|The perfect venue for the new|
Guidelines launch party
“may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed” (Art. 123(2) EPC).
“When assessing the conformity of the amended claims to the requirements of Art. 123(2), the focus should be placed on what is really disclosed to the skilled person by the documents as filed as directed to a technical audience. In particular, the examiner should avoid disproportionally focusing on the structure of the claims as filed to the detriment of the subject-matter that the skilled person would directly and unambiguously derive from the application as a whole.”
|Is it so difficult for Examiners|
to change their minds? Some
higher life forms do this
all the time ...
This paragraph is considered to be a response by the EPO to the common view among patent practitioners that the EPO’s stance on added subject matter can be too strict [readers may recall mention by Christopher Rennie-Smith, here, that some users of the system have noted the Boards of Appeals' "bewildering or incomprehensible attitude" towards added subject matter], with the result that applicants can be overly restricted in the amendments that they are allowed to make. The introduction of this paragraph will be interpreted by many as an attempt by the EPO to redress the balance [but how will others interpret it, Merpel wonders]. In particular, the paragraph relates to the situation in which the claims are amended by the introduction of subject matter that was only disclosed in the description of the application as filed. Examiners are instructed to consider the disclosure of the application as a whole, as read by a person skilled in the art, rather than focusing too strongly on the structure of the claims as filed.