Please can I have consistency when the EPO deals with added-matter?
Standing on the steps of the European Patent Office building, my US attorney colleague and I had just emerged from an opposition hearing.
“I give up" said John (not his real name).
“Why so, John?” I asked. I knew why. It was bleak outside and it had been bleak in the hearing as well. We were defending a patent but came to grief because the claim amendments did not comply with Article 123(2) EPC – added subject-matter.
"There’s no way it was added matter.” He had my sympathy. Often clients (especially American clients) like to push at the boundaries. We had just come up against one of the all too common extremes in the approach to added matter that the EPO Examiners seem apt to embrace. One of the three members of the Opposition Division declaimed in the hearing that the proposed amendment we were seeking to claim 1 added matter because “it covered things not specifically disclosed in the description” – honestly? Now that’s not just a tough call but is simply a wrong approach. If it was an isolated example it might not be so bad but it isn’t. All too often EPO Examiners want a “word-for-word” basis for an amendment even in prosecution. Where does that come from?
There is a so-called “Gold Standard” for assessing added matter at the EPO. In the book Case Law of the Boards of Appeal of the EPO it says
““The Gold Standard”…for assessing compliance with Art. 123(2) EPC is the following: any amendment to the part of a European patent application or of a European patent relating to the disclosure (the description, claims and drawings) is subject to the mandatory prohibition on extension laid down in Art. 123(2) EPC and can therefore, irrespective of the context of the amendment made, only be made within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge, and seen objectively and relative to the date of filing, from the whole of these documents as filed....”
On paper, this is a model of reasonableness. However, all too often Examiners see it as their job to act as goalkeeper and not referee, policing the boundaries of added subject-matter with an over-zealous and even wrong-headed approach (see above). The high-ups at the European Patent Office have lamented to me that the attitude of Examiners needs to change but that it is taking a while for the guidance of the Gold Standard to be fully embraced in letter and in spirit - much to the frustration of their senior colleagues.
So, Santa my wish is that you can get the EPO to make more uniform how Article 123(2) EPC is applied. Then I won’t have to suffer the ire of my clients’ attorneys. Who knows, I may even be able to make a reasonable prediction and not hide behind “Let’s wait and see”.
Let’s wait and see…