Allowability of amendments under Art 123(2) EPC Flashcards
2.1 Basic principle
The question of allowability of amendments is legally a question of whether the application as so amended is allowable. An amended application must of course satisfy all the requirements of the EPC including, in particular, inventive step and the other matters listed in B‑XI, 3.6 (see also C‑III, 2).
If, however, the applicant seeks to amend the description (other than references to the prior art, see H‑IV, 2.2.7), the drawings or the claims in such a way that subject-matter which extends beyond the content of the application as filed is thereby introduced, the application as so amended cannot be allowed.
The underlying idea of Art. 123(2) is that applicants are not allowed to improve their position by adding subject-matter not disclosed in the application as filed, which would give him an unwarranted advantage and could be damaging to the legal security of third parties relying on the content of the original application (see G 1/93).
An amendment is regarded as introducing subject-matter which extends beyond the content of the application as filed, and therefore unallowable, if the overall change in the content of the application (whether by way of addition, alteration or excision) results in the skilled person being presented with information which is not directly and unambiguously derivable from that previously presented by the application, even when account is taken of matter which is implicit to a person skilled in the art (see G 2/10).
2.2 Content of the application as “originally” filed – general rules
Under Art. 123(2), it is impermissible to add to a European application subject-matter which the skilled person cannot derive directly and unambiguously, using common general knowledge and also taking into account any features implicit to a person skilled in the art in what is expressly mentioned in the document, from the disclosure of the application as filed. Literal support is, however, not required by the wording of Art. 123(2) (see T 667/08).
The term “implicit disclosure” means no more than the clear and unambiguous consequence of what is explicitly mentioned in the application as filed. Thus, the common general knowledge must be taken into account in deciding what is clearly and unambiguously implied by the explicit disclosure of a document. However, the question of what may be rendered obvious by that disclosure in the light of common general knowledge is not relevant to the assessment of what is implicitly disclosed by that document (T 823/96, T 1125/07).
When assessing the conformity of the amended claims with the requirements of Art. 123(2), the focus is placed on what is really disclosed to the skilled person by the documents as filed as directed to a technical audience. In particular, the examining division needs to avoid disproportionally focusing on the structure of the claims as filed to the detriment of the subject-matter that the skilled person would directly and unambiguously derive from the application as a whole.
Furthermore, the assessment of the requirements of Art. 123(2) is made from the standpoint of the skilled person on a technical and reasonable basis, avoiding artificial and semantic constructions (T 99/13).
2.2.1 Features described in a document cross-referenced in the description
Features which are not disclosed in the description of the invention as originally filed but which are only described in a cross-referenced document which is identified in such description are prima facie not within “the content of the application as filed” for the purpose of Art. 123(2). It is only under particular conditions that such features can be introduced by way of amendment into the claims of an application.
Such an amendment would not contravene Art. 123(2) if the description of the invention as originally filed leaves no doubt to a skilled reader (see T 689/90) that:
(i)
protection is or may be sought for such features;
(ii)
such features contribute to solving the technical problem underlying the invention;
(iii)
such features at least implicitly clearly belong to the description of the invention contained in the application as filed (Art. 78(1)(b)) and thus to the content of the application as filed (Art. 123(2)); and
(iv)
such features are precisely defined and identifiable within the disclosure of the reference document.
Moreover, documents not available to the public on the date of filing of the application can only be considered if (see T 737/90):
(a)
a copy of the document was available to the EPO, or to the receiving Office if the application is a Euro-PCT application which was not filed at the EPO as the receiving Office, on or before the date of filing of the application; and
(b)
the document was made available to the public no later than on the date of publication of the application under Art. 93 (e.g. by being present in the application dossier and therefore made public under Art. 128(4)).
2.2.2 Missing parts of the description or missing drawings filed under Rule 56 after the date of filing
Rule 56 allows the applicant to file missing drawings or parts of the description subsequently, and to rely on the priority document in order to avoid redating of the application to the date of filing of the missing parts. Under Rule 56(3), redating is only avoided where the missing parts were “completely contained” in the priority document (see C‑III, 1 and A‑II, 5). Rule 56(3) applies only at the filing stage of the application. At later stages of the procedure it is not permissible to rely on the priority documents to correct or amend the application as filed (in keeping with G 3/89 and G 11/91). For Euro-PCT applications a similar provision exists under Rule 20.6 PCT, whereby a review by the EPO as elected or designated Office is possible under Rule 82ter PCT.
Missing parts of the description and/or missing drawings allowed under Rule 56(3) are always considered to be part of the application documents “as originally filed”.
2.2.3 Erroneously filed application documents or parts under Rule 56a
Rule 56a allows the applicant to file correct application documents or parts if wrong application documents or parts have been filed erroneously. Under Rule 56a(4) the applicant can rely on the priority document to avoid redating the application to the date of filing of the correct application documents or parts.
If applicants realise on the filing date (or earlier if the filing date cannot yet be accorded) that they erroneously filed incorrect application documents, they can file correct application documents under Rule 56a(2) on or before the filing date, without changing the filing date (A‑II, 6.6).
If correct application documents or parts are filed later than the date of filing, under Rule 56a(4), redating is avoided if the correct documents or parts were “completely contained” in the priority document (see C‑III, 1 and A‑II, 6).
Rule 56a(4) applies only at the filing stage of the application. It is not permissible to rely on the priority documents to correct or amend the application as filed at later stages of the procedure (in keeping with G 3/89 and G 11/91). For Euro-PCT applications a similar provision exists under Rule 20.5bis(d) PCT and Rule 20.6 PCT, whereby a review by the EPO as elected or designated Office is possible under Rule 82ter PCT.
Correct application documents or parts allowed under Rule 56a(2) and Rule 56a(4) are always considered to be part of the application documents “as originally filed” (see A‑II, 6.3 and A‑II, 6.4).
2.2.4 Claims filed after the date of filing
Claims filed after the date of filing under Rule 58 are never considered to be part of the application documents “as originally filed” and must therefore comply with the requirements of Art. 123(2) (see A‑III, 15). For this reason, the examining division has to check that the claims satisfy the requirements of Art. 123(2), according to the same practice and standards as established in examination for amendments filed in other phases of the procedure (see H‑V).
2.2.5 Sequence listings filed after the date of filing
A standardised sequence listing filed after the date of filing does not form part of the description (Rule 30(2)). Such a standardised sequence listing is not published either as an annex to the application or together with the specification (see the notice from the EPO dated 9 December 2021, OJ EPO 2021, A97, point 15).
Pages and electronic files disclosing sequences or constituting a non-standardised sequence listing which were filed at the date of filing are an integral part of the application as originally filed and are treated like any other parts of the description.
A subsequently filed standardised sequence listing may contain only the sequence information – in a standardised form – already contained in the original application, and in particular the number of sequences and their numbering needs to be the same as in the original description (see the notice from the EPO dated 9 December 2021, OJ EPO 2021, A97). To this end the applicant must file a statement confirming that the subsequently filed standardised sequence listing does not include matter which goes beyond the content of the application as originally filed (Art. 2(2) of the decision of the President dated 9 December 2021, OJ EPO 2021, A96). In line with this, a subsequently filed standardised sequence listing cannot be used to determine the originally disclosed content of the application, but only for search purposes (see the notice from the EPO dated 9 December 2021, OJ EPO 2021, A97).
A subsequently filed standardised sequence listing is not to be examined for compliance with the requirements of Art. 123(2), as it is not part of the description.
Without prejudice to Rule 30, a sequence listing forming part of the description may be corrected or amended in accordance with Rule 139 and/or Art. 123(2). In this case a complete new sequence listing in TXT format containing the corrections or amendments is to be filed (see the notice from the EPO dated 9 December 2021, OJ EPO 2021, A97, point 10).
2.2.6 Priority documents
Under Art. 123(2) it is impermissible to add to a European application matter present only in the priority document for that application (see T 260/85) unless this is done under the provisions of Rule 56(3) (H‑IV, 2.2.2) or Rule 56a(4) (H‑IV, 2.2.3). For correction of errors, see H‑VI, 4.
2.2.7 Citation of prior art in the description after the filing date
There is normally no objection to an applicant introducing, by amendment, further information regarding prior art which is relevant; indeed this may be required by the examining division (see F‑II, 4.3 and F‑III, 8).
2.2.8 Clarifications
The removal of a lack of clarity will normally not be objected to, provided that the change does not extend beyond the disclosure of the application as originally filed (Art. 123(2)).
2.2.9 Trade marks
If an amendment is made in order to clarify the meaning of a trade mark or to replace a registered trade mark with a corresponding technical term, the examining division needs to be particularly careful to ascertain that the amendment does not conflict with Art. 123(2). The composition of a trade-marked product may have changed over time.
2.3 Content of the application as “originally” filed – special applications
2.3.1 Applications filed by reference to an earlier application
According to Rule 40(1)(c), the applicant may file a European application by reference to a previously filed application (A‑II, 4.1.3.1). Since claims are no longer required in order for a date of filing to be accorded, the applicant has three options:
(i)
when filing the European application, indicate that the reference to the previously filed application includes the claims
(ii)
at the time of filing, file a new set of claims together with an indication that the description and any drawings are filed by reference to a previously filed application
(iii)
when filing the European application, indicate the reference to a previously filed application and file the claims after the date of filing (Rule 58).
In cases (i) and (ii) the claims will form part of the application as originally filed, whereas in case (iii) the claims filed after the date of filing will not and will thus have to fulfil the requirements of Art. 123(2) (see H‑IV, 2.2.4).
2.3.2 Divisional applications
Under Art. 76(1), the subject-matter of a divisional application may not extend beyond the content of the parent application as originally filed. Furthermore, amendments made to the divisional application subsequent to its filing may not extend beyond the content of the divisional application as originally filed (Art. 123(2); for more details see C‑IX, 1.4).
2.3.3 Applications resulting from a decision under Art. 61
If, as a result of a final decision, it is adjudged that a person other than the applicant is entitled to the grant of a patent, that person may file a new European patent application under Art. 61(1)(b). In this case, the provisions of Art. 76(1) apply mutatis mutandis to the new application filed under Art. 61(1)(b).
This means that the new application must not contain any subject-matter extending beyond the content of the earlier (unentitled) application as originally filed. Furthermore, Art. 123(2) means that this new application may not be amended in such a way as to extend its subject-matter beyond its content as originally filed, even where the subject-matter in question is contained in the earlier application (for more details see C‑IX, 2.1).
