1. The EPO is strict on added matter and there is little evidence so far this is changing. Basis for an amendment must be derivable ‘directly and unambiguously’ from the application as filed, and in practice Examiners sometimes insist on word for word basis.
2. When assessing added matter the following can be problematic:
- Intermediate generalisation
- Generalising, deleting or replacing features. Examiners often consider features to be ‘inextricably linked’, particularly if they are only disclosed in the Examples of the application.
- Creating a new combination of features when the specification does not explicitly link those features together
- Any new combination of features is potentially difficult, and even changing from single claim dependency to multiple claim dependency can cause problems.
3. Introducing disclaimers is possible but the test for whether they add matter is not entirely clear. Essentially the EPO will judge whether there is ‘new technical information’ (G2/10) and this will be probably be on a case by case basis. Certainly combining features for the first time in a disclaimer could be problematic, and therefore it is best to keep disclaimers as ‘simple’ as possible.
4. Added matter attacks are often successful in opposition, and this should be kept in mind when making amendments in examination on a case that is likely to be opposed. EPO Opposition Divisions have no compunction in finding added matter in claims granted by the EPO.
5. Decisions T667/08 and T2619/11 provided hope that things would change. T667/08 said that the teaching needed to be considered in its entirety to identify subject matter which was not explicitly revealed. T2619/11 said that there should not be a disproportionate focus on the claims when assessing added matter. These cases led to a change in the Guidelines for Examination. However subsequently T1363/12 pointed out that a Board of Appeal was not bound by the Guidelines and that T667/08 and T2619/11 were ‘very case-specific’.
6. How to argue basis for a claim when there is no word for word basis:
- argue that it is the ‘technical’ teaching that is relevant, not the specific words. For example the same technical teaching can be phrased in a different way as literal basis is not required for an added matter test.
- refer to ‘implicit’ basis for a feature.
7. How to ‘draft’ new claims during examination: if possible avoid simply ‘stitching’ many features together as that might cause in difficulties in showing basis for connecting each feature to every other feature. Instead it can be better to start with one of the original claims as a ‘base’ and add features sequentially to derive the claim you want.
8. In recent years the idea of ‘convergence’ has become more prominent when preparing claim requests. This is the idea that when multiple claim requests are admitted there should be a convergence of subject matter, i.e. sequential additional limitations rather than branching out of subject matter in different directions. That may be influencing the way amendments are considered in other situations, i.e. that amended claims should result from the sequential additions of features.
9. The EPO has strict well defined tests for selection of integers from lists and using numerical ranges as basis. These tests tend to be restricted to chemical formulae and properties defined by numerical values. However individual Examiners can take very lenient views on these, and to an extent that is necessary to keep chemical prosecution functional.
10. The factors that support the EPO having a strict test for added matter are:
- increased certainty
- it is easier to use in the adversarial situation of opposition
- it is consistent with the fact that applications are being filed to similar subject matter, and a strict test allows a clearer more certain judgment of the disclosure of each application.
Therefore it is likely that the EPO’s strict view of added matter will continue for the foreseeable future.