A chessboard and Article 123(2) EPC – A difficult relationship

Published on: 22 November 2012
by Dr. Christian Köster, Patent Attorney at Dennemeyer & Associates, Munich

As a legal principle, no amendment of a European patent application can include previously undisclosed subject-matter. The thought behind this principle is the legal security of third parties. In this article, the tests developed in the case law of the European Patent Office (EPO) for compliance of amendments with the afore-mentioned principle are briefly discussed.

The article focuses especially on the novelty test, the essentiality test and the deducibility test. The latter test is of particular importance and is referred to as the “gold standard” in a recent decision, G 2/10, of the EPO’s Enlarged Board of Appeal. In view of this recent decision and further case law, this article analyzes the practice of drafting applications such that inventive features are presented generally, in lists or as discrete embodiments.

The article concludes that it is not easy to draft a new patent application with an eye towards amendments meeting the disclosure standards developed in the EPO’s case law. The Boards of Appeal seem to confirm the bonmot that the EPO uses three different approaches for assessing whether or not amended subject-matter is part of the original disclosure: the strict, the stricter and the brutal. The article expresses the view that support by the original disclosure should be judged balancing all relevant interests, including those of applicants and patent proprietors.

This is a summary of an article published in the "epi information" publication (September 2012 issue). To read the full article, view the PDF file.

To read more articles published in the September issue of the "epi magazine", please follow this link to open the PDF.