It is well known that the EPO generally applies a rather
strict approach when examining whether or not amendments made
after filing extend beyond the contents of the application as
filed. One frequently occurring type of claim amendment is the
replacement or removal of a feature from a claim. According to
a landmark decision, T 331/87 of 1989, the replacement or
removal of a feature may not violate the provision governing
added subject-matter (article 123(2) EPC) if the skilled person
would directly and unambiguously recognise that:
- the feature was not explained as essential
in the application as filed;
- the feature is not indispensable for the
function of the invention; or
- the replacement or removal requires no
real modification of other features to compensate for the
change.
The above, so-called essentiality test developed in T 331/87
and cited in the EPO's Guidelines for Examination, has however
been challenged in a number of recent decisions. Most recently,
in decision T 1852/13 of January 31 2017 (issued on March 31
2017) one of the EPO's technical appeal boards provides a
detailed and substantiated criticism of the essentiality test.
According to the board, the "gold standard" for assessment of
added matter applies; according to this standard, an amendment
does not add matter beyond the contents of the application as
filed if the skilled person at the filing date, applying his
common general knowledge, would directly and unambiguously
derive the amendment from the application as filed. In decision
T 1852/13 the deciding board expresses the view that the
essentiality test is neither compatible with the gold standard
nor with the requirements for entitlement to priority laid down
by the Enlarged Board of Appeal in decision G 2/98. The board
having decided T 1852/13 even goes as far as to express that
"the essentiality test is no longer to be applied".
The legal trend reinforced by decision T 1852/13 certainly
does not make life easier for applicants desiring to remove or
replace features from claims.
 |
| Jakob
Pade Frederiksen |
Inspicos P/S
Kogle Allé 2
DK-2970 Hoersholm
Copenhagen, Denmark
Tel: +45 7070 2422
Fax: +45 7070 2423
info@inspicos.com
www.inspicos.com