In T 1621/16 the Board of Appeal reversed an Opposition Division decision to revoke a patent for added subject‑matter on the basis the claims comprised multiple selections from lists of converging alternatives.
The patentee successfully argued on appeal that lists of converging alternatives (i.e. lists of alternatives wherein each of the more preferred alternatives is fully encompassed by all the less preferred and broader options in the list) should not be considered to be equivalent to selections from lists of non-converging elements (i.e. mutually exclusive or partially overlapping alternatives). The previous EPO approach typically objected to multiple selections from non-convergent lists but allowed multiple selections from convergent lists only where alternatives having the same degree of preference were combined with each other (e.g. “most preferred”). This decision goes further and indicates that multiple selections can be made based on combinations of both more and less preferred convergent alternatives.
The Board also stipulated two tests that must be met in order to allow the selection:
the subject-matter resulting from the multiple selections must not associated with an undisclosed technical contribution (i.e. the selected features cannot be responsible for an effect not disclosed in the original application),
the application as filed must include a pointer to the combination of features resulting from the multiple selections (i.e. at least some of the examples must fall within the selected subject‑matter).
In this case, 7 of the 21 examples fell within the selected subject‑matter, which was considered to be a sufficient pointer. The Board did not provide specific guidance on what constitutes a “pointer”, so it may be possible to argue that fewer examples still provide support for multiple selections.
When drafting new applications, consider using lists of converging alternatives where possible and ensure that ranges which may eventually be relied upon converge on any specific values used in the examples.
If you are considering claim amendments that require multiple selections in order to address a prior art objection, then consider selecting multiple convergent alternatives and focus on subject-matter supported by the exemplified data.
Non-converging lists of alternatives are still considered to represent distinct features and selecting a specific element from a non-converging list will be considered a selection. Selections from two or more non-converging lists are still likely to raise an added subject‑matter objection at the EPO.