Modifications of the EPO Guidelines for Examination that Relate to Added Matter

Added matter can arise as a result of amendments carried out to the claims of a patent application or to a patent. It is often necessary to make modifications to claims in order to deal with objections raised by examiners. However, the applicant should not be allowed to modify an application in a manner that gives them an unfair advantage over third parties, for instance by including subject-matter that was not present when the application was filed. To avoid this issue applicants are prevented from adding subject-matter to a European patent application or patent by Article 123(2) EPC which 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”.

The application of Art. 123(2) has often been inconsistent, leading to uncertainty for applicants. This is especially important due to the possibility of the Art. 123 (2) and (3) trap, which occurs when a patent that has been granted contains added subject-matter but which subject-matter cannot be removed without broadening the claim in contravention of Art. 123 (3). This situation can result in the loss of an otherwise valid patent.

Assessment under Art. 123 (2) has previously varied between a literal approach, where the subject-matter of amendments was required to be literally stated in the application, to a more subjective approach, where amendments were allowed if the skilled person would have understood from the spirit of the patent application that the amendments were contemplated in the application as filed. The Boards of Appeal have explicitly commented that neither approach is correct: the decision of T 0667/08 stated “Literal support is not required by the wording of Art. 123(2) EPC”, and the decision of T823/96 stated “‘Implicit disclosure’ should not be construed to mean matter that does not belong to the content of the technical information provided by a document but may be rendered obvious on the basis of that content (original emphasis)”. A consistent middle ground has been hard to find, and this led the EPO to host a symposium on Art. 123(2) EPC in February 2014. The conclusions from this symposium have formed the basis for changes to the Guidelines for Examination.

The Guidelines for Examination contain instructions for examiners as to which practice should be best followed when interpreting the EPC. Several changes in the updated version have been made to the sections that relate to added matter: Part H Chapter IV (Allowability of amendments) sections 2.3, 2.3.1, 2.3.4 and 2.5 and Chapter V (Allowability of amendments – examples) section 3.2.1.

The first change (H-IV, 2.3) tightens the wording of the definition of “implicit disclosure”. A new paragraph is also introduced: “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”.  This is to avoid the situation where the examiner overlooks that the application is aimed at a person skilled in the particular technical field, and instead focuses too closely on what is literally stated rather than what the application would actually teach this skilled person.

Section H-IV 2.3.1 discusses when features can be included in amendments if they are found in documents cross-referenced by the description as filed but not in the description itself. Minor changes have been made to this section to explain the requirements for availability of the cross-referenced documents when the application is a Euro-PCT application where the EPO was not the receiving office.

Section 2.3.4 relates to applications that feature nucleotide and amino acid sequences, and now incorporates a paragraph outlining that these sequences can be corrected or amended. All existing rules and articles still apply, so it must be obvious that these amendments were originally intended and that they do not add subject-matter.

Section 2.5 gives examples of the assessment of added subject-matter. The example that deals with how ranges can be amended has been replaced with a new example. Both the old and new examples relate to the derivation of a new range from an original disclosure of a broad range and a narrower preferred range. In the original example the new range did not include the preferred range, and extended from the lower limit of the broad range to the lower limit of the preferred range. In the actual case this was a range for particle diameter, and was allowably amended to “at least 0.1 times to below 0.5”, using the original disclosure of “of 0.1- 10 times, preferably from 0.5 to 5” as a basis. In the newly added example the amended range includes the preferred range and part of the broader range on one side of the preferred range.

The final modification to the Guidelines is to section H-V, 3.2.1. This section relates to intermediate generalisations. An intermediate generalisation is where a specific feature is taken in isolation from an embodiment described in the application and is then used to amend a more generally worded claim. Section 3.2.1 identifies when this is or is not allowable under Art. 123(2), setting the requirements that the feature must not be inextricably linked to the other features of the embodiment, and that there must be justification in the overall application for the isolation of this feature. A new paragraph has been added to this section to elaborate upon these requirements: “These conditions should be understood as an aid to assessing, in the particular case of an intermediate generalisation, if the amendment fulfils the requirements of Art. 123(2). In any case it has to be ensured that the skilled person is not presented with information which is not directly and unambiguously derivable from the originally filed application, even when account is taken of matter which is implicit to a person skilled in the art using his common general knowledge.”

Overall the aim of these modifications is to ensure consistency in the examiners’ application of Art. 123(2), and to reduce unexpected problems faced by applicants or patentees during opposition proceedings. Ultimately, the extent to which the new guidelines change existing practice, which derives from the case law of the Boards of Appeal, remains to be seen.