EPO tightens up on strict European amendment practice

Managing IP is part of Legal Benchmarking Limited, 1-2 Paris Gardens, London, SE1 8ND

Copyright © Legal Benchmarking Limited and its affiliated companies 2025

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

EPO tightens up on strict European amendment practice

Sponsored by

inspicos-400px recrop.jpg
copyright protection of intellectual

Szonja Szenczi-Molnár of Inspicos explains why patent applicants should clearly explain the alternatives and possible combinations concerning claims when drafting description text, in light of a ruling on the allowability of amendments

Under existing EPO practice, an amendment that introduces subject matter that extends beyond the content of the application as filed is unallowable, if the change results in the skilled person being presented with information that is not directly and unambiguously derivable from the content of the application as filed.

A decision by an EPO technical board of appeal (T 1137/21) in June 2023 relates to the allowability of amendments. Claim 1 of the main request was based on claims 1, 4, 9, 11, 13, and 17 as originally filed. The appellant (the patent proprietor) argued that the examples fell under the wording of the claim and that claim 1 did not present the skilled person with new information.

The board of appeal disagreed.

Claim 1 was found to be the result of multiple selections of very specific combinations of features present in different dependent claims, made from among numerous possibilities, having varying degrees of preference. No passage of the original application disclosed the features of claim 1 in combination. While the examples fell under claim 1 of the main request, they were under the most preferred options of the various parameters and ranges, and thus were not sufficient as pointers to the specific selections of claim 1.

Claim 1 did not relate to converging alternatives (T 1621/16) either, due to the lack of pointers. Additionally, some amendments were found to be an arbitrary combination of end points.

Therefore, when drafting patent applications, it is recommended that the description text clearly explains the alternatives and their possible combinations, or at least contains pointers to allow the combination of the less-preferred embodiments, if relevant, in a clear and unambiguous manner.

more from across site and SHARED ros bottom lb

More from across our site

Tim Gilman, who joined Kasowitz alongside three other partners, says he is excited to be part of the firm’s ‘elite’ litigation team
A backlash against a White House video promoting deportation and Casalonga opening a new office in Düsseldorf were also among the top talking points
The firm has brought on board two counsel and an associate to complement two previously revealed partner hires
Bradford Newman, who has joined the firm’s new Silicon Valley office as head of complex technology disputes, discusses plans to build the practice group and attract local talent
Managing IP summarises the highlights from the IP STARS rankings for copyright and IP transactions work, the final firm rankings release of the year
Developments included the first judgment from the Nordic Baltic division, an injunction covering the UK, and a new code of conduct
Alston & Bird acted for InterDigital, while Samsung was represented by Fish & Richardson, during the arbitration process
Powell Gilbert lawyers reveal how they navigated parallel EPO proceedings and collaborated with European peers to come out on top in the Nordic-Baltic Division’s first judgment
The firms posted increases in revenue and profit per equity partner, with both giving a nod to their IP expertise
EasyGroup, the owner of the easyJet airline, said in a press release that UK-based first-instance judges are “less experienced”, bringing a long-running debate back to the fore
Gift this article