Amendments under the European Patent Convention

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Article 123 of the European Patent Convention (EPC) [1] relates to the amendments under the EPC, i.e. the amendments to a European patent application or patent, and notably the conditions under which they are allowable. In particular, Article 123(2) EPC prohibits adding subject-matter beyond the content of the application as filed, while Article 123(3) EPC prohibits an extension of the scope of protection by amendment after grant.

Contents

Background

The EPC provides that an applicant may in principle amend the documents constituting their European patent application after filing, as it is considered that the applicant may not have a full picture of the prior art at the time when the application is drafted and filed with the EPO. [2]

Article 123(1) EPC

Article 123(1) EPC provides the right for an applicant, in proceedings before the European Patent Office (EPO), to amend its European patent application and for a patent proprietor (during opposition proceedings) the right to amend its European patent. [1] This must however be done in accordance with the Implementing Regulations, considering that the applicant is given "at least one opportunity to amend the application of his own volition." [1] According to the Implementing Regulations, amendments before receiving the (extended) European search report are generally not allowed. [3] Amendments are allowed in response to the extended European search report (i.e., in response to the communication under Rule 70a(1) or (2) EPC) and amendments are also allowed shortly after entry into European phase of a PCT application (namely, in response to the communication under Rule 161(1) EPC). [4] Then, any further amendment is subject to the consent of the Examining Division. [5]

Article 123(2) EPC

Article 123(2) EPC provides that a European patent application, or European patent, may not be amended (both before and after grant) in such a way that it contains subject-matter which extends beyond the content of the application as filed. [1] In other words, an amendment cannot go beyond the original disclosure of the application. The amended subject-matter must be directly and unambiguously derivable (i.e., clearly and unambiguously derivable) from the content of the application as filed. "The underlying idea of Art. 123(2) EPC is that an applicant should not be allowed to improve his 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 (...)." [6] This legal provision illustrates the importance accorded by the Convention to the content of a European patent application as filed –i.e. on the filing date– in respect of its legal effects. [7]

The provisions of Article 123(2) EPC do not concern whether amendments have introduced an expression not present in the application as filed, but whether the amendments have introduced subject-matter extending beyond the content of the application as filed. [8] In other words, the only relevant question is whether the skilled person is confronted, in the amended version of the application or the patent, with additional technical information compared to the technical information contained in the application as filed. If so, Article 123(2) EPC is violated. [9]

An extension of the subject-matter of the European patent beyond the content of the application as filed is a ground of opposition, [10] and revocation. [11]

Standard of proof

When assessing the content of a European patent application as filed, the applicable standard of proof is a rigorous standard, namely the certainty "beyond reasonable doubt" rather than the "balance of probabilities", the normal standard of proof in civil proceedings. [12]

Specific types of amendments

Disclaimers

A disclaimer defines, in a claim, subject-matter which is not claimed. [13] By extension, a disclaimer may also mean the action of introduction a negative limitation in a claim, i.e. "an amendment to a claim resulting in the incorporation therein of a "negative" technical feature, typically excluding from a general feature specific embodiments or areas". [14] The allowability of disclaimers is subject to particular conditions.

Under the case law of the Boards of Appeal of the EPO, disclaimers are allowed only in certain circumstances, as confirmed in G 1/03 and G 2/03 decisions:

"A disclaimer [which is not disclosed in the application as filed [15] [16] ] may be allowable in order to:

  • restore novelty by delimiting a claim against state of the art under Article 54(3) and (4) EPC; [17]
  • restore novelty by delimiting a claim against an accidental anticipation under Article 54(2) EPC; an anticipation is accidental if it is so unrelated to and remote from the claimed invention that the person skilled in the art would never have taken it into consideration when making the invention; and
  • disclaim subject-matter which, under Articles 52 to 57 EPC, is excluded from patentability for non-technical reasons." [18]

In decision G 2/10, the Enlarged Board of Appeal further decided that:

"1a. An amendment to a claim by the introduction of a disclaimer disclaiming from it subject-matter disclosed in the application as filed infringes Article 123(2) EPC if the subject-matter remaining in the claim after the introduction of the disclaimer is not, be it explicitly or implicitly, directly and unambiguously disclosed to the skilled person using common general knowledge, in the application as filed.


1b. Determining whether or not that is the case requires a technical assessment of the overall technical circumstances of the individual case under consideration, taking into account the nature and extent of the disclosure in the application as filed, the nature and extent of the disclaimed subject-matter and its relationship with the subject-matter remaining in the claim after the amendment." [19]

Therefore, in G 2/10, the Enlarged Board of Appeal has essentially restored the possibility for an applicant or patentee to renounce part of its patent monopoly, subject to certain conditions. [20]

Article 123(3) EPC

Article 123(3) EPC prohibits, after grant, amendments extending the protection conferred by a European patent. [21] It is for instance "not allowable to replace a technical feature of a granted claim with another technical feature which causes the claim to extend to subject-matter which was not encompassed by the granted claim." [22] "Article 123(3) EPC is directly aimed at protecting the interests of third parties by prohibiting any broadening of the claims of a granted patent, even if there should be a basis for such broadening in the application as filed." [23] While, before grant, the legal security of third parties has been considered to be "sufficiently protected by the prohibition of extending the content of the application by amendment beyond what was originally disclosed", without therefore prohibiting a broadening of the claims before grant, the situation is different after grant. After grant, "the interests of third parties are further protected by Article 123(3) EPC [in that] the patentee's right to amend the claims is limited by the scope of the granted patent." [24]

According to Enlarged Board of Appeal decision G 2/88, "it is the totality of the claims before amendment in comparison with the totality of the claims after the proposed amendment that has to be considered". [25] If for instance the subject-matter of the claims is changed during opposition proceedings to a different embodiment and if, thereby, the scope of protection of the claims has been extended, the amendment, or change, is contrary to Article 123(3) EPC. [26]

Inescapable Article 123(2) and (3) EPC trap

According to the case law of the Boards of Appeal, if a European patent contains a feature that was not disclosed in the application as filed (in contravention of Article 123(2) EPC) and if the removal of this feature would extend the scope of protection beyond the scope conferred by the patent as granted (in contravention of Article 123(3) EPC), the European patent has, in principle, to be revoked. [27] In principle again, it does not matter whether the amendment leading to such a situation may have been approved during prosecution by the Examining Division, [27] since the responsibility for any amendment always lies with the applicant. [28]

The German Federal Court of Justice (BGH) has adopted a different solution to this problem, allowing patentees to avoid the trap altogether: the so-called "footnote solution". The limiting feature, which was not originally disclosed in the application as filed, can stay in the claim and will limit the scope of protection, but is ignored for assessing patentability. [29]

Correction of errors (Rule 139 EPC)

Rule 139 EPC relates to a specific form of amendments, namely corrections of errors in documents filed with the EPO. Rule 139 EPC contains two sentences, the first one providing for that, in general, "[l]inguistic errors, errors of transcription and mistakes in any document filed with the European Patent Office may be corrected on request", and the second stating that when the requested correction relates to the parts of a patent application or patent relating to the disclosure of the invention, i.e. the description, claims or drawings, "the correction must be obvious in the sense that it is immediately evident that nothing else would have been intended than what is offered as the correction." [30]

See also

Related Research Articles

The patentability of software, computer programs and computer-implemented inventions under the European Patent Convention (EPC) is the extent to which subject matter in these fields is patentable under the Convention on the Grant of European Patents of October 5, 1973. The subject also includes the question of whether European patents granted by the European Patent Office (EPO) in these fields are regarded as valid by national courts.

European Patent Convention International patent treaty

The European Patent Convention (EPC), also known as the Convention on the Grant of European Patents of 5 October 1973, is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted. The term European patent is used to refer to patents granted under the European Patent Convention. However, a European patent is not a unitary right, but a group of essentially independent nationally enforceable, nationally revocable patents, subject to central revocation or narrowing as a group pursuant to two types of unified, post-grant procedures: a time-limited opposition procedure, which can be initiated by any person except the patent proprietor, and limitation and revocation procedures, which can be initiated by the patent proprietor only.

In patent, industrial design rights and trademark laws, a priority right or right of priority is a time-limited right, triggered by the first filing of an application for a patent, an industrial design or a trademark respectively. The priority right allows the claimant to file a subsequent application in another country for the same invention, design, or trademark effective as of the date of filing the first application. When filing the subsequent application, the applicant must claim the priority of the first application in order to make use of the right of priority. The right of priority belongs to the applicant or his successor in title.

The EPC 2000 or European Patent Convention 2000 is the version of the European Patent Convention (EPC) as revised by the Act Revising the Convention on the Grant of European Patents signed in Munich on November 29, 2000. On June 28, 2001, the Administrative Council of the European Patent Organisation adopted the final new text of the EPC 2000. The EPC 2000 entered into force on December 13, 2007.

The European Patent Convention (EPC), the multilateral treaty instituting the legal system according to which European patents are granted, contains provisions allowing a party to appeal a decision issued by a first instance department of the European Patent Office (EPO). For instance, a decision of an Examining Division refusing to grant a European patent application may be appealed by the applicant. The appeal procedure before the European Patent Office is under the responsibility of its Boards of Appeal, which are institutionally independent within the EPO.

The opposition procedure before the European Patent Office (EPO) is a post-grant, contentious, inter partes, administrative procedure intended to allow any European patent to be centrally opposed. European patents granted by the EPO under the European Patent Convention (EPC) may be opposed by any person from the public. This happens often when some prior art was not found during the grant procedure, but was only known by third parties.

A divisional patent application is a type of patent application which contains matter from a previously filed application. While a divisional application is filed later than the parent application, it may retain its parent's filing date, and will generally claim the same priority.

In patent law, a disclaimer are words identifying, in a claim, subject-matter that is not claimed or another writing disclaiming rights ostensibly protected by the patent. By extension, a disclaimer may also mean the amendment consisting in introducing a negative limitation in an existing claim, i.e. "an amendment to a claim resulting in the incorporation therein of a 'negative' technical feature, typically excluding from a general feature specific embodiments or areas". The allowability of disclaimers is subject to particular conditions, which may vary widely from one jurisdiction to another.

G 1/03 and G 2/03 are two decisions of the Enlarged Board of Appeal of the European Patent Office (EPO), which were both issued on April 8, 2004.

Double patenting is the granting of two patents for a single invention, to the same proprietor and in the same country or countries. According to the European Patent Office, it is an accepted principle in most patent systems that two patents cannot be granted to the same applicant for one invention. However, the threshold for double patenting varies from jurisdiction to jurisdiction.

Grant procedure before the European Patent Office

The grant procedure before the European Patent Office (EPO) is an ex parte, administrative procedure, which includes the filing of a European patent application, the examination of formalities, the establishment of a search report, the publication of the application, its substantive examination, and the grant of a patent, or the refusal of the application, in accordance with the legal provisions of the European Patent Convention (EPC). The grant procedure is carried out by the EPO under the supervision of the Administrative Council of the European Patent Organisation. The patents granted in accordance with the EPC are called European patents.

G 1/05 and G 1/06 are decisions of the Enlarged Board of Appeal (EBA) of the European Patent Office (EPO) that were issued on 28 June 2007 and answer questions relating to divisional applications under the European Patent Convention (EPC). The two decisions were published in the Official Journal of the EPO in May 2008.

In European patent law, the limitation and revocation procedures before the European Patent Office (EPO) are post-grant, ex parte, administrative procedures allowing any European patent to be centrally limited by an amendment of the claims or revoked, respectively. These two procedures were introduced in the recently revised text of the European Patent Convention (EPC), i.e. the so-called EPC 2000, which entered into force on 13 December 2007.

Article 84 of the European Patent Convention (EPC) specifies that the "matter" for which patent protection is sought in an application - the purported invention - shall be stated ("defined") in the claims. This legal provision also requires that the claims must be clear and concise, and supported by the description. The function, form and content of the claims are defined by Article 84 supplemented by Rule 43 EPC.

Article 83 of the European Patent Convention (EPC) relates to the disclosure of the invention under the European Patent Convention. This legal provision prescribes that a European patent application must disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

Under Article 82 EPC, a European patent application must "...relate to one invention only or to a group of inventions so linked as to form a single general inventive concept." This legal provision is the application, within the European Patent Convention, of the requirement of unity of invention, which applies also in many other jurisdictions.

Under the European Patent Convention (EPC), European patents shall be granted for inventions which inter alia are new. The central legal provision explaining what this means, i.e. the central legal provision relating to the novelty under the EPC, is Article 54 EPC. Namely, "an invention can be patented only if it is new. An invention is considered to be new if it does not form part of the state of the art. The purpose of Article 54(1) EPC is to prevent the state of the art being patented again."

During the grant procedure before the European Patent Office (EPO), divisional applications can be filed under Article 76 EPC out of pending earlier European patent applications. A divisional application, sometimes called European divisional application, is a new patent application which is separate and independent from the earlier application, unless specific provisions in the European Patent Convention (EPC) require something different. A divisional application, which is divided from an earlier application, cannot be broader than the earlier application, neither in terms of subject-matter nor in terms of geographical cover.

G 2/10 is a decision issued on 30 August 2011 by the Enlarged Board of Appeal of the European Patent Office (EPO) on the subject of disclosed disclaimers. It lies from decision T 1068/07 by Technical Board of Appeal 3.3.08, who referred a question to the Enlarged Board.

References

  1. 1 2 3 4 Article 123 EPC
  2. ↑ Benkard, Europäisches Patentübereinkommen/Schäfers/Sendrowski, 3. Auflage 2019, EPÜ Art. 123 Rn. 20. Quote: "Dies reflektiert die Situation, dass der Anmelder in dem Zeitpunkt, in dem die Anmeldung abgefasst und beim EPA eingereicht wird, in der Regel nicht voll den gesamten Stand der Technik überblickt." Translation: "This reflects the situation that the applicant usually does not have a complete overview of the entire prior art at the time when the application is drafted and filed with the EPO."
  3. ↑ Rule 137(1) EPC
  4. ↑ Rule 137(2) EPC
  5. ↑ Rule 137(3) EPC. Regarding the applicability of Rule 137(3) EPC at an advanced stage of the proceedings (i.e., after issuance of the communication indicating the intention to grant), see for example T 0222/21 (Virtual Machine Migration/MICROSOFT) of 8.7.2021.
  6. ↑ Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (9th edition, July 2019), ii.e.1.1 "Article 123(2) EPC – added subject-matter" > "General principles", citing G 1/93.
  7. ↑ Enlarged Board of Appeal of the EPO, G 0011/91 (Glu-Gln) of 19.11.1992, Reasons 1.5.
  8. ↑ Board of Appeal decision T 567/06 of 31 May 2007, Reasons 2.6.
  9. ↑ See for example: (in German) Decision T 1906/11 of 18 January 2013, Reasons 4.2.2, second paragraph; see also Benkard, Europäisches Patentübereinkommen/Schäfers/Sendrowski, 3. Auflage 2019, EPÜ Art. 123 Rn. 93.
  10. ↑ Article 100(c) EPC
  11. ↑ Article 138(1)(c) EPC
  12. ↑ Decision T 1248/08 of 16 February 2012, Reasons 1.1.2.
  13. ↑ Decision G 2/10 of the Enlarged Board of Appeal of the European Patent Office, August 30, 2011, Reasons for the decision, point 2.1.
  14. ↑ Decision G 2/10, August 30, 2011, Reasons for the decision, point 2.2.
  15. ↑ The reasoning of G 1/03 and G 2/03 applies to disclaimers which are not disclosed in the application as filed. In other words, these decisions relate to "(originally) undisclosed disclaimers". See for instance: Decision T 154/06 of 11 January 2008, Reasons 4.
  16. ↑ Robert Young (8–9 November 2012). EPO boards of appeal and key decisions: Disclaimers and their legal basis, especially in the light of decisions G 1/03, 2/03 and G 2/10 – possible consequences for their use as an instrument of patent prosecution (Part 1 of 3). Munich, Germany: European Patent Office. 19:54 to 21:42 minutes in. Retrieved November 10, 2013. (...) the restricted framework of the decisions. They were talking about undisclosed disclaimers.
  17. ↑ For an application of this principle, see Decision T 33/06 of 18 September 2007, Reasons 2.3:
    "The disclaimer... does not only delimit ... against [the] state of the art under Article 54(3) EPC but against more subject-matter than defined in [the state of the art document] as being novelty destroying. Hence, the subject-matter now excluded ... extends beyond the relevant passage serving as a basis in [the state of the art document] for the exclusion.
    Hence, the amendment has a bearing on the technical information disclosed in the specification, and the patent has been amended in a way that it extends beyond the content of the application as filed.
    It follows that the patent in suit contravenes Article 123(2) EPC."
  18. ↑ G 1/03 and G 2/03
  19. ↑ Enlarged Board of Appeal of the European Patent Office (EPO) (August 30, 2011). "Case Number: G 0002/10, Decision of the Enlarged Board of Appeal of 30 August 2011, Headnote" (PDF). European Patent Office (EPO). Retrieved July 29, 2012.
  20. ↑ Robert Young (8–9 November 2012). EPO boards of appeal and key decisions: Disclaimers and their legal basis, especially in the light of decisions G 1/03, 2/03 and G 2/10 – possible consequences for their use as an instrument of patent prosecution (Part 3 of 3). Munich, Germany: European Patent Office. 8:32 to 8:44 minutes in. Retrieved November 10, 2013. The Enlarged Board has largely, in my understanding, restored the position of the disclaimer as a renunciation of part of a patent monopoly, subject to safeguards.
  21. ↑ Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (9th edition, July 2019), ii.e.2 : "Article 123(3) EPC – extension of the protection conferred".
  22. ↑ See for instance Decision T 0195/09 of 8 October 2010, point 2.1.5, paragraph 4.
  23. ↑ Enlarged Board of Appeal of the EPO, G 0001/93 (Limiting feature) of 2.2.1994, Reasons 9.
  24. ↑ G 1/05, reasons 5.3.
  25. ↑ Enlarged Board of Appeal of the EPO, G 0002/88 (Friction reducing additive) of 11.12.1989, Reasons 3.2.
  26. ↑ See for instance T 0837/07 (6 October 2010), Reasons for the Decision, 1.
  27. 1 2 Legal Research Service for the Boards of Appeal, European Patent Office, Case Law of the Boards of Appeal of the EPO (9th edition, July 2019), ii.e.3.1 : "Inescapable trap", and Enlarged Board of Appeal decision G 0001/93 (Limiting feature) of 2.2.1994
  28. ↑ G 1/93, Reasons 13, last sentence.
  29. ↑ "Decision of the Federal Court of Justice dated 17 February 2015 (X ZR 161/12)". EPO Official Journal. European Patent Office. 30 September 2015. p. A74. Retrieved 4 October 2015.
  30. ↑ Rule 139 EPC

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