CLR II E Amendments

1.
Article 123(2) EPC – added subject-matter
1.1.
General principles
1.2.
Content of the application as filed: Parts of the application which determine the disclosure of the invention
1.2.1
Description, claims and drawings
1.2.2
Abstracts, titles, priority documents, parallel applications
1.2.3
Language issues
1.2.4
Cross-references to other documents
1.3.
Standard for assessing compliance with Article 123(2) EPC
1.3.1
Gold standard: directly and unambiguously derivable
1.3.2
Standpoint of the skilled person
1.3.3
Implicit disclosure
1.3.4
Subject-matter not implicitly disclosed
a)
Subject-matter merely rendered obvious by the content of the application
b)
Results of reflection and imagination of the skilled person
c)
General open-ended statement in description
1.3.5
Conditions insufficient for compliance with Article 123(2) EPC
a)
Consistency with original disclosure
b)
Reasonable plausibility of the included feature
1.3.6
Criteria not relevant for assessing compliance with Article 123(2) EPC
a)
Obviousness
b)
Indication in the description that subject-matter is known to the skilled person
c)
Enabling disclosure
d)
Limitation of scope of the original claim
1.3.7
Novelty test
1.3.8
Non-technical subject-matter
1.3.9
Claim interpretation when assessing compliance with Article 123(2) EPC
1.4.
Removal or replacement of features from a claim
1.4.1
Broadening of claim – permissible within the limits of the original disclosure
1.4.2
Basis in the application as originally filed – gold standard
1.4.3
Omission of a feature presented as essential
1.4.4
The essentiality or three-point test
a)
Decisions setting out and applying the test
b)
Mere aid in assessing the allowability of amendments
c)
Decisions criticising the three-point test
1.4.5
Removal of set of features
1.4.6
Removal of a feature indicating the intended purpose
1.4.7
Elimination of contradictions and inconsistencies
1.5.
Ranges of parameters – setting upper and lower limits
1.5.1
Forming a range by combination of end-points of disclosed ranges
1.5.2
Forming a range with isolated value taken from example
1.5.3
Setting new end-point with not expressly disclosed value
1.6.
Combination of features pertaining to separate embodiments or lists
1.6.1
Combination of features pertaining to separate embodiments; application as filed is not a "reservoir"
1.6.2
Selection from two lists – singling out a combination of features
1.6.3
Deletion of elements from lists – shrinking the lists without singling out a combination of features
1.7.
Disclaimer
1.7.1
Definition
1.7.2
Standards for examining disclosed and undisclosed disclaimers
a)
Principles established in G 1/03 and G 2/03 for undisclosed disclaimers
b)
Principles established in G 2/10 for disclosed disclaimers
c)
Explanations in G 1/16
1.7.3
Decisions applying the criteria established by the Enlarged Board in G 1/03 and G 1/16
a)
Accidental anticipation
b)
Drafting of disclaimers – disclaimer shall not remove more than is necessary
c)
Drafting of disclaimers – disclaimer shall not remove less than is necessary
d)
Drafting of disclaimers – delimitation against any potential prior art
e)
Drafting of disclaimers – clarity
f)
Undisclosed disclaimer must not be related to the teaching of the invention
g)
Negative features
1.7.4
Decisions applying the criteria established by the Enlarged Board in G 1/10 – remaining subject-matter test
1.7.5
Applicability of the decisions of the Enlarged Board to cases already pending
1.8.
Generalisations
1.8.1
Replacing specific feature with more general term – no inclusion of undisclosed equivalents
1.8.2
Generalisation and claim category
1.8.3
No generalisation of an effect obtained for particular embodiments
1.8.4
Amendments to preamble of claim by substituting general term for specific term
1.9.
Intermediate generalisations
1.10.
Specific derived from generic
1.10.1
Specific term or embodiment derived from generic disclosure
1.10.2
Component of entity derived from entity
1.10.3
Restricting a generic definition of a substituent to a specific (individual) one
1.10.4
Multiple arbitrary selection
1.11.
Additions
1.11.1
Addition to the claim of a feature taken from drawings
1.11.2
Addition to the claim of an isolated feature taken from description
1.11.3
Addition to the claim of features originally presented as prior art
1.11.4
Addition to the claim of features previously described as non-essential
1.11.5
Adding prior art citations to the description
1.11.6
Addition of advantages and effects to the description
1.11.7
Addition/change of claim category
1.11.8
Insertion of an ambiguous feature in the claim
1.11.9
Characteristic described for intermediate product added to the claimed end product
1.12.
Errors in the disclosure
1.12.1
Calculation errors
1.12.2
Incorrect structural formula
1.12.3
Amendment based on erroneous figure in the disclosure
1.12.4
Incorrect information in earlier application as filed but correct information directly and unambiguously derivable
1.13.
Disclosure in drawings
1.14.
Amending the description
1.14.1
Amendment to provide support for unsupported claim
1.14.2
Impact on the claimed subject-matter
1.14.3
Adding prior art citations to the description
1.14.4
Shift in the interpretation of a claim by amendment of the description
1.14.5
Shift in the information provided by the examples after amendment of claims
1.14.6
Reformulation of the technical problem
1.14.7
Replacement of complete description and drawings
1.14.8
Deletion from the description of expressions making features optional
1.15.
"Comprises", "consists of", "consists essentially of", "contains"
1.16.
Different sets of claims for different contracting states
2.
Article 123(3) EPC – extension of the protection conferred
2.1.
Purpose of Article 123(3) EPC
2.2.
Totality of claims
2.3.
Extent of protection
2.3.1
Article 123(3) EPC and Article 69 EPC
2.3.2
Cut-off point
2.3.3
General claim interpretation
2.4.
Deletions and replacements
2.4.1
Deletion of a limiting feature in a claim
2.4.2
Deletion of important feature from description where claim remains unchanged
2.4.3
Deletion of examples for a general feature in a claim
2.4.4
Deletion of disclaimer referring to trade names
2.4.5
Deletion of a drawing
2.4.6
Deletion of feature in a claim mentioned "in particular"
2.4.7
Deletion of a "preferred" feature in a claim
2.4.8
Reducing scope of claim by adding embodiments to a negative feature
2.4.9
Replacement of a restrictive term by a less restrictive term
2.4.10
Replacement of an inaccurate technical statement in a claim
2.4.11
Replacement of "cell of a plant" by "plant"
2.4.12
Replacement of substance by device containing substance or substance with mechanical device
2.4.13
Replacement by aliud
2.4.14
Narrowing down a generic class or list of chemical compounds; open claims ("comprising"); sequential drafting ("cascade")
2.4.15
Replacement of drawings
2.5.
Transposition of features within claims
2.6.
Change of claim category
2.6.1
From product claim to a claim directed to the use of the product
a)
Different categories of use claims
b)
From product claim to a claim directed to using a product to achieve an effect
c)
From product claim to a claim directed to using a product for producing another product – Article 64(2) EPC
2.6.2
From product or product-by-process claim to a claim directed to a process for manufacturing/preparing the product, and vice versa
2.6.3
From a product claim to a product-by-process claim
2.6.4
From method claim for treating the human body by therapy to product claim
2.6.5
From use claim to process claim, and vice versa
2.6.6
From use claim to Swiss-type claim
2.6.7
From Swiss-type claim to purpose related product claim under Article 54(5) EPC
3.
Relationship between Article 123(2) and Article 123(3) EPC
3.1.
Inescapable trap
3.2.
Attempts to resolve the conflict
3.3.
Addition to the claim of an undisclosed feature limiting protection conferred, without providing a technical contribution
4.
Correction of errors in the description, claims and drawings – Rule 139 EPC
4.1.
Relationship of Rule 139 EPC with Article 123(2) and (3) EPC
4.2.
Obviousness of the error and the correction
4.2.1
Documents to be taken into account for the assessment of obvious error and correction
4.2.2
Obvious error – incorrect information objectively recognisable
4.2.3
Obvious correction – immediately evident that nothing else would have been intended than what is offered as the correction
4.3.
Correction of errors in the description, claims and drawings after grant, and in opposition proceedings
5.
Evidence and standard of proof for allowing amendments and corrections
 

This chapter concerns the allowability of amendments under Art. 123(2) and (3) EPC, as well as corrections of errors in the parts of a patent application or of a patent relating to the disclosure (the description, claims and drawings) under R. 139 EPC. Other aspects related to amendments are dealt with elsewhere; see for example chapters II.D.3.1.2 in the context of Art. 87(1) EPC; II.F. "Divisional applications", in particular II.F.2.2. "Amendments to divisional applications"; III.I.3.1. "Party's responsibility to define subject-matter by filing appropriate requests"; III.L. "Correction of errors in decisions"; IV.B.1.1., 2.6., 3.3., 3.4., 3.6., 3.7., 5. for the admissibility of amendments during the "Examination procedure"; IV.C.5. "Amendments in opposition proceedings"; V.A.4. "New submissions on appeal".

Source: http://www.epo.org/law-practice/legal-texts/html/caselaw/2019/e/clr_ii_e.htm

Date retrieved: 17 May 2021

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EPC Articles

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Case Law Book: II Conditions to be met by an Application

Case Law Book: III Amendments

Case Law Book: IV Divisional Applications

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