Translation of "Unzulässige erweiterung" in English

Such an omission does not of course in itself constitute an inadmissible extension of subject-matter.

In a more recent decision of 25 July 2017 (X ZB 5/16 Phosphatidylcholin, not published at the date of the present decision), the Bundesgerichtshof, referring to decisions G 1/03 and G 2/10 without further qualification, held that the introduction of a feature according to which the claimed preparation may not contain a certain substance does not of itself automatically constitute an unacceptable extension (thereby diverging from Bundesgerichtshof judgment of 12 July 2011 X ZR 75/08, GRUR 2011, 1109 Reifenabdichtmittel).

This solution is characterised by a statement to be added to the description of the patent in suit to the effect that the undisclosed feature (which is maintained in the claim in order to avoid an extension of the protection conferred) represents an inadmissible extension from which no rights may be derived.

In the contested decision the Opposition Division identifies precisely this feature as an inadmissible extension which would lead, inter alia, to revocation of the patent.

By analogy with decision T 615/95, there would be added matter where the insertion of a disclaimer into a claim would result in singling out any hitherto not specifically mentioned or at least implicitly disclosed individual compound or group of compounds, or would lead to a particular meaning of the remaining claimed subject-matter which was not originally disclosed.

There was no doubt that the claims of the patent formed part of the disclosure for the purposes of assessing whether there was added matter.

This ground for revocation also applies if the inadmissible extension is based on a correction under Rule 88, second sentence, EPC.

Floyd LJ went on to consider whether the patent was nevertheless bad for added matter because it claimed a wider class of asymmetric PSBs than were disclosed in the application.

A requested amendment which represents an inadmissible extension within the meaning of Article 123(2) EPC cannot be allowed as a correction under Rule 88, second sentence, EPC.

The court held that an extension was inadmissible only if the elements added to the granted patent could not be derived by the skilled person (in this case, an engineer specialising in the design and manufacture of composite materials) directly or unambiguously from the patent application as a whole on the basis of the description, the claims and drawings and his/her common general knowledge.

The existing practice of the first instance departments of the EPO allows sequences of divisional applications and treats a divisional application (of first or further generation) comprising added subject-matter in its version as originally filed as a European patent application, which must however be amended in order to be allowed to proceed to grant.

However, that decision did not apply to the case at issue (T 942/01), which dealt with an unallowable extension only.

Moreover, some courts favour the application of the same disclosure standard for the assessment of novelty, added subject-matter and priority, whereas others seem to apply the test for novelty and added subject-matter only to a limited extent to priority.

The defendants, HTC, submitted that the claim as amended would be bad for added matter as an intermediate generalisation, if it was construed as IPCOM contended so multiple bit patterns were covered and so also were multiple access class bits.

It is contended that amending the description to refer to the French specification or to its contents or to state advantages of the present invention as compared with the invention described in the French specification would constitute an addition of "subject-matter" contrary to Article 123(2) EPC.

Hence, the group of combinations in claim 1 could not be considered as the result of a selection of three qualitatively equal elements from a list of forty-four qualitatively non-equal elements - for which selection there would be no hint in the application as filed and the claiming of which group therefore would have to be considered as adding matter.

As an aside, the Court observed that this reasoning also applied to the ground of revocation of subject-matter extending beyond the content of the application (inadmissible extension: cf. Federal Court of Justice of 17July 2012 – Polymer foam).

With regard to the discussion of weightier matters, such as questions of novelty, inventive step, unity or whether the amendment introduces added subject-matter, a fuller note of the matters discussed is made in the minutes.

In order to further explain why the deletion of a feature specification in the application that had, however, been contained in the priority document (so that the application constituted a generalisation) made the priority void, it was stated: Suppose the priority document were the application as filed; that would mean that the deletion of the specification would be considered added matter in violation of Article 123(2) EPC.

Citing EPO case law, the court set out in detail the principles (technical character, novelty, problem-solution approach to inventive step, added subject-matter) to be applied to Belgian parts of European patents.

The opponent, who generally desires revocation of the patent pure and simple, is invited to state his observations on a limited text, even if he has already let it be known that he does not object to the limitation as such, i.e. he does not see it as an inadmissible addition to the subject-matter.