Once the application is filed, the scope of the invention is fixed.
If subsequently, the holder seeks to modify his claims to cover a "new invention" which he had not thought of during the filing (eg a product of a competitor close to his invention), it is normal to refuse him modification (H-IV Guidelines 2.1).
This is the principle ofA123 (2) EPC :
The European patent application or the European patent can not be modified so that its purpose extends beyond the content of the application as filed.
Object of the request
The "object" of the application within the meaning of theA123 (2) EPC includes:
- the elements which describe the invention (A83 CBE);
- the presentation of the problem;
- the solution ;
- the benefits it brings (R42 (1) (c) EPC).
Thus, there may be an extension problem for all these points, and not just for the claims, as is generally accepted.
Content of request as filed
Are part of
Of course, the explicit disclosures in the description are part of the content of the application (G11 / 91).
For claims, they form part of the application if they were filed on the filing date (G11 / 91).
Disclosure of drawings (subject to conditions)
The drawings are also part of the disclosure of the application (G11 / 91).
The drawings may also serve as a basis for a modification if, in the light of the rest of the document (T676 / 90):
- the disclosure is clear and unequivocal (HV Directives 6);
- disclosure is not a characteristic negative " (Absence of… T170 / 87);
- disclosure is not a measured drawings (T523 / 88unless a scale is indicated, T398 / 92);
- the support of such a modification must clearly be perceived by those skilled in the art as voluntary (and not accidental) and deliberate on the part of the inventor to solve the technical problem (T398 / 00).
It should be noted that if the drawings are deposited in color, the color can be used to understand the meaning of these and their range (even if the color is an irregularity of shape, T1544 / 08).
Implied content is also part of the content of the request.
Disclosure is implicit if the characteristic object of the disclosure is imposed on the person skilled in the art as the sole and unique possibility in view of the explicit disclosures (ie consequence clear and unequivocal of what is explicitly mentioned, H-IV Guidelines 2.3).
It is also said that the disclosure flows directly and without ambiguity demand (T514 / 88).
By way of illustration, the disclosure of a pair of shoes does not necessarily imply the presence of laces (Velcro straps or other fastening systems may exist): laces are therefore not an implicit disclosure.
However, the disclosure of an airplane necessarily implies the existence of wings: the wings are then implicit disclosures.
Documents cited in the request (under conditions)
The content of the documents cited in the application is not part of its contents that if (H-IV Guidelines 2.3.1) it is clear from the description of the invention as filed (T689 / 90) that, cumulatively:
- protection is or could be sought for these characteristics;
- these characteristics contribute to solving the technical problem of the invention;
- these features are included (at least implicitly) in the description of the invention;
- these characteristics can be precisely identified in what is disclosed in the reference document;
- the cited document is accessible (T737 / 90):
- to the EPO: on the date of filing of the application,
- to the public: on the date of publication of the application.
Are not part
Claims filed after filing
Similarly, claims filed after filing (and contrary to the description or figures produced after filing, Directives H-IV 2.3.2) are not part of the content of the application as filed (H-IV Guidelines 2.3.3).
Directly and unambiguously
There is an extension of the request if the modification does not follow directly and without ambiguity information contained in the application as filed, even taking into account elements implicit to the person skilled in the art (H-IV 2.2 Guidelines).
A question of scope?
Some people have already told me that a modification of the claims must be analyzed, with regard to theA123 (2) EPC, in terms of the scope of the claims: was the new scope of the claims supported by the description?
Nothing is more wrong: the scope of claims is not the criterion here ...
Indeed, it is quite possible to modify the claims, without modifying their scope, whereas the modification would be contrary to the requirements of theA123 (2) EPC (eg modification of an initial claim " metal device ... " by " device made of metal, for example aluminum, ... ».
Modification of drawings
If the drawings are modified on the basis of filed drawings that were not in the language of the proceedings, there is no extension beyond the content as filed (T382 / 94).
When adding a characteristic to the application, it is necessary to analyze whether this characteristic results directly and without ambiguity the application as filed (H-IV 2.2 Guidelines and T201 / 83).
This feature does not have to have a technical contribution (G1 / 93).
If yes, this addition should be considered as meeting the criteria of theA123 (2) EPC.
Addition of non-technical limitations
It may happen that the claims are limited, during the procedure, in a non-technical way (eg restriction of the claimed method to only certain times, or to certain parameters only).
In that event, the Boards of Appeal seem to consider that those limitations are not prohibited by theA123 (2) EPC (T1779 / 09): the principle here seems to prevent the holder from falling into the "trap" of A123 (2) EPC and A123 (3) EPC.
Deletion / substitution of characteristics
The essentiality test or triple test
- this characteristic is not presented as essential in the disclosure of the invention,
- this characteristic is not indispensable, as such, to the realization of the invention with regard to the technical problem that it proposes to solve, and
- its deletion / substitution does not require any real modification of other characteristics.
This test is often called the "essentiality test" or the "triple test".
Towards the end of the essentiality test or triple test
Some decisions call this test into question (T1852 / 13).
Indeed, it is noted that the decision T331 / 87 establishes a test in a specific case and does not claim that this test is absolute (" may not violate A123 (2) EPC").
For the Board of Appeal (T1852 / 13), the "standard gold" (ie directly and unambiguously) must always apply (and it is much more restrictive than the triple test).
Selection from two lists
On the other hand, a selection of two compounds in a single list is equivalent to a selection of compounds in two identical lists and is therefore not admissible (T1374 / 07).
These considerations remain true even if the description provides for a phrase such as any combination of ...". Indeed, the number of combinations is often too important for a particular combination to be disclosed "directly and unambiguously" (T1374 / 07).
Combination of embodiments
The content of an application should not be considered as a reservoir from which characteristics specific to different embodiments of the application can be extracted in order to combine them in a way that artificially creates a particular embodiment (T 296/96, T 1206/07 ; T 1239/08 ; T 1648/11, T 1799/12, T 1853/13).
In the absence of any indication as to the particular combination concerned, the corresponding selection of characteristics is not clear and unambiguous for the skilled person from the contents of the application as filed (T 686/99).
Combination of claims
We could tell ourselves that the combination of claims does not violate theA123 (2) EPC.
In reality, this is not at all obvious (T389 / 13).
The test to be applied is based on what would be directly and unambiguously apparent to the person skilled in the art of the application as filed, which involves analyzing the various features of the subject dependent claims and their relationships, as disclosed in the application, either explicitly, for example through a direct link, as a reference to other claims, or implicitly, by analyzing their function and interactions.
We call " intermediate generalization Extracting a characteristic from the description by isolating it from its context (eg a given embodiment, HV Guidelines 3.2.1).
Such a generalization is possible if:
- the extracted feature is not inextricably linked other features of this embodiment (T714 / 00),
- the non-extracted characteristics of this embodiment satisfy the essentiality test mentioned above,
- the general disclosure justifies the isolation of the extracted characteristic, leading to a generalization, and its introduction into the claim.
This can happen especially when omitted features have their own function, independently of the rest of the system (T461 / 05).
Reformulation of the technical problem
In theory, theA123 (2) EPC is irrelevant to the mere reformulation of the technical problem (T654 / 89). It becomes relevant if the applicant wants to add this technical problem reformulated in the application (G-VII Guidelines 11).
A reformulation of the technical problem is possible if the person skilled in the art can deduce the problem formulated from the application as filed and in the light of the closest state of the art (T13 / 84 and HV Directives 2.4).
Disclosure of intervals
Mixing of interval bounds
It may happen that an application discloses:
- the presence of a compound X in a solution (ie greater than 0%);
- the fact that preferably the compound X is between 5% and 20%;
- the fact that even more preferably compound X is between 8% and 15%.
The question then is whether this is contrary to the requirements of theA123 (2) EPC to claim:
- between 5 % and 15 %;
- between 0 % and 15 %;
On the other hand, it is forbidden to combine the two lower limits of the intervals disclosed in order to create a new subinterval (eg here, between 5% and 8%): the new subinterval does not correspond to a combination of disclosed intervals (T1170 / 02).
Exclusion of a terminal
It may also be the question of the exclusion of a terminal.
Indeed, if the interval [0; 15%] is described in the application, is it possible to claim "less than 15%" (ie strictly less than 15%).
There is no firm answer in all technical fields but this has been allowed in the field of chemistry (T83 / 13): indeed, in chemistry, the skilled person can not see a difference between a concentration of 15% and a concentration of 14.9999%. Therefore, the technical education is the same.
However, it is important to note the decision T1990 / 10 that goes in the opposite direction.