Wording 5

Question 1

Added matter - variations

Answer 1

123(2) - desc and/or claim(s)

76(1) - desc and/or claim(s)

Question 2

5.1 Description
The description includes added subject-matter contrary to Article 123(2) EPC

Answer 2

5.1 Description
The description includes added subject-matter contrary to Article 123(2) EPC

The subject-matter of paragraph … was not included in A1 as filed.

Although A1, para # (included on filing) mentions “…”, this is not / there is no direct and unambiguous disclosure of “…”, as in paragraph …

This is contrary to the requirements of A123(2) EPC.

The description is thus opposed on the grounds of A100(c) EPC.

Question 3

The description includes added subject-matter contrary to Article 76(1) EPC

Answer 3

A1 is a divisional application based on the earlier application: [application number], having a filing date of _____ (and priority date of _______)

The subject-matter of paragraph … was not included in the earlier application as it was filed.

Although A1, para # (included in the earlier application) mentions “…”, this is not / there is no direct and unambiguous disclosure of “…”, as in claim …

This is contrary to the requirements of A76(1) EPC.

The description is thus opposed on the grounds of A100(c) EPC.

Question 4

G1/06 - example

Answer 4

If included in grandparent but not parent use G1/06.

G1/06 also mentions that content which has been added on filing of a divisional application in a sequence higher up could not be claimed in a divisional application down the sequence because according to Art 76(1) EPC such added matter did not benefit from the filing date of the root application in which it was not disclosed.

Question 5

5.2 Claims

Answer 5

The subject-matter of claim … was not included in A1 as filed.

Although A1, para # (included on filing) mentions “…”, this is not / there is no direct and unambiguous disclosure of “…”, as in claim …

This is contrary to the requirements of A123(2) EPC.

Claim … has no effective date and is opposed on the grounds of A100(c) EPC.

Question 6

Intermediate generalisation

Answer 6

GfE H-V 3.2.1 When a feature is taken from a particular embodiment and added to the claim, it has to be established that:

– the feature is not related or inextricably linked to the other features of that embodiment and

– the overall disclosure justifies the generalising isolation of the feature and its introduction into the claim.
From the sentence X of Y, it is clear that feature Z is inextricably linked to feature A and therefore the amendment represents an impermissible intermediate generalisation.

From the sentence X of Y, it is clear that the overall disclosure fails to justify the general isolation of the feature and its introduction into the claim, therefore the amendment represents an impermissible intermediate generalisation.

Question 7

Feature removed

Answer 7

The feature A has been removed from claim X OR replaced in claim X by feature B. This amendment contravenes Art 123(2) EPC because
1. [where in application] states that feature A is not optional OR
2. the skilled person would not immediately recognise that
a. feature A was not described as essential in the disclosure,
b. it is not, as such, indispensable for the function of the invention in the light of the technical problem it serves to solve, and
c. the replacement or removal requires a real modification of other features to compensate for the change (GL H-V 3.1)
3. feature B is disclosed at [where in application] (T331/87)