1. Upcoming changes in the European Patent Office practice on allowing claim amendments in pending patent applications (Article 123(2) EPC)
Christof Keussen

2. Art. 123(2) EPC
The European patent application or European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed.
Rationale behind that provision (Decision G1/93, OJ 8/1994, 541):
The idea underlying Art. 123(2) is that applicants may not improve their position by adding subject-matter not disclosed in the application as filed, which would give them an unwarranted advantage and could be damaging to the legal security of third parties relying on the content of the original application.

3. The application as filed
Includes:
The description, claims and drawings as filed
Does not include:
Abstract
Content of priority document (exception R. 56(3) EPC)
Referenced documents, unless the description clearly states that they are part of the invention
In case of a divisional application disclosure contained in the parent but not divisional application

4. Tests for evaluating amendments
Basic test:
Does the overall change in the content of the application result in the skilled person being presented with information which cannot be directly and unambiguously derived from the application as filed, even when account is taken of matter which the skilled person takes as implied?
Essentiality test (when removing claim features):
Removal admissible only if removed feature:
Is irrelevant for the function of the invention and solution of the technical problem
Has not been described as an essential feature in the description

5. Specific Situations
A broad disclosed range is no basis for claiming a narrower sub- range
A generic term disclosed is no basis for a limitation to a specific sub-term and vice versa (fixations means – screw)
Absence of a positive disclosure of a feature is no basis for disclaiming this feature

6. Intermediate Generalizations
Definition:
Extracting a specific feature in isolation from an originally disclosed combination of features (e.g. examples, preferred embodiments)
Test for allowability:
Is the feature is related or inextricably linked to the other features of that embodiment?
Does the overall disclosure justify the generalizing isolation of the feature and its introduction into the claim?
EPO standard for allowing intermediate generalizations traditionally very strict

7. Intermediate Generalizations – The Principle
Original claim: A + B
Original disclosure: A + B + C + D (preferred embodiment)
Amended claim: A + B + C
Allowable as intermediate generalization?
Yes, if C and D are clearly disclosed as
independent of each other
no structural or functional relationship
no common technical purpose
No, if any of these conditions is not met

8. Decision T 264/03 Original claim: Original disclosure: Amended claim:
…comprising a flow-limiting passageway…
Original disclosure:
Embodiment with a flow limiting passageway, a cylindrical body and a sleeve, the sleeve forming a side-wall of the flow-limiting passageway.
Amended claim:
…comprising a flow-limiting passageway, a cylindrical body and a sleeve…
Function of the sleeve disclosed in the original application, not put into the amended claim → Non admissible intermediate generalization

9. Decision T 425/06 Original claim: Original disclosure: Amended claim:
…the bone screw head having a projection which has a convexly rounded rod interface surface…
Original disclosure:
Embodiment wherein the projection is an external hex projection and the rounded exterior surface includes a knurl.
Amended claim:
… the bone screw head having a projection which has a convexly rounded rod interface surface, wherein the projection is an external hex projection …

10. Decision T 425/06 Original disclosure:
Function of the hex projection: providing engagement with a driver in order to drive the screw into the bone
Function of the knurl: provides a high friction between the projection and the rod.
Knurl is not functionally linked to the hex projection in the original disclosure
Hex projection and knurl, although disclosed in one embodiment, clearly have separate, independent functions and are therefore separable → Allowable intermediate generalization

11. EPO Standards on Art. 123(2) too strict ?
Symposium on Art. 123(2) was held in February 2014
There is a general feeling of EPO applicants that
The standard of directly and unambiguously has degenerated to literally (too formalistic approach)
The knowledge of the skilled person is insufficiently accounted for
Consultation process summarized in Document SACEPO 4/14
Initial amendments have been made to the Examination Guidelines effective 1 November 2014
More amendments likely to follow in 2015

12. New Guidelines H. IV. 2.3

13. New Guidelines H. IV. 2.5

14. A look at German Case Law
Generally German courts (Federal Patent and High Court) are less formalistic in assessing original disclosure
German courts competence extends to German part of European patents after grant
More emphasis on the understanding of the skilled person than the linguistic content
Intermediate generalizations allowable if it is recognizable to the skilled person that the isolated feature contributes to the invention, even if disclosed in a context of features all contributing to the same technical effect

15. BGH X ZR 107/12 – Communication Channel
Original claim:
Radio station having
1. a frequency division duplex communication channel comprising
a) control channels for transmission of power control and bit rate information,
b) a data channel,
2. closed loop power control means,
3. means for delaying the initial transmission of data until the transmission of information on the control channel has started.
Amended claim:
1. a communication channel comprising
a) control channels for transmission of control information,

16. BGH X ZR 107/12 – Communication Channel
Rationale of the decision:
The two examples described in the prior application show means for delaying the initial transmission of data without any specific reference to frequency division or transmission of bit rate information.
Therefore, for an expert skilled in the art, the prior application clearly disclosed a general techical teaching to delay the initial transmission of data.
To allow the generalization it was sufficient that it was clearly derivable for the skilled person that the features were separable
Rule of thumb:
EPO allows intermediate generalizations only if separability is positively disclosed
German courts allow intermediate generalization if no clear link of the separated feature to other features is disclosed

17. General Advice
When drafting an application, try to attribute to each feature a clear and separable technical effect
If features are described in combination, make clear that they each contributed to the invention separately
Describe a combinatorial effect separately, if any
When making amendments to pending EP applications, actively argue as to why the skilled person can derive the respective feature as separately contributing to the invention

18. Thank you Questions? keussen@glawe.de