New EPO Guidelines set a harsher test for evaluating whether replacing or removing a feature from a claim adds matter

17 October 2018

H-V, 3.1

The amendments to the Guidelines update and clarify the guidance on replacement and removal of features from a claim, with updated case law references.

Added Subject Matter

A European patent or a patent application may not be amended to contain subject matter extending beyond the application as filed. This section of the Guidelines provides guidance on when replacing or removing features from a claim results in unallowable added subject matter.

The Guidelines describe a three step test to determine if such amendments result in added subject matter. The updated Guidelines clarify that an amendment will fail the test, and thus add matter, if at least one criterion of the test is failed. The steps of the test are:

i) the replaced or removed feature was not explained as essential in the originally filed disclosure;

ii) the skilled person would directly and unambiguously recognise that the feature is not, as such, indispensable for the function of the invention in the light of the technical problem the invention serves to solve; and

(iii) the skilled person would directly and unambiguously recognise that the replacement or removal requires no modification of one or more features to compensate for the change (it does not in itself alter the invention).

The main changes to the above tests are that the first step was previously whether a skilled person would directly and unambiguously recognise that the feature was not explained as essential. The step is changed such that it is no longer viewed through the eyes of the skilled person, but appears to be a more objective test of whether the feature was explained as essential.

Case Law

The Guidelines are also updated to specify that even if the above three step test is met, the amendment must meet the “gold standard” for it not to be considered added matter, as described in the case law (G 3/89, G 11/91 and G 2/10). This “gold standard” states that the amendment is allowable only if a skilled person would derive it directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing (or priority), from the whole of the documents as filed.

Practice Points

The changes to the Guidelines emphasise the importance of this “gold standard” over the above three step test. The “gold standard” should therefore, be considered when making amendments to the claims of a patent or application, in particular when removing or replacing features.
Furthermore, the change to the first step of the test may make it easier for objections to be raised to amendments. The previous Guidelines stated that it was enough for a skilled person to recognise that a feature is explained as essential, whereas, the updated Guidelines require that the feature must be objectively explained as essential.

In summary then, the EPO’s advice to examiners in relation to removal of features would seem to be getting stricter.

Eamon Robinson

Eamon Robinson

Trainee Patent Attorney

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