The recent EPO Technical Board of Appeal decision T1363/12 has shed some light on how the test for added subject matter should be applied. In doing so, it has poured scorn on the guidance set out in the new Guidelines for Examination.
Amendments to European patent specifications, whether made before or after grant, must meet the test that the amended specification must not contain subject matter which extends beyond the content of the application as filed (Article 123(2) EPC). The test has, especially in recent years, been strictly applied by the first instances of the EPO (Examining and Opposition Divisions), and perhaps more so by the Technical Boards of Appeal (TBAs). The basic principle was set out in the decision of the Enlarged Board of Appeal decision G02/10, which set out the following standard:
“(Amendments) can… only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of the [disclosure] as filed.”
This test has been called the “gold standard”.
In November 2014 the EPO amended the Guidelines for Examination, Section H – IV 2.3 which relate to the test. The new passage reads:
“When assessing the conformity of the amended claims to the requirements of (Article 123 (2) EPC, the focus should be placed on what is really disclosed to the skilled person via the documents that are 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.”
Commentators on the new Guidelines had questioned whether this reflected a relaxation of the strict interpretation applied by the EPO, especially the phrase “what is really disclosed”. The wording of the new Guidelines did not reflect the grounds for the decision in Case G2/10. The second portion of the new Guidelines referred rather to a subsequent board of appeal case.
The Decision in T1363/12
The test and the earlier cases have recently been reviewed by a TBA in case T1363/12. In this decision the TBA criticised the new Guidelines. They also pointed out that the TBAs were not in any case bound by the Guidelines. They explained that the case from which the new Guidelines seemed to derive the wording was dependent wholly on its facts and had little by way of clarification of the principles of general applicability. They instead reminded applicants and patentees that the “gold” standard still applied and would be strictly interpreted, referring back to the requirement that the subject matter must be derivable directly and unambiguously from the disclosure.
We have consistently cautioned applicants to take a low risk approach to amendments; restricting amendments made during examination to those which meet the strict test. European patents are open to validity challenges after grant on the grounds that amendments made before grant add subject matter. Where amendments that add subject matter have been made, and a challenge to validity of the patent can be launched, it may be extremely difficult for the patentee to find a solution without breaching the second part of Article 123(3) EPC. This provision prohibits amendments after grant which broaden the scope of protection. Deletion of features added by amendments may be barred, if that would result in the claim being broader. A solution to the problem which further narrows the scope of protection may reduce the value of the protection.
In our experience of representing opponents, Article 123 EPC provides the best ground for successful challenges by opponents, and is worth very detailed consideration during opposition proceedings.