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.