Amending your patent application or patent at the EPO – Article 123(2) EPC

This article was produced by Olswang LLP, which joined with CMS on 1 May 2017.

The European Patent Office (EPO) is well known for its strict examination of amendments. This article briefly looks at some of the case law that can be used to convince the EPO that an amendment has basis in the original application. Of course, the best way to handle an objection will depend on the specific details and we are happy to assist with any particular challenges you may be encountering at the EPO.

Under all established patent systems an applicant is prohibited from adding "new matter" to an application after filing. However, different Patent Offices have developed varying standards for applying this rule and the European Patent Office (EPO) has become somewhat notorious for its stringent approach to requiring "basis" in the originally filed application for any amendments. It is not unusual to receive objections from the EPO if the language of an amendment is not reflected word-for-word in the original application.

It is, of course, preferable for an amendment to be reflected explicitly in the original application so there can be no question over basis. However, there are many circumstances where this is not possible. Set out below are some examples of helpful sources that can be used to support arguments against strict objections.

The current version of the Guidelines for Examination at the EPO confirms that, although it is impermissible to add to a European application subject matter which is not directly and unambiguously derivable from the original application, literal support is not required (see Part H, Chapter IV, section 2.3). This reflects conclusions reached by the Appeal Board in T 667/08, as follows -

"It is therefore essential, when deciding on issues of added subject-matter, to identify the actual teaching conveyed by the original disclosure, i.e. the technical information that the skilled person reading the original disclosure would have derived from its content (description, claims and drawings) considered in its entirety. This approach might lead to the identification of subject-matter which has not been explicitly revealed as such in the application as filed, but nevertheless derives directly and unambiguously from its content. Literal support is not required by the wording of Article 123(2) EPC. An amendment can therefore be allowable if it combines information which has not been disclosed in one and the same section of the original disclosure, but results, for instance, from information gathered from various embodiments possibly associated with general statements regarding the information derivable from the introductory section of the application."

Another "added matter" objection now common at the EPO, at least in the Life Sciences field, is that a particular combination of features has not been "individualised" in the original application and is considered to be a selection from different lists (and therefore does not have basis). Thus, although certain features may be explicitly described in the original application, unless a particular combination is preferred, the EPO generally considers the combination lacks basis.

When faced with this type of objection there is Appeal Board case law holding that the examples in an application can be used to illustrate that a particular combination of features is preferred, even if that combination of features is not described as preferred in the description, claims or drawings.

In T83/04, the Board held that although a combination of compounds were not "individualised" in the claims or description, it was clear from the examples that the combination was preferred and therefore that there was basis for the combination. Furthermore, although the combination was described in the examples with reference to particular quantities, the Board held that "Moreover, the specific amounts disclosed in the particular examples are illustrative for specific formulations, but they do not set specific limitations beyond those linked to the technical feasibility required when preparing the suspensions by means known in the art." Accordingly, the Board did not require inclusion of the specific quantities in the claims.

The same Board (in T197/08) also allowed a claim to use of a particular compound in monotherapy, despite the fact that monotherapy was not explicitly mentioned in the claims or description. This was because the Board decided it was clear from the examples that monotherapy was the preferred form of administration. Incidentally, this Board (3.3.02) was also primarily responsible for developing the strict approach of requiring "individualisation" of combinations of features in the original application.

Thus, although the EPO is strict in terms of allowing amendments, the above examples illustrate that, depending on the circumstances, there can be scope for arguing for a more lenient approach.