Managing IP is part of the Delinian Group, Delinian Limited, 8 Bouverie Street, London, EC4Y 8AX, Registered in England & Wales, Company number 00954730
Copyright © Delinian Limited and its affiliated companies 2023

Accessibility | Terms of Use | Privacy Policy | Modern Slavery Statement

EPO: A golden standard

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.

frederiksen.jpg

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

more from across site and ros bottom lb

More from across our site

Safety standards wouldn’t lose copyright protection when named in law, so long as they were accessible for free online
In-house tech sources say Amgen v Sanofi has the potential to stifle their prosecution and litigation strategies if SCOTUS’s decision is too broad
We provide a rundown of Managing IP’s news and analysis coverage from the week, and review what’s been happening elsewhere in IP
The Federal Circuit said tech firms can challenge the way the USPTO implemented Fintiv, but that won’t mean much for practitioners, say counsel
The England and Wales High Court handed down one of the most hotly anticipated FRAND rulings for some time
Funders discuss different IP portfolio funding options and how they decide whether to offer preferential terms and pricing
The issue of the Unified Patent Court’s third central division needs resolving before IP owners can fully embrace Europe’s new era
Foreign firms and lawyers, including IP practitioners, can now practise in India after years of talk and no action
Most Indian counsel won’t immediately look beyond the Delhi High Court for IP cases, but new forums could potentially change their minds
Milan may only fulfil its UPC dream at a price, with a decision from negotiations between France and Germany expected shortly