No. of citations: 258
G 1/93 deals with the conflicting requirements of Art. 123(2) and (3), and with the harsh consequences that an undetected violation of Art. 123(2) during examination can have on the patentee.
Art. 123(2) holds that a patent application or patent may not be amended in such a way that it includes subject matter which goes beyond the content of the application as filed. Art. 123(3), on the other hand, holds that a patent may not be amended such that its scope of protection is extended.
In the underlying case, the applicant filed, upon prosecution, amended claims which included a limiting feature going beyond the content of the original application. The Examining Division failed to spot this. Hence a patent was granted despite a violation of Art. 123(2). The patent was opposed and the opponent raised, i.a., the ground of Art. 100(c) (extension of subject matter). The Opposition Division accepted that submission and revoked the patent. The proprietor appealed against that decision.
Upon appeal, the Technical Board considered the principal relationship between paragraphs 2 and 3 of Article 123 EPC. They noted that in such cases where an unallowed amendment is made in examination by introduction of an undisclosed limiting feature, but a patent was nevertheless granted on the amended claim, such limiting feature could in principle not be removed in opposition without violating Art. 123(3). The Technical Board found this situation somewhat unsatisfactory, because was a rather harsh consequence of an error, which was - after all - also not spotted by the Examining Division. The Board thus referred the following question to the Enlarged Board of Appeals:
"If a European patent as granted contains subject-matter which extends beyond the content of the application as filed and also limits the scope of protection conferred by the claims, is it possible during the opposition proceedings to maintain the patent in view of paragraphs 2 and 3 of Article 123 EPC?"The Enlarged Board looked a previous case law regarding this matter. They noted that insofar as in these cases the Boards of Appeal have found support in the original applications for replacing added undisclosed technical features by other features without violating Article 123(3) EPC, they seem to be uncontroversial. They also found that it was never disputed that an added undisclosed feature without any technical meaning may be deleted from a claim without violating Article 123(3) EPC. The situation addressed the referred question (where the added feature had technical meaning, i.e., a limiting character), however, was still not fully clarified by case law.
The Enlarged Board found that both Art. 123(2) and 123(3) have mandatory character and that paragraphs 2 and 3 of Article 123 EPC are mutually independent of each other. They stated:
"Thus, if a limiting feature is considered to fall under Article 123(2) EPC, it cannot be maintained in the patent in view of Article 100(c) EPC, nor can it be removed from the claims without violating Article 123(3) EPC. Only if the added feature can be replaced by another feature disclosed in the application as filed without violating Article 123(3) EPC, can the patent be maintained (in amended form). [...] In this sense, it must be admitted that Article 123(2) in combination with Article 123(3) EPC can operate rather harshly against an applicant, who runs the risk of being caught in an inescapable trap and losing everything by amending his application, even if the amendment is limiting the scope of protection." (point 14 of the reasons)In some cases, however, where the undisclosed feature (while having a limiting effect on the scope of the claim) makes no technical contribution to the invention, the Enlarged Board found that the limiting feature may remain in the claim without infringing Art. 123(3). They stated:
"If such added feature, although limiting the scope of protection conferred by the patent, has to be considered as providing a technical contribution to the subject-matter of the claimed invention, it would, in the view of the Enlarged Board, give an unwarranted advantage to the patentee contrary to the above purpose of Article 123(2) EPC. Consequently, such feature would constitute added subject-matter within the meaning of that provision. A typical example of this seems to be the case, where the limiting feature is creating an inventive selection not disclosed in the application as filed or otherwise derivable therefrom. If, on the other hand, the feature in question merely excludes protection for part of the subject- matter of the claimed invention as covered by the application as filed, the adding of such feature cannot reasonably be considered to give any unwarranted advantage to the applicant. Nor does it adversely affect the interests of third parties (cf. paragraph 12 above). In the view of the Enlarged Board, such feature is, on a proper interpretation of Article 123(2) EPC, therefore not to be considered as subject-matter extending beyond the content of the application as filed within the meaning of that provision. It follows that a patent containing such a feature in the claims can be maintained without violating Article 123(2) EPC or giving rise to a ground for opposition under Article 100(c) EPC. The feature being maintained in the claims, there can be no violation of Article 123(3) EPC either." (point 16 of the reasons)In other words, the Enlarged Board confirmed that an "inescapable trap" generally exists between Art. 123(2) and (3), but that in cases where the violating feature makes no technical contribution to the invention, an inescapable trap situation is not present.
Remark: G 1/93 in principle distinguishes between technical features, which make a technical contribution and those which do not. This concept has later been used by the Enlarged Board in G 1/03, G 2/03 when considering admissibility of undisclosed disclaimers (see here for a brief summary of G 2/03).
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Headnote:
1. If a European patent as granted contains subject-matter which extends beyond the content of the application as filed within the meaning of Article 123(2) EPC and which also limits the scope of protection conferred by the patent, such patent cannot be maintained in opposition proceedings unamended, because the ground for opposition under Article 100(c) EPC prejudices the maintenance of the patent. Nor can it be amended by deleting such limiting subject-matter from the claims, because such amendment would extend the protection conferred, which is prohibited by Article 123(3) EPC. Such a patent can, therefore, only be maintained if there is a basis in the application as filed for replacing such subject-matter without violating Article 123(3) EPC.
2. A feature which has not been disclosed in the application as filed but which has been added to the application during examination and which, without providing a technical contribution to the subject-matter of the claimed invention, merely limits the protection conferred by the patent as granted by excluding protection for part of the subject-matter of the claimed invention as covered by the application as filed, is not to be considered as subject-matter which extends beyond the content of the application as filed within the meaning of Article 123(2) EPC. The ground for opposition under Article 100(c) EPC therefore does not prejudice the maintenance of a European patent which includes such a feature.The full text of G 1/93 can be found here.
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