Does the requirement for a "technical contribution" in a novel selection survive? (if selecting from convergent lists) (T 1621/16)

The EPO has famously strict requirements with respect to support for amendments. An important principle in the prosecution of patent applications is that any amendments the applicant makes to the application must have basis or support in the application as filed. The EPO is particularly strict with regards to amendments based on the combination of features from different parts of a patent specification. A recently published decision from the Boards of Appeal (T 1621/16) clarified the criteria for assessing whether a selection from multiple “convergent lists” (i.e. lists with features of increasing preference) is supported. 

The Board of Appeal found that the selection from convergent lists is different in principle from a selection from a normal, non-convergent lists. However, to have basis in the application as filed, the Board reasoned that the selection from multiple convergent lists must not be identified with a previously undisclosed technical feature and must be supported by a pointer elsewhere in the specification. Importantly, basis and novelty are inextricably linked. In particular, the same test for "disclosure" is used. Therefore, if applied by other Boards of Appeal, this decision also has implications for the assessment of novelty of selection inventions from multiple convergent lists.

Legal Background – Selection from lists

At the EPO, a patent application or patent may not be amended to introduce subject-matter that was not disclosed in the application as filed (Article 123(2) EPC). The purpose of this provision is to prevent an applicant from claiming more than they originally had possession of at the filing date. The EPO’s support requirements are stricter that than that of USPTO. The EPO particularly has a narrow understanding of what can be considered as “disclosed in the application as filed”, at least compared to the USPTO. One way in which the EPO’s strict understanding of disclosure manifests is in the EPO’s criteria for allowing amendments based on the selection of features from multiple lists.

An application may include multiple lists of different features of an invention. Selection of a feature from a single list is considered to have basis. However, at the EPO, it is not permissible to select and combine features from multiple lists, unless the combination is specifically disclosed elsewhere in the specification. The case law of the Boards of Appeal on whether this type of selection is allowable is consistent and well-established. Where the EPO case law is less consistent, is with regards to the selection from multiple so-called “convergent lists”. Convergent lists are those in which items of the list are singled out as being more or less preferred. Two examples of convergent list are:

White chocolate and kiwi cheesecake

1. A cheesecake, preferably a chocolate cheesecake, most preferably white chocolate cheesecake.
2. A cheesecake comprising fruit, preferably green fruit, most preferably kiwi.

As with the selection from a single non-convergent list, an amendment based on the selection of a single item from a convergent list, e.g. "chocolate cheesecake" would have basis. But what if you select and combine items from 2 convergent lists? You may wish, for example, to select and combine options with different preference ratings from a pair of convergent lists, e.g. to claim white chocolate cheesecake comprising green fruit. To date, the case law on whether such selections are permissible has not been consistent (see T 2273/10, T 2237/10).

Convergent versus non-convergent lists

The recently published appeal decision T 1621/16 concerned Procter & Gamble's patent EP 2264138. The patent related to washing up liquid. Claim 1 of the patent specified the composition of the washing up liquid. The main question on appeal was whether an amendment during prosecution which selected features from two convergent lists, has basis in the application as filed.

The Board of Appeal (3.3.06) first clarified that the selection from convergent lists was a different in principle to the selection from non-convergent lists. In non-convergent lists, the Board of Appeal reasoned, each element is distinct. The selection and combination of elements from two such lists therefore singles out a distinct combination from among several distinct alternatives.

By contrast, in a converging list, each progressively narrower element falls under the scope of the proceeding elements. For example, white chocolate cheesecake is a subset of chocolate cheesecake, which is a subset of cheesecake. Consequently, each element of a convergent list does not represent a distinct feature. Instead the elements represent more-or-less restricted versions of the same feature. The Board of Appeal thus reasoned that the combination of elements from multiple convergent lists did not represent an arbitrary selection of distinct elements.

The Board of Appeal in T 1621/16 therefore appeared to be heading in the direction of a more lenient approach to the selection from multiple convergent lists compared to the selection from non-convergent lists. However, the Board of Appeal emphasised that their reasoning did not mean that selections from multiple converging lists will always have basis (r. 1.7.3). The Board of Appeal instead considered the selection from non-convergent lists as analogous to another form of selection from lists, the deletion of an element or elements from a list ("shrinking lists").

What does shrinking lists mean?

A specification may include two lists of features of a chocolate and fruit cheesecake, such as:

1. ...wherein the chocolate is dark, milk, white or orange chocolate.  
2. ...wherein the fruit is grape, apple, lime or starfruit.

According to established case law, the deletion of, for example, milk chocolate and lime cheesecake from these lists would not represent added matter, provided that two conditions are satisfied. First, the deletion of the elements did not single out a previously undisclosed combination of elements. Second, shrinking of the lists should not lead to the definition of a previously undisclosed invention, i.e. a combination having a previously undisclosed technical effect (Case Law of the Board of Appeal, II.E.1.6.3).

The criteria for selecting from converging lists

The Board of Appeal reasoned that, if selecting from convergent lists was equivalent to shrinking lists, the same criteria should be applied. Thus, the selection from a convergent list should also not single out a previously undisclosed combination of elements, and should not be associated with a previously undisclosed technical effect. 

If, for example, the selection of a white chocolate and green fruit cheesecake was identified with a previously unidentified technical effect (e.g. resistance of the cheesecake to wasps at a picnic), the selection would not have basis. Furthermore, if there was no pointer anywhere else in the specification to the combination of white chocolate with green fruit in a cheesecake, an amendment to white chocolate and green fruit cheesecake would also lack basis. In the case in question (relating to the less-appetising field of washing up liquid), the Board of Appeal found that both of these criteria were satisfied. The amendment was therefore found to have basis in the application as filed. 

The requirement for a "technical contribution" of selection invention survives? 

The principles of basis and novelty are inextricably linked. The test for novelty and added matter apply the same Gold Standard test that a disclosure must be clearly and unambiguously derivable (Case Law of the Board of Appeal, II.E.1.2.1). The recent Board of Appeal decision on the selection from convergent lists therefore has implications for the novelty of inventions in view of prior art disclosing converging lists. Applying the Board of Appeal's reasoning in T 1621/16, the selection of multiple features from converging lists in the prior art would be novel if the selection was associated with a previously undisclosed technical feature. The question remains whether the identification of a previously undisclosed technical feature of the selection would also be necessary for novelty. 

The novelty requirement that a selection invention must relate to a "technical contribution" has otherwise fallen out of favour with the Boards of Appeal. Such a requirement is now broadly considered to be more properly associated with an assessment of inventive step rather than novelty. There have been recent calls to refer the issue of whether the requirement is necessary to the Enlarged Board of Appeal (EBA). It will therefore be interesting to see whether the reasoning of T 1621/16 is applied by other Boards. If nothing else, the case is a reminder that the Boards of Appeal may not yet have reached a consensus on the appropriate criteria for assessing the novelty of selection inventions.