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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.

Jakob Pade Frederiksen

Inspicos P/S
Kogle Allé 2
DK-2970 Hoersholm
Copenhagen, Denmark
Tel: +45 7070 2422
Fax: +45 7070 2423

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