T 0169/83 - Features taken from the drawings - #44

Citation rank: 44
No. of citations: 102

T 169/83 is concerned with the question of whether features of an invention, which are originally only disclosed in the drawings, can be included in the claims to distinguish the claimed invention from the prior art.

In the underlying opposition case, the proprietor had restricted the claim by features, which were originally disclosed only in the drawings. The opponents did not argue that the structure or function of those features could not be deduced from the application as-filed, but they simply argued that the features did not emerge from the description and claims.

The appeal Board found nothing objectionable in the fact that features were originally disclosed only in the drawings. The Board stated:

"Since under Article 78 a European application must, where reference is made to them in the description or claims, contain drawings in addition to a request for grant, description, claims and abstract, there is no doubt that where drawings exist they are to be regarded as an integral part of the documents disclosing the invention." (point 3.2 of the reasons)

The Board also noted that nowhere in the EPC was a statement according to which the disclosure in drawings was in any manner "subordinate" to the disclosure in the description and the claims. The only statement in the EPC regarding subordinancy of parts of the application was with respect to the abstract. Here the EPC states that it serves merely as technical information and may not be taken into account for any other purpose (Art. 85).

The Board found that amendments based on drawings are allowable, if the respective features are "clearly, unmistakably and fully derivable from the drawings in terms of structure and function by a person skilled in the art". It must also be clear from the context that the features are indeed part of the invention.

After concluding that the amendments taken the drawings were not infringing Art. 123(2) EPC, the Board decided that the amended claims were new and inventive over the prior art. They remitted the case back to first instance with the oder to maintain the patent in the amended form.

Remark: The EPO Guidelines discuss the possibility of making amendments based on features taken from the drawings, but they promote a cautions approach (Guidelines H-V, 6).

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Headnote:

The European Patent Convention does not exclude the possibility that in the course of opposition proceedings followed by an appeal the claims of a European Patent which in accordance with Article 123(3) do not extend the protection conferred may be limited by the fact that specific features referred to in the claims are clearly shown in the drawings originally filed and are clearly, unmistakably and fully derivable from the drawings in terms of structure and function by a person skilled in the art and so relatable by him to the content of the description as a whole as to be manifestly part of the invention.

The full text of the decision can be found here.