 identifies four different components of the detergent composition, each of which is present in a weight percentage defined by a numerical range.  During prosecution and opposition, these numerical ranges had been limited to preferred narrower ranges for each component.  The EPO Opposition Division had revoked the patent, asserting that the various numerical ranges were originally disclosed at different levels of preference and that the resulting combination of features was “cherry picked” arbitrarily.

At oral proceedings before the EPO Board of Appeal, reference was made to T615/95, which held that merely deleting various options from lists did not necessarily infringe Article 123(2) EPC so long as no specific new combination of features was identified as a result.  This earlier decision showed that merely surrendering various areas of the claim scope could be allowable so long as the amendment did not result in a new invention.  It was apparent that an analogy could be drawn with the claims under appeal.  Limiting the weight percentage of each component toward a preferred numerical range surrendered some claim scope, but it did not create a new specific combination of features.  The alternative ranges converged towards a most preferred range, but were not distinct alternatives that had been assembled arbitrarily.

In its written decision, the Board of Appeal noted that there is a difference between converging alternatives:

e.g.  a temperature within the range of 1-100ºC, or 10-90ºC, or 20-80ºC, or 30-70ºC

and non-converging alternatives:

e.g.  a metal selected from iron, cobalt, nickel, copper and zinc.

The Board of Appeal agreed that selections from separate lists of converging ranges should not be treated in the same way as selections from separate lists of non-converging alternatives.

  • In the case of lists of non-converging alternatives, the Board held that a selection of a specific element from two or more such lists resulted in the singling out of a specific invention from among a generic set of alternatives.
  • In the case of converging ranges, however, the Board held that each element of the list is simply a more or less restricted version of the same feature.  Thus amending a claim by selecting an element from two or more lists of converging features simply results in a more or less restricted definition of one and the same invention.

The Board confirmed the analogy between selecting an element from a list of converging alternatives and deleting options from a list of non-converging alternatives (without singling out a specific combination), as set out in T615/95.  In both cases, the amendment simply results in a restriction of the scope of the same invention, not to the arbitrary amalgamation of distinct alternatives to create a new invention.  Indeed, as compared to the situation in T615/95, there was a stronger argument for a claim based on the selection of options from converging ranges, since the amendment is limited to the surrender of an explicitly less-preferred part of the claim.  In T615/95, by contrast, the surrendered part of the claim could be selected arbitrarily.  The Board saw no reason to apply a stricter standard to the claims under appeal.

The Board noted that this type of amendment would not necessarily be permitted in all circumstances.  In particular, the Board considered that the following restrictions should apply:

  • Consistent with the principle that the limitation should not define a new invention, the combination should not provide a new technical contribution.  It was suggested that linking the amended claim to an inventive selection which is not derivable from the application as filed would provide the applicant with an unfair advantage.
  • The combination should be supported by a pointer in the application as filed, for instance by examples falling within the restricted definition of the invention.

In summary, T 1621/16 indicates that the Boards of Appeal are willing to go beyond a formalistic analysis of the literal, verbatim disclosure of an application to consider how amendments to the claims actually affect the underlying technical contribution of the invention as claimed.  This comes as welcome news to practitioners and applicants alike, who have become accustomed in recent years to navigating a landscape of ever more restrictive decisions in relation to added subject matter.  It is reassuring to know that the trajectory is not entirely in one direction.

Link to decision: