T 0073/84 - Revocation by the patent proprietor - #20

Citation rank: 20
No. of citations: 162

It is not foreseen in opposition and opposition-appeals procedures that the patentee requests revocation of his own patent. For example, such an outcome is not among the possible outcomes of an opposition division listed in Art. 101(2) and (3). The possibility for the proprietor of a European patent to request revocation of its own patent was only added to the EPC2000 through the limitation or revocation procedure according to Art. 105a-105c.

In the opposition case underlying T 73/84, the Opposition Division had rejected the opposition and the patent was maintained unamended. The opponent appealed against this decision. At that stage, the patent proprietor referred to Legal Advice No. 11/82 (OJ (EPO) 2/1982, p. 57) and stated that, in order to terminate the appeal proceedings, he no longer approved the text in which the patent was granted and would not be submitting an amended text. Legal Advice 11/82 stated that in opposition proceedings, if  the applicant states that he no longer approves the text in which the patent was granted and does not submit an amended text, the patent must be revoked.

The Board noted with respect to the same situation in appeal proceedings that:

3. Since the text of the patent is at the disposition of the patent proprietor, a patent cannot be maintained against the proprietor's will. If the patent proprietor withdraws his approval, expressed before the first instance, of the text of the patent as granted and declares that he will not be submitting an amended text, it may be inferred that he wishes to prevent any text whatever of the patent from being maintained.

4. However, the patent proprietor cannot terminate the proceedings by telling the EPO that he is surrendering the European Patent, since this is not provided for in the Convention. Thus he would only be able, as far as national law permitted, to surrender the patent vis-à-vis the national patent offices of the designated Contracting States under the relevant national law.

5. At the same time, the proceedings ought to be terminated as quickly as possible in the interests of legal certainty, which calls for a clarification of the industrial rights situation. The only possibility in such a case is to revoke the patent, as envisaged for other reasons in Article 102 EPC. The practice followed by the Opposition Divisions is thus confirmed.

Since then, withdrawal by the proprietor of his consent to the currently pending text (or texts) in appeal proceedings is used to terminate the appeal proceedings by revocation of the patent.

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Headnote:

If the proprietor of a European patent states in opposition or appeal proceedings that he no longer approves the text in which the patent was granted and will not be submitting an amended text, the patent is to be revoked.

The full text of the decision can be found here.

See T 186/84 on the same issue in opposition proceedings.

G 0005/83 - Second medical indication - #21

Citation rank: 21
No. of citations: 162

G 5/83 is one of seven(!) parallel cases before the Enlarged Board of Appeals, all dealing with the question of whether or how inventions relating to a "second medical indication" of a chemical compound or composition can be protected under the EPC. These seven decisions were also the very first decisions delivered by Enlarged Board of Appeal.

At the time of G 5/83 there was (and still is today) considerable interest in protecting inventions relating to the "second medical use" or "second medical indication" of chemical entities, i.e., where the compounds or compositions were already known to be useful as medicaments, but for a different disease/in a different indication. The difficulty was that Art. 52(4) EPC1973 in did not allow claims to "methods for treatment of the human or animal body by therapy". More specifically, Art. 52(4) EPC1973 stipulated that such methods were not susceptible of industrial application, one of the three basic patentability requirements. (The exclusion from patentability of therpeutic methods is still present in the EPC2000, but it is implemented in a different manner, namely it is formulated as an "exception to patentability" under Art. 53(c) EPC.)

The German High Court ("Bundesgerichtshof", BGH) had already decided that, under German national law, the subject-matter of a claim directed to the use of a chemical substance to treat an illness extends beyond the treatment of the illness, namely to the preparation for use ("augenfällige Herrichtung"), which, according to the BGH, includes at least the packaging of the substance with instructions for use in the treatment of the illness. A claim directed to the use of a compound to treat an illness could therefore be used in German national law to protect the "second (or further) medical indication".

The Enlarged Board, however, did not agree with the findings of the BGH. In particular, the Enlarged Board found that there was in principle no difference between a method claim and a use claim; it was merely a matter of preference of the applicant whether to formulate a method claim as use claim or vice versa. In this regard, the Enlarged Board stated:

11. The European Patent Convention, in general, allows both method claims and use claims but whether any activity is claimed as a method of carrying out the activity (setting out a sequence of steps) or as the use of a thing for a stated purpose (the sequence of steps being implied), is, in the opinion of the Enlarged Board, a matter of preference. For the European Patent Office there is no difference of substance. In the context of the present case, this means that any artificial distinction according to which, when the invention concerns the employment of a substance or composition for therapy, a method claim excludes and a use claim includes at least the preparation of a pharmaceutical product, with instructions for use in the treatment of illness (which has been called in German the "augenfällige Herrichtung"), cannot be accepted, because in both cases the active substance or composition for therapy must be in a state capable of exerting its therapeutic activity and this necessarily means that the active material has been formulated and made up into doses.

Since a second-medical indication claim in the form of a "use claim" was no different than the corresponding claim formulated as "method claim" (the latter being expressly excluded from patentability), no patent could be granted according to the Enlarged Board on a second-medical use claim irrespective of whether it was formulated as "use" or "method claim":

13. For the reasons already given, in the considered opinion of the Enlarged Board, a claim directed to the "use of a substance or composition for the treatment of the human or animal body by therapy" is in no way different in essential content from a claim directed to "a method of treatment of the human or animal body by therapy with the substance or composition". The difference between the two claims is one of form only and the second form of claim is plainly in conflict with Article 52(4) EPC. Since this is so, no patent can be granted including any such claims: Article 97(1) EPC.

The Enlarged Board, however, recognised that Article 54(5) EPC1973 provided for the possibility to protect inventions based on the "first medical indication" of a compound or composition, namely in the form of a purpose-limited product claim. The Enlarged Board noted that, apparently, no problem arose with respect to susceptibility of industrial application of such an invention, within the meaning of Article 57 EPC. Furthermore, from the Articles and Rules of the EPC1973, as well as from its legislative history, the Enlarged Board concluded that

"[n]o intention to exclude second (and further) medical indications generally from patent protection can be deduced from the terms of the European Patent Convention: nor can it be deduced from the legislative history of the articles in question."  (point 22 or reasons)

The Enlarged Board then considered a statement made by the Swiss Federal Intellectual Property Office, stating that they allowed claims to second-medical use inventions in the form of a use claim directed to the use of a substance or composition for the manufacture of a medicament for a specified (new) therapeutic application (point 19 of the reasons).

The Enlarged Board concluded that it is legitimate to allow claims directed to the use of a substance or composition for the manufacture of a medicament for a specified new and inventive therapeutic application, even in a case in which the process of manufacture as such does not differ from known processes using the same active ingredient (point 23 of the reasons).

That claim format was since then referred to as the "Swiss-type claim". It was the claim format of choice to protect second medical indications under the EPC up until G 2/08 ("Dosage regime"). This decision held that under the new wording of the EPC2000 (which allowed purpose-limited product protection for second medical indications, Art. 54(5) EPC), there was no longer room for second-medical use claims in Swiss-type format. The purpose-limited product claim should be used instead.

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Headnote:

I. A European Patent with claims directed to the use may not be granted for the use of a substance or composition for the treatment of the human or animal body by therapy.
II. A European patent may be granted with claims directed to the use of a substance or composition for the manufacture of a medicament for a specified new and inventive therapeutic application.

The full text of the decision can be accessed here.

G 0001/99 - Reformatio in peius - #22

Citation rank: 22
No. of citations: 161

Further to G 4/93 (and G 9/92), G 1/99 also looks at the consequences of the principle of party disposition, namely the prohibition of reformatio in peius, in opposition-appeal proceedings where the Opposition Division has upheld the patent in amended form.

G 4/93 held that in such cases, if the proprietor is the sole appellant, neither the Board nor the non-appealing opponent may challenge the maintenance of the patent in amended form (G 4/93, Headnote I)

In the case where the opponent is the sole appellant, G 4/93 held that the proprietor is primarily restricted to defending the patent in the form in which it was maintained by the Opposition Division. Amendments proposed by the patent proprietor, however, may be rejected as inadmissible by the Board "if they are neither appropriate nor necessary" (G 4/93, Headnote II; see here for a brief summary of G 4/93).

G 1/99 now takes a closer look at the latter situation, where the opponent is the sole appellant. In particular, G 1/99 explains how the expression "... if they are neither appropriate nor necessary" in Headnote II of G 4/93 is to be understood.

The Enlarged Board in G 1/99 generally confirmed that the principle of party disposition, and thus the prohibition of reformtio in peius, applies under the EPC (see point 8 of the reasons). However, the principle is not to be applied unconditionally. They stated:

"... Taking into consideration that in appeal proceedings before the EPO the application of the principle of prohibition of reformatio in peius derives from its own case law, the Enlarged Board of Appeal has also to weigh the consequences of this application, if it appears that they might be unsatisfactory." (point 11 of the reasons)

They considered that in the case where the opponent is the sole appellant against a decision of the Opposition Division to maintain the patent in amended form, it would be inappropriate not to allow the proprietor to amend his claims, if such amendment is necessary to undo an Art. 123(2) violation, which occurred during the opposition procedure, and which was allowed by the Opposition Division. Such amendments are to be allowed, even if it meant that the opponent and sole appellant is put is a worse situation than if he had not appealed, i.e., even if the opponent is thereby hit by reformatio in peius. In such situations, reformatio in peius was exceptionally allowed.

The Enlarged Board, however, did not allow any type of amendment. In order to restrict the negative effect of the amendment on the opponent to a minimum, the Enlarged Board held that in such a case, the proprietor may, in this order,

1. amend the claims by introducing one or more originally disclosed features which limit the scope of the patent as maintained (in this situation the opponent and sole appellant does not suffer from reformatio in peius);
2. If this is not possible, amend the claims by introducing one or more originally disclosed features which extend the scope of the patent as maintained, but of course not extending beyond the scope of the patent as granted (Art. 123(3) (here reformatio in peius occurs);
3. If amendments under 1 and 2 are not possible, the proprietor may delete the feature which led to the Art. 123(2) infringement, but within the limits of Article 123(3) EPC (here reformatio in peius is even worse).

Generally, the prohibition of reformatio in peius is more strictly applied in cases where the proprietor is the sole appellant, as compared to where the opponent is the sole appellant. The Enlarged Board considered this "un-symmetrical" application of the principle of reformatio in peius justified, i.a., because a losing opponent has further opportunity to invalidate the European patent in national invalidity proceedings, whereas a proprietor, who's patent is revoked in opposition/appeal proceedings before the EPO, has lost its patent for good.

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Headnote:

In principle, an amended claim, which would put the opponent and sole appellant in a worse situation than if it had not appealed, must be rejected. However, an exception to this principle may be made in order to meet an objection put forward by the opponent/appellant or the Board during the appeal proceedings, in circumstances where the patent as maintained in amended form would otherwise have to be revoked as a direct consequence of an inadmissible amendment held allowable by the Opposition Division in its interlocutory decision.

In such circumstances, in order to overcome the deficiency, the patent proprietor/respondent may be allowed to file requests, as follows:

- in the first place, for an amendment introducing one or more originally disclosed features which limit the scope of the patent as maintained;

- if such a limitation is not possible, for an amendment introducing one or more originally disclosed features which extend the scope of the patent as maintained, but within the limits of Article 123(3) EPC;

- finally, if such amendments are not possible, for deletion of the inadmissible amendment, but within the limits of Article 123(3) EPC.

The full text of the decision can be found here.

Quotes from decisions citing G 1/99 can be found here.

G 0004/93 - "Non-appealing party" - #23

Citation rank: 23
No. of citations: 146

G 4/93 (in consolidated proceedings with G 9/92, see same review here) looked at the consequences of the "principle of party disposition" on inter partes opposition-appeal proceedings.

Two Boards of Appeal referred questions to the Enlarged Board of Appeal under Art. 112(1)(a) EPC. The questions arose from three appeal cases, all of which were concerned with an appeal against the decision of an oppositon division to maintain the patent in amended form according to Art. 101(3)(a) EPC. In one case the proprietor was the sole appellant, in another case only the opponent appealed. In the third case both parties appealed.

The Technical Boards referred the question whether a Board of Appeal, in proceedings before it, could put the sole appellant in a worse position than if it had not appealed, or whether there should be prohibition of reformatio in peius (Latin: "change for the worse"). Specifically, they asked the Enlarged Board:

"Can the Board of Appeal amend a contested decision to the Appellant's disadvantage? -   If so, to what extent?"

The Enlarged Board pointed out that the proceedings before the EPO are generally goverened by the principle of party disposition, i.e., that the parties define the extent of the proceedings through their intial requests. This principle is also known as the principle of "ne ultra petita" (Latin: "not beyond the request").

The Enlarged Board mentioned that decisions G 9/91 and G 10/91 already clarified that the principle of party disposition applies to opposition and opposition-appeal proceedings before the EPO (see G 4/93, points 3 and 4 of the reasons). The principle of ex officio examination (Art. 114(1) EPC), on the other hand, found little application in appeal proceedings (points 4 and 5 of the reasons).

Under the principle of party disposition, in opposition-appeal cases in which the patent is maintained in amended form, the appeal of the proprietor, who is the sole appellant, can only be understood as a request of the proprietor-appellant to maintain its patent in unamended form, or at least with a scope somewhere between that of the patent upheld in opposition and the scope as granted. In any case, the proprietor's appeal cannot be interpreted as being a request to further limit the appellant's patent. Therefore, the Enlarged Board in G 4/93 found that it would be against the principle of party disposition to limit a patent to less than the scope maintained in opposition, if the proprietor is the sole appellant (see Headnote I).

Where the opponent is the sole appellant, the situation is the opposite. It would be against the principle of party disposition, if an Appeal Board broadened the scope of the patent (e.g., maintained the patent as granted). This would certainly be against the opponent/sole appellant's initial request. The proprietor is thus primarily restricted to defending the patent in the form in which it was maintained by the Opposition Division (see Headnote II).

If both, the proprietor and the opponent, appeal against the decision to uphold the patent in amended form, the principle of party disposition clearly can no longer be fully observed. This is impossible, because of the parties' initial requests are contradicting. In this situation, an Appeal Board is free to broaden or lessen the scope of the patent as mainteined by the opposition division all the way from maintenance as granted to revocation in full.

Remark: G 1/99 ("Reformatio in peius") later took a closer look at the situation in which the opponent is the sole appellant (Headnote II, below). G 1/99 exceptionally allowed broadening of the scope of the claims (beyond the scope of the claims maintained in opposition, but within the limits of Art. 123(3)) in the case where the proprietor would otherwise lose its patent because of a Art. 123(2) infringement which occurred during the opposition stage. The cautious wording "may be rejected as inadmissible by the Board of Appeal if they are neither appropriate nor necessary" in Headnote II, below, was thus interpreted as as allowing certain exceptions. See here for a brief summary of G 1/99.
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Headnote:

I. If the patent proprietor is the sole appellant against an interlocutory decision maintaining a patent in amended form, neither the Board of Appeal nor the non-appealing opponent as a party to the proceedings as of right under Article 107, second sentence, EPC, may challenge the maintenance of the patent as amended in accordance with the interlocutory decision.

II. If the opponent is the sole appellant against an interlocutory decision maintaining a patent in amended form, the patent proprietor is primarily restricted during the appeal proceedings to defending the patent in the form in which it was maintained by the Opposition Division in its interlocutory decision. Amendments proposed by the patent proprietor as a party to the proceedings as of right under Article 107, second sentence, EPC, may be rejected as inadmissible by the Board of Appeal if they are neither appropriate nor necessary.

The full text of the decision can be found here.

T 0020/81 - Alleged advantages must be proven - #24

Citation rank: 24
No. of citations: 146

T 20/81 looked at a case where the applicant based its inventive step argumentation on alleged advantages of his invention over the prior art; the alleged advantages, however, were not demonstrated by the evidence presented.

Claim 1 of the underlying application related to a process for the preparation of meta-aryloxy-benzaldehydes by reaction of a mixture of the corresponding meta-aryloxybenzyl halides and meta-aryloxy-benzal halides with hexamethylene tetramine followed by hydrolysis of the resulting products.

The Examining Division refused the application for lack of inventive step over Dutch patent application NL-A-7 701 128 and a textbook chapter (Organic Reactions Vol. III, 1954, John Wiley, New York, Chapter 4, S. H. Angyal). The process disclosed in NL-A-7 701 128 used acid in the reaction mixture, which required the use of acid-resistant reaction vessels. The applicant formulated the technical problem as lying in the provision of an improved process, which avoids the negative effects of the acid in the reaction mixture. The argument, however, did not convince the Examining division.

In appeal, the appellant-applicant reformulated the technical problem. According to the appellant, the problem was not simply to eliminate the disadvantages emerging from the use of an acid in the process of the NL-A-7 701 128, but to generally improve the known process for preparing meta-phenoxy benzaldehyde. Based on a comparative example (example 5), he claimed that the claimed process could be carried out in less time and at a slightly higher yield.

The Board commented as follows:

"Moreover, the applicant refers to the advantage that hydrolysis can now be carried out in a shorter time to obtain a slightly higher yield of POAL (page 2, lines 10-12). This advantage is said to be proven by the results of the comparative example within example 5 on file. Contrary to the submission of the applicant, the comparison is not pertinent, since different temperatures were used, namely 110° C for the hydrolysis step pursuant to the present application, but only 106°C for that of the old Shell process. It is well known that the employment of different reaction temperatures entails a different speed of reaction. In general, a rise of temperature by 10°C will cause the speed to double or triple."  (point 3 of the reasons)

The Board thus carefully compared the claimed process with the process described in comparative example 5 and found that the alleged advantages, on which the appellant-applicant relied, were not proven by those experiments.

The Board drew the following conclusion:

"Consequently, the conclusion must be drawn that the additional advantages referred to by the appellant have not been properly demonstrated. Such alleged but unsupported advantages cannot be taken into consideration in respect of the determination of the problem underlying the application. For this reason, the problem the applicant must have faced remains the one already defined." (point 3 of the reasons)

Applying the former technical problem, the Board agreed with the Examining Division's conclusion that the claimed process did not involve an inventive step.

The appeal was rejected.

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Headnote:

In order to render them relevant to the definition of the problem underlying the invention, and hence to the assessment of inventive step, alleged advantages should be supported by sufficient evidence where comparison is made with highly pertinent prior art.

The full text of the decision can be accessed here.

See also T 181/82 on a related issue.

G 0002/10 - "Disclosed" disclaimers - #25

Citation rank: 25
No. of citations: 145

G 2/10 is concerned with the question of whether and when "disclosed disclaimers" are allowed. Disclosed disclaimers are amendments by which certain embodiments, which are disclosed as embodiments of the invention, are excluded from the scope of a generically formulated claim. G 2/10 follows G 1/03 and G 2/03, which dealt with the admissibility of "non-disclosed" disclaimers, i.e., with the conditions under which disclaimers disclaiming subject matter which was not disclosed at all in the original application could be disclaimed.

In the underlying examination case, the applicant amended a claim to a catalytic DNA molecule having site-specific endonuclease activity specific for a nucleotide sequence. The definition of the claimed DNA molecule was generic, in that it allowed certain variations in the nucleotide sequence. The applicant amended the original claim by disclaiming from its scope certain sequences, which were originally disclosed as embodiments of the invention. Claim 1 of the Main request read:

"1. A catalytic DNA molecule having site-specific endonuclease activity [...] said molecule having the formula:

 [...]

... wherein the first substrate binding region does not have the sequence 5'-CTTTGGTTA-3' or 5'-CTAGTTA-3',

wherein the second substrate binding region does not have the sequence 5'-TTTTTCC 3'-and

wherein the said catalytic DNA molecule does not show site-specific endonuclease activity for the sequence: 5'–GGAAAAAGUAACUAGAGAUG-GAAG–3' (SEQ ID NO 135)."

Before G 2/10, it was common practice at the EPO to allow such disclaimers of embodiments, which were presented as part of the invention.

The Enlarged Board, however, considered that there was no reason to generally allow such disclosed disclaimers, because the overriding principle for assessing the admissibility of amendments during prosecution was still Art. 123(2) EPC.

They considered that undisclosed disclaimers are not allowed, unless the subject matter remaining within the claim after the disclaimer can be directly and unambiguously be derived from the application as filed.

This test was later referred to as the "remaining subject matter test" of G 2/10.

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Headnote:

The question referred to the Enlarged Board of Appeal is answered as follows:

1a. An amendment to a claim by the introduction of a disclaimer disclaiming from it subject-matter disclosed in the application as filed infringes Article 123(2) EPC if the subject-matter remaining in the claim after the introduction of the disclaimer is not, be it explicitly or implicitly, directly and unambiguously disclosed to the skilled person using common general knowledge, in the application as filed.

1b. Determining whether or not that is the case requires a technical assessment of the overall technical circumstances of the individual case under consideration, taking into account the nature and extent of the disclosure in the application as filed, the nature and extent of the disclaimed subject-matter and its relationship with the subject-matter remaining in the claim after the amendment.

 The full text of the decision can be found here.

T 0435/91 - Sufficiency of disclosure over the whole area claimed - #26

Citation rank: 26
No. of citations: 140

T 435/91 is concerned with the question of sufficiency of disclosure in cases where the invention relates to a chemical composition and is, in part, defined by functional features. T 435/91 holds that sufficiency of disclosure is not given, if the patent discloses only isolated examples falling under the functional definition of the claim, but does not disclose a technical concept fit for generalisation so that the skilled person can achieve the envisaged result without undue difficulty within the whole ambit of the claim containing the functional definition.

Claim 1 of the underlying opposition case related to:

"An aqueous detergent composition comprising a gel, characterised in that the gel is wholly or predominantly in hexagonal liquid crystal form, and comprises:

(a) [...]

(b) an additive which is a water-soluble non-micelle-forming or weakly micelle-forming material capable of forcing the surfactant system (a) into hexagonal phase, the additive being nonionic or of the same charge type as the surfactant (a)(i); and

(c) [...]"

There was no dispute that the skilled person could establish whether or not a detergent composition was in a hexagonal form or not. Furthermore, it was not disputed among the parties that the worked examples in the description of the patent were feasible. Thus it is clear that the patent discloses at least one way to carry out the invention and that it is possible to determine whether or not any particular composition meets the definition of the invention as set out in claim 1.

There was, however, dispute as to whether or not the subject matter of claim 1 could be carried out by skilled person, because one of its essential technical features, the "additive" (b), was defined only by its function.

Regarding the requirement for sufficient disclosure of structurally vs. functionally defined inventions, the Board stated:

"In the board's judgment, the criteria for determining the sufficiency of the disclosure are the same for all inventions, irrespective of the way in which they are defined, be it by way of structural terms of their technical features or by their function. In both cases the requirement of sufficient disclosure can only mean that the whole subject-matter that is defined in the claims, and not only a part of it, must be capable of being carried out by the skilled person without the burden of an undue amount of experimentation or the application of inventive ingenuity." (point 2.2.1 of the reasons, emphasis added)

The Board thus held that the disclosure relating to both, functionally and structurally defined inventions, must be such that the skilled person can carry out the invention over the entire scope of what is claimed.

Regarding the special case of functionally defined inventions, the Board held:

"The peculiarity of the "functional" definition of a component of a composition of matter resides in the fact that this component is not characterised in structural terms, but by means of its effect. Thus this mode of definition does not relate to a tangible component or group of components, but comprises an indefinite and abstract host of possible alternatives, which may have quite different chemical compositions, as long as they achieve the desired result. Consequently, they must all be available to the skilled person if the definition, and the claim of which it forms a part, is to meet the requirements of Article 83 or 100(b) EPC. This approach is based on the general legal principle that the protection covered by a patent should correspond to the technical contribution to the art made by the disclosure of the invention described therein, which excludes the patent monopoly from being extended to subject-matter which, after reading the patent specification, would still not be at the disposal of the skilled person (see also points 3.4 and 3.5 of decision T 409/91, OJ EPO 1994, 653)." (point 2.2.1 of the reasons, emphasis added)

The Board thus  investigated whether in the case at hand, the description contained sufficient information to fulfil the above requirement for sufficient disclosure. In this respect, the patentee had admitted during the oral proceedings that it was not possible to identify, on the basis of the information contained in the patent, other compounds than those specifically mentioned in the description, which could reasonably be expected to bring about the desired effect defined in feature (b).

The Board concluded that the definition of the "additive" in feature (b) amounted more to an invitation to launch a research program than to a clear definition of a feature of the claimed detergent composition.

Therefore, the Board held that the invention defined in claim 1 was not sufficiently disclosed.

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Headnote:

The disclosure of an invention relating to a composition of matter, a component of which is defined by its function (in the present case an additive which forces a detergent composition into the hexagonal liquid crystal phase), is not sufficient if the patent discloses only isolated examples, but fails to disclose, taking into account, if necessary, the relevant common general knowledge, any technical concept fit for generalisation, which would enable the skilled person to achieve the envisaged result without undue difficulty within the whole ambit of the claim containing the "functional" definition (point 2.2.1 of the reasons).

The full text of the decision can be found here.

Quotes from decisions citing T 435/91 can be found here.

J 0010/07 - Transitional provisions EPC2000 - #27

Citation rank: 27
No. of citations: 131

J 10/07 was concerned with the question of whether the Rules of the EPC1973 or the Rules of the revised EPC2000 were applicable in cases which took place in the transitional phase of the entry into force of the EPC2000. (The EPC2000 entered into force on 13 December 2007.) Nowadays, more than 10 years after the entry into force of the EPC2000, J 10/07 has lost most of its relevance. (See graph on top right.) Nevertheless, the case underlying the decision and its conclusions will briefly be summarised below.

In the underlying case, the applicant filed (on 9 October 2004) an application claiming priority of an application filed 16 October 2003. No drawings, however, were filed with the application, although the "receipt of documents" form 1001.6 mentioned 6 drawing sheets. The applicant apparently forgot to enclose the drawings in the filing documents.

Under the EPC1973, which was in force at the time of filing the application, an applicant who failed to file the drawings together with the remaining application had two choices: He could file the missing drawings and request that the application was re-dated to the date on which the drawings were received by the EPO, alternatively all references to the drawings were deemed to be deleted (R. 43 EPC1973).

Under the EPC2000, however, the applicant is given a third choice, namely - if a priority is claimed - filing the missing drawings and maintaining the original filing date, if the late-filed drawings are completely contained in the priority application (R. 56 EPC).

In the case at hand the applicant filed the missing drawings on 11 November 2004, i.e., after expiry of the priority year.

The EPO then issued a "loss of rights" communication under Rule 69 EPC1973, stating that the application was re-dated to 11 November 2004 and that - as a consequence of the re-dating - the claimed priority of 16 October 2003 was invalid.

The applicant requested am appealable decision and - on 24 November 2006 - appealed against that decision. At the end of the appeal proceedings the sole and Main Request of the appellant was to acknowledge the original filing date (9 October 2004) as the filing date, and to deem all references to the missing drawings deleted. He argued that his late filing of the missing drawings was misinterpreted by the EPO as a request to re-date the application.

Oral proceedings before the Legal Board of Appeal took place on 8 April 2008, i.e., after entry into force of the EPC2000. Under these circumstances, the Board considered it appropriate to first determine, whether the Articles and Rules of the EPC1973 or the Articles and Rules of the EPC2000 were applicable.

They observed that, generally, according to Article 7 of the Act revising the EPC of 29 November 2000 (OJ EPO, Special edition 1/2007, page 196) the revised version of the EPC

"... shall apply to all European patent applications filed after its entry into force, as well as to all patents granted in respect of such applications. It shall not apply to European patents already granted at the time of its entry into force, or to European patent applications pending at that time, unless otherwise decided by the Administrative Council of the European Patent Organisation." (ibid.)

The decision of the Administrative Council (AC) regarding this matter was taken 28 June 2001. It is also published in the Special edition 1/2007 of the Official Journal (on page 197). This decision holds, i.a., that Articles 14(3) to (6), 51, 52, 53, 54(3) and (4), 61, 67, 68 and 69, the Protocol on the Interpretation of Article 69, and Articles 70, 86, 88, 90, 92, 93, 94, 97, 98, 106, 108, 110, 115, 117, 119, 120, 123, 124, 127, 128, 129, 133, 135, 137 and 141 of the revised EPC shall (exceptionally) apply to European patent applications pending at the time of their entry into force and to European patents already granted at that time.

Regarding the applicability of the Rules of the EPC (which are not mentioned in the above decision of the AC), the Board in J 10/07 considered that it would be logical, and indeed necessary, that Rules relating to the above Articles (in the sense of "implementing" them) should also fall under the transitional provisions made by the AC decision of 28 June 2001. Otherwise, irresoluble contradictions and legal discrepancies would arise between the applicable Articles of the EPC 1973 and the applicable provisions of the Implementing Regulations to the EPC 2000, which could have been the legislator's intention.

The relevant Rules 43 EPC1973 and 56 EPC2000 were "implementing provisions" of Art. 80 EPC ("Date of filing"). Since Art. 80 was not mentioned in the AC decision of 28 June 2001 as one of the Articles to which exceptionally EPC2000 applies, it was concluded that the applicable Rule in the present case was Rule 43 EPC1973.

Under the specific circumstances of the case, and in application of Rule 43 EPC1973, the Board decided that the appellant-applicant's request to acknowledge the original filing date, and to deem all references to the missing drawings deleted, allowable

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Headnote:

On the question of the applicability of the EPC 1973 or EPC 2000 in accordance with the transitional provisions of the EPC 2000 (see Points 1, 3, 6 and 7 of the Reasons).

The full text of the decision can be found here.

G 0003/89 - Standard of "direct and unambiguous disclosure" - #28

Citation rank: 28
No. of citations: 130

G 3/89 was one of two G-decisions (the other one was G 11/91) which looked at the conditions under which "obvious errors" can be corrected under Rule 88, second sentence EPC1973 (now Rule 139, second sentence). The impact of the decisions goes far beyond the issue of corrections of obvious errors, because the standard regarding disclosure, which was set by G 3/89 and G 11/91, is more or less universally applied under the EPC, e.g., also for assessing the disclosure of a prior art document (when assessing novelty), in an application as-filed (for the purposes of Art. 123(2)) and in a priority application (for assessing the validity of a priority claim).

In G 3/89 the President of the EPO referred questions to the Enlarged Board of Appeals, because he felt that two decisions of the Boards of Appeal, namely T 401/88 and J 4/85 represented diverging case law in the sense of Art. 112(1)(b), which justified referral to the Enlarged Board of Appeals.

T 401/88 held that a requested amendment which represents an inadmissible extension within the meaning of Article 123(2) EPC, and which cannot be allowed, may also not be allowed as a correction under Rule 88, second sentence, EPC. J 4/85 applied a less strict standard and ruled that for assessing the allowability of a correction under Rule 88 EPC1973 it is necessary to take account of all the facts and evidence enabling the applicant's intention to be established. In particular, the priority document could be taken into account to establish what the intention of the applicant was, even if it was not filed with the European patent application.

The Enlarged Board considered that a correction of an obvious error under Rule 88 EPC1973 was a special case of amendment, hence, the prohibition of extending the subject matter of Art. 123(2) applied. As a result, an amendment of the application through correction of an obvious error must not add anything which was not part if the content of the application as filed. They stated:

"The parts of a European patent application or of a European patent relating to the disclosure (the description, claims and drawings) may therefore be corrected under Rule 88, second sentence, EPC only 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."

Regarding potential infringement of Art. 123(2) by corrections of obvious errors, the Enlarged Board stated:

"4. A correction under Rule 88, second sentence, EPC is of a strictly declaratory nature. The corrected information merely expresses what a skilled person, using common general knowledge, would already derive on the date of filing from the parts of a European patent application, seen as a whole, relating to the disclosure. This does not therefore affect the content of the European patent application as filed. Under these circumstances, there cannot be said to be any retroactive effect. Since a correction admissible under Rule 88, second sentence, EPC is thus of a declaratory nature only, it does not infringe the prohibition of extension under Article 123(2) EPC either."

The standard of "direct and unambiguous disclosure" has since then been applied whenever the content of a document had to be assessed, e.g., in the context of novelty, validity of a priority claim or amendments.  

G 3/89 and G 11/91 may be seen as being the reason as to why the EPO has adopted its relatively strict amendment policy.

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Headnote:

1. The parts of a European patent application or of a European patent relating to the disclosure (the description, claims and drawings) may be corrected under Rule 88, second sentence, EPC only 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. Such a correction is of a strictly declaratory nature and thus does not infringe the prohibition of extension under Article 123(2) EPC.
2. Evidence of what was common general knowledge on the date of filing may be furnished in connection with an admissible request for correction in any suitable form.

The full text of the decision can be found here.

G 0007/95 - Fresh grounds for opposition - #29

Citation rank: 29
No. of citations: 128

G 7/95 (and G 1/95) are concerned with the expression "grounds for opposition" ("motifs d’opposition", "Einspruchsgründe") and its meaning in the context of Art. 100 EPC.

Art. 100 EPC specifies the grounds under which a European patent can be opposed, namely:

"Art. 100 EPC - Opposition may only be filed on the grounds that:
   (a) the subject-matter of the European patent is not patentable under Articles 52 to 57;
   (b) the European patent does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art;
   (c) the subject-matter of the European patent extends beyond the content of the application as filed, or, if the patent was granted on a divisional application or on a new application filed under Article 61, beyond the content of the earlier application as filed."

As background, G 10/91 held that, in principle, the Opposition Division shall examine only such grounds for opposition, which have been properly submitted and substantiated in the notice of opposition. Only exceptionally, the Opposition Division may consider other grounds ("fresh grounds") for opposition, which, prima facie, in whole or in part would seem to prejudice the maintenance of the European patent. Regarding the appeal proceedings, G 10/91 held that fresh grounds for opposition may be considered in appeal proceedings only with the approval of the patentee.

In the case underlying G 7/95, the opponent had initially attacked the patent only under inventive step. In appeal, the opponent-appellant then alleged lack of novelty over the closest prior art document previously used under inventive step.

The question thus arose whether an alleged lack of novelty is a "fresh ground" of opposition over the previously raised ground of lack of inventive step. If answered to the affirmative, a Board of Appeals could not examine the fresh ground without the consent of the proprietor (G 10/91). The answer is also not self-evident, because - after all - lack of novelty and lack of inventive step are both mentioned in the same paragraph/section of Art. 100, viz., Art. 100(a). Previous case law regarding that question had been divergent. The  corresponding question was thus referred to the Enlarged Board.

The Enlarged Board looked at the structure of Art. 100 (and of the related Art. 138 EPC). They stated that, while Art. 100(b) and (c) each related to a "single, separate and clearly delimited legal basis on which an opposition can be based" (4.2 of the resons), the same was not true for Art. 100(a). Art. 100(a). They stated:

4.3 Indeed, Article 100(a) EPC simply refers, apart from the general definition of patentable inventions according to Article 52(1) EPC, and the exceptions to patentability according to Article 53 EPC, to a number of definitions according to Articles 52(2) to (4) and 54 to 57 EPC, which specify "invention", "novelty", "inventive step" and "industrial application" which, when used together with Article 52(1) EPC, define specific requirements and therefore form separate grounds for opposition in the sense of separate legal objections or bases for opposition.

The ground of lack of novelty was thus seen as being separate and therefore "fresh" in view of the original ground of lack of inventive step. Therefore, following G 10/91, an appeal board could thus not examine this fresh ground as such.

However, the Enlarged Board observed that where is no novelty, there can also be no inventive step. Specifically, they stated:

7.2 Nevertheless, in a case such as that under consideration in the decision of referral in case G 7/95, if the closest prior art document destroys the novelty of the claimed subject- matter, such subject-matter obviously cannot involve an inventive step. Therefore, a finding of lack of novelty in such circumstances inevitably results in such subject-matter being unallowable on the ground of lack of inventive step.

Hence, although the ground of "lack of novelty" cannot be examined by a Board under that title, the Board can still use the same facts under the "lack of inventive step" title. 

The related G 1/95 was concerned with the question of whether the ground that claimed subject-matter is not an invention within the meaning of Article 52(1), (2) EPC is a "fresh ground" lack of novelty and inventive step. For the same reasons as G 7/95, the question was answered to the affirmative.

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Headnote:

In a case where a patent has been opposed under Article 100(a) EPC on the ground that the claims lack an inventive step in view of documents cited in the notice of opposition, the ground of lack of novelty based upon Articles 52(1) and 54 EPC is a fresh ground for opposition and accordingly may not be introduced into the appeal proceedings without the agreement of the patentee. However, the allegation that the claims lack novelty in view of the closest prior art document may be considered in the context of deciding upon the ground of lack of inventive step.

The order of the decision can be found here. The reasons are the ones of G 1/95, which can be found here.

Quotes from decisions citing G 7/95 can be found here.

T 0201/83 - Features taken from the examples / "Lead alloys" - #30

Citation rank: 30
No. of citations: 125

In T 201/83 the applicant requested an amendment, which limited an originally disclosed concentration range by replacing its lower boundary by a concentration value taken from an example. The Board had to decide whether this was allowable under Art. 123(2) EPC.

The amended claim read as follows: "Lead alloy comprising a small amount of magnesium and calcium, characterised in that the calcium content of the alloy is 690 to 900 ppm and the magnesium content 1 to 80 ppm".

The range of  l to 80 ppm for magnesium and the upper limit of 900 ppm calcium of the claimed alloy were originally disclosed as end-points of preferred ranges, the lower limit of 690 ppm calcium, however, was only disclosed in an example for a specific alloy (melt No. 8).

The Board observed that the basis for the suggested new lower limit was Melt No. 8. which contained 690 ppm calcium, but also 20 ppm magnesium and 0.39% tin. The question arose whether the calcium concentration could be taken from the example without also including the specific magnesium and tin concentrations in the amendment.

The Board analysed the effects of each of the alloy components and their interactions. The claimed lead alloys were useful as battery leads. In battery leads, small amounts of calcium are generally required, and small amounts of magnesium ameliorate certain problems (oxidation, corrosion of the lead) stemming from the added calcium. However, the two compounds serve different purposes; therefore an exact proportion between the two substances is not needed. Hence, the Board concluded that the connection between particular calcium and magnesium contents with regard to their effects were rather loose. The Board regarded them as design features that could be separately considered.

Specifically, they stated:

"This is rather like the choice of appropriate "resilient supports" for a device, wherein the applicant may, according to the Guidelines, restrict the claims to "helical springs" irrespective of the reasons for preference on the basis of drawings, where the same features were disclosed together with other features." (point 9 of the reasons)

The Board added, however, that this case was to be distinguished from other types of combination products where a particular choice of a limit for a parameter restricted the choice for another one:

"The invention is therefore different from other types of combination products where a particular choice of a limit for a parameter restricts the choice for another one, if substantially the same result is to be achieved. Had the choice of the concentration of one of these ingredients necessitated a particular kind of choice for the other, indicating a substantial degree of interdependence of quantitative values, the isolation of one value from the rest of the conditions could not have been readily envisaged." (point 6 of the reasons)

Given that there was only a loose connection between the concentrations of magnesium, calcium and tin in a lead alloys, and that the magnesium concentration could thus be independently chosen (within certain limits), isolation of the specific calcium content of melt No. 8 from the magnesium and tin content of that example was therefore held not to infringe Art. 123(2) EPC.

The Board thus remitted the case back to first instance with the order to examine the application on the basis of the amended claims

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Headnote:

An amendment of a concentration range in a claim for a mixture, such as an alloy, is allowable on the basis of a particular value described in a specific example, provided the skilled man could have readily recognised this value as not so closely associated with the other features of the example as to determine the effect of that embodiment of the invention as a whole in a unique manner and to a significant degree.

The full text of the decision can be accessed here.

Quotes from decisions citing T 201/83 can be found here.

T 0197/86 - Comparative tests must be specific / "Photographic couplers" - #31

Citation rank: 31
No. of citations: 124

T 197/86 looks at the nature of comparative tests, that is required to prove an alleged technical effect over the prior art.

In the underlying opposition case, the patent related to a photographic cyan-dye forming coupler. Claim 1 differed from known photographic couplers by having a paracyano group on its phenyl nucleus. The patentee claimed that the paracyano group on the phenyl nucleus led to the technical effect that the absoption half bandwidths (HBW) is narrower as compared with the closest prior art (document "(d)").

The Board, when assessing inventive step, made reference to the "Spiro compounds" decision (T 181/82) which held that, where comparative tests are submitted as evidence of an unexpected effect, there must be the closest possible structural approximation in a comparable type of use to the subject-matter claimed (T 197/86, r. 4).

In the case at hand, the closest prior art was a "coupler No. 9" disclosed in document (d). The patentee provided experimental data showing a narrower absorption half width (the alleged technical effect) of an example disclosed in the patent in suit versus coupler No. 9 of document (d). The opponent-appellant argued that the this experimental data was insufficient, in that the chemical structure of the patent's example differed from coupler No. 9 not only in terms of the paracyano group on the phenyl nucleus, but had also other structural differences. The alleged technical effect could thus not be attributed to the distinguishing feature (i.e., the paracyano group on its phenyl nucleus) of the claim only.

The Board seems to have left open the question of whether they followed that argument or whether they considered that evidence sufficient (r. 6.1.1).

In any event, the patentee had provided additional experimental data comparing the absorption half width of couplers which were not disclosed in the prior art, but differing from the examples in the patent in suit in just the distinguishing paracyano group on its phenyl nucleus. These data clearly provided evidence that the observed technical effect is due to the distinguishing feature only.

In this context, the Board stated:

"6.1.2 The Respondent has, however, now strengthened the support for his claim by voluntarily providing comparisons with variants which, although not expressly belonging to the prior art, differ from the claimed tested couplers only in respect of the paracyano group. This is an extra contribution to the clarification of the issues, which went beyond the obligations imposed by T 181/82 and could be seen as giving support to a claim with broadened definitions of the ballast group, leaving the cyano group as the only characterising, i.e. distinguishing feature over the prior art.

6.1.3 On the basis of these voluntary comparisons the Board is inclined to take the Respondent's view because the advantageous effect of the para-cyano group is clearly shown. According to an earlier decision (T 35/85, 16.12.86) the onus of proof may be discharged by "submitting comparative tests with newly prepared variants of the closest state of the art, making identical the features common with the invention in order to have a variant lying closer to the invention so that the advantageous effect attributable to the distinguishing features of the invention is thereby more clearly demonstrated".  In the present case the Board has concluded that in the case where comparative tests are chosen to demonstrate an inventive step with an improved effect over a claimed area, the nature of the comparison with the closest state of the art must be such that the effect is convincingly shown to have its origin in the distinguishing feature of the invention. For this purpose it may be necessary to modify the elements of comparison so that they differ only by such a distinguishing feature (supplementing T 181/82, "Spiro Compounds", OJ EPO 1984, 401)." (emphasis added)

Since the patentee in the case at hand supplied such comparison with compounds differing from the claimed compounds only with respect to the differentiating feature of the claim, the Board was satisfied that the claimed couplers were inventive.

The patent was hence upheld.

Remark: I note that the Headnote makes a weaker statement than what is said in point 6.1.3 of the reasons ("the nature of the comparison with the closest state of the art must be such that" vs. "may be necessary to"). As I mentioned above, point 6.1.1 of the reasons may be understood as indicating that the comparison of an example from the patent in suit with the original closest example from the prior art may have already sufficed to release the patentee from its burden of proof. Nevertheless, T 197/86 is sometimes cited for holding that the comparison "must" be such that the effect is convincingly shown to have its origin in the distinguishing feature of the invention (see, e.g., T 0197/86). This may be a too strong a statement.

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Headnote:

In the case where comparative tests are chosen to demonstrate an inventive step with an improved effect over a claimed area, the nature of the comparison with the closest state of the art must be such that the effect is convincingly shown to have its origin in the distinguishing feature of the invention. For this purpose it may be necessary to modify the elements of comparison so that they differ only by such a distinguishing feature (supplementing T 181/82, "Spiro compounds", OJ EPO 1984, 401) (cf. point 6.1.3 of the Reasons).

 The full text of the decision can be found here.

Quotes from decisions citing T 197/86 can be found here.

T 0012/81 - Novelty of chemical compounds - #32

Citation rank: 32
No. of citations: 121

T 12/81 is concerned with the concept of novelty of chemical compounds, more specifically with the different manners in which chemical compounds can be disclosed in the prior art. The decision has been referred to as "the leading decision on novelty of chemical compounds" (T 132/92, r. 4.3).

T 12/81 is being cited for holding two things:

Firstly: Disclosure in a cited document of the starting substance and the reaction process also discloses the end product (point 13 of the reasons).

And secondly: Selection from two lists establishes novelty (also point 13 of the reasons).

In the underlying examination case, the applicant claimed a specific diastereomer, namely the threo-form of 1-(4-chlorophenoxy)-1-(1-imidazolyl)-3,3-dimethyl-2-butanol, which is the product of a stereo-specific hydrogenation of 1-(4-chloro-phenoxy)-1-(imidazol-1-yl)-3,3-dimethylbutan-2-one.

The Examining Division refused the application for lack of novelty over German patent application DE-A 2 333 354, which disclosed five alternative hydrogenation processes, and a list of 20 possible starting materials, one of which was 1-(4-chloro-phenoxy)-1-(imidazol-1-yl)-3,3-dimethylbutan-2-one). The applicant appealed against the decision to refuse.

The Board, upon reviewing the appealed decision, firstly observed that the novelty requirement served the purpose of preventing that the state of the art is patented again. They remarked that there are different manners of claiming and disclosing chemical compounds. One manner is by describing the compound in terms of its chemical structure and/or formula. Another way is to define the compound through the process of its manufacture (product-by-process definition).

Regarding the question of novelty of the claimed compound over DE-A 2 333 354, the Board considered that a chemical entity, which is disclosed in a prior art document through its starting material and the process of manufacture, does form part of the state of the art:

"... the disclosure by description in a cited document of the starting substance as well as the reaction process is always prejudicial to novelty because those data unalterably establish the end product." (point 13 of the reasons)

In the case at hand, where the prior art document disclosed a list of 20 possible starting materials and 5 alternative hydrogenation processes, the applicant argued that two selections had to be made to arrive at the claimed compound, namely one selection from the list of 20 starting materials and a further selection from the five alternative processes. The applicant argued that the claimed compound was therefore new.

The Board did not agree. While it conceded that if, in order to obtain a claimed compound, two starting materials have to be selected from two lists of some length, then the substance resulting from the reaction of the specific pair from the two lists can be regarded as new. However, the Board found that the case at hand was different in that it only required selection of a single starting material from one list. The fact that also a hydrogenation process had to be selected from five alternative processes disclosed, in order to arrive at the claimed compound, was considered not to be comparable with the selection of a second starting material (point 14.3 of the reasons).

Hence, the claimed compound was regarded disclosed in the prior art document by disclosure of the specific starting material and the specific process yielding that compound, and the claims therefore lacked novelty.

The appeal was hence dismissed.

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Headnote:

1. In the case of one of a number of chemical substances described by its structural formula in a prior publication, that substance's particular stereospecific configuration (threo form) - though not explicitly mentioned - is anticipated if it proves to be the inevitable but undetected result of one of a number of processes adequately described in the prior publication by indication of the starting compound and the process. In such cases, novelty by selection cannot be claimed, since none of the possible combinations of all the listed starting compounds and process variants introduce a new element - indispensable for substance selection - that would result in a true and not just "identical" modification of the starting substances.

2. [...]

The full text of the decision can be accessed here.

Quotes from (10 random) decisions citing T 12/81 can be found here.

T 0331/87 - Removal of a feature / "Three-point test" (now obsolete) - #33

Citation rank: 33
No. of citations: 117

T 331/87 is concerned with the conditions under which it is permissible under Art. 123(2) to remove a feature from a claim, where feature was initially present in that claim.

T 331/87 holds that the replacement or removal of a feature from a claim may not violate Art. 123(2) if the skilled person would directly and unambiguously recognise that:

1. the feature was not explained as essential in the disclosure;
2. 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
3. the replacement or removal requires no real modification of other features to compensate for the change.

These criteria for assessing the allowablility of the removal of an originally included feature from a claim is also referred to as the "three-point test" or "essentiality test".

The three-point test is still included in the EPO Guidelines as we speak (chapter H-V, 3.1, 2017 edition). However, recent decisions of the Boards of Appeal (in particular, T 1852/13, points 2.2.3 - 2.2.8) found that the three-point test should no longer be applied, because the only valid criterion is and remains the "Gold Standard", i.e., the criterion of "direct and unambiguous" derivability of the subject matter of the amended claim from the original disclosure (G 3/98). Also chapter II.E.1.2.4 of the EPO Case Law Book (2016 edition) is critical with respect to the the three-point test (and generally with respect to "tests" for the assessment of Art. 123(2) and 76(1) issues).

In summary, although T 331/87 ranks #33 on the list of the most-cited Boards of Appeal decisions ever, and is cited in the 2017 version of the EPO Guidelines, T 331/87 should be applied with caution.

Update: In the 2018 Guidelines, part H-V, 3.1 is re-formulated. It no longer states "The replacement or removal of a feature from a claim does not violate Art. 123(2) if the skilled person would directly and unambiguously recognise that: ...". It is now formulated in the negative: "If the amendment by replacing or removing a feature from a claim fails to pass the following test by at least one criterion, it necessarily contravenes the requirements of Art. 123(2): ...". Click here for the pre-published part H-V, 3.1 of the 2018 Guidelines (probably only a temporary link).

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Headnote:

The replacement or removal of a feature from a claim may not violate Article 123(2) EPC provided the skilled person would directly and unambiguously recognise that (1) the feature was not explained as essential in the disclosure, (2) it is not, as such, indispensable for the function of the invention in the light of the technical problem it serves to solve, and (3) the replacement or removal requires no real modification of other features to compensate for the change (cf. point 6 of the Reasons; following Decision T 260/85, "Coaxial connector/AMP" OJ EPO 1989, 105).

The full text of the decision can be found here.

Quotes from decisions citing T 331/87 can be found here.