Patent practitioners in Europe and elsewhere will be very familiar with 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 underlying idea of the infamous Article 123(2) EPC is that an applicant should not be allowed to improve his position by adding subject-matter not disclosed in the application as filed, which would give him an unwarranted advantage and could be damaging to the legal security of third parties relying on the content of the original application. However, exactly what subject-matter is disclosed in the application as filed is a contentious question which has frustrated patent practitioners in Europe and elsewhere, especially in jurisdictions such as the US where amendments based on general rather than specific disclosures are more freely admissible.
The EPO Guidelines have now been updated again, with the new version coming into force on 1 November 2014. In the new version, the following text has been introduced as a guide for assessing added subject matter:
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 newly introduced text does not reference any case, although it has clearly been influenced by T 2619/11, which states that:
In the view of the board, in the present case the focus of the decision is disproportionally directed to the structure of the claims as filed to the detriment of what is really disclosed to the skilled person by the documents as filed.
While this amendment to the Guidelines focuses on a specific situation, namely the reliance on the disclosure of the application as a whole for support (as derived by a skilled person) rather than an overemphasis on the structure of the claims as filed, it may be interpreted as a slight relaxation of the approach to be taken by the EPO. It would certainly appear from the amendments to the Guidelines, both on 1 November 2014 and also on 30 September 2013, that the EPO is attempting to find more of a middle ground, that will give both certainty to third parties but will also, importantly, provide patent applicants with the full protection they deserve, based on their originally filed disclosure. Nevertheless, the amendment of 30 September 2013 has not been treated as a game-changer within the EPO, and it is anticipated that this latest amendment will also, in practice, result in the EPO carrying on with business as usual. Thus, it would appear that in the process of trying to determine such a middle ground, we will continue to see a strict approach being applied, rather than a noticeable relaxation of the approach taken by the EPO.
Recommended Practice Points:
- Continue to include as many fallback positions as possible when drafting the specification, both in the claims and in the description, so as to avoid added subject matter objections being raised in case of amendment.
- Be mindful of the Article 123(2) v 123(3) EPC “trap” post-grant which applies post-grant if an amendment has been allowed during prosecution which is later considered to have added subject-matter, yet removal of the offending amendment would result in post-grant broadening of the claims. Applicants must be satisfied that every amendment made, whether proposed by the applicant or examiner, has a basis in the application as filed. If, contrary to usual EPO practice, the examiner actually proposes an amendment which might contravene Article 123(2), the applicant will have no comeback in opposition proceedings if the reversal of the amendment would broaden the scope of protection, and it makes no difference that the amendment may have been proposed by the examiner and not by the applicant, or explicitly approved by the examiner.