Posted on June 14, 2024
There are many similarities between European Patent Office (EPO) practice and practice in other jurisdictions. Claims have to be novel and inventive, and must be enabled across the whole scope of the claim. Attorneys have to argue the case with Patent Office examiners in order to get a patent granted. It is possible for third parties to file observations against a patent application and to try to revoke a granted patent.
There are, however, many subtle differences between EPO practice and practice elsewhere, in particular the US.
Grace period
There is no grace period at the EPO, although there are provisions that discount disclosures that were an evident abuse, such as certain disclosures that amount to malicious, unauthorised breaches of confidence.
Added subject matter
The EPO is (in)famously strict in deciding whether or not an amendment has basis in an application as filed. For conventional European applications that are not derived from PCT applications, the application as filed is the European application as filed. If a European application is derived from a PCT application, then the application as filed is the PCT application as filed.
In order for an amendment to be allowable at the EPO, the subject matter of the amendment needs to be directly and unambiguously derivable from the application as filed. On the other hand, if the subject matter is not directly and unambiguously derivable from the application as filed, then the amendment is not allowable. While there is no requirement for the wording of an amendment to be present verbatim in the application as filed, it is extremely beneficial if it is. In this connection, it is preferable for the application as filed (and that may be the PCT application as filed) to contain claims and/or statements of invention containing claim-like language for all of the preferred features of the invention.
A key to avoiding added subject matter objections is to make as few amendments as possible, avoiding unnecessary amendments that may be made, for example, to “tidy-up” claim language. Redrafting of claim language for non-substantive reasons should usually be avoided if at all possible.
The EPO is also very strict about assessing basis when the amendment involves taking features from the specific examples. The EPO will typically only allow a feature to be extracted in isolation from other technical features described in an example if the feature is not related or inextricably linked to the other features of that example AND the overall disclosure justifies the generalising of the feature and introduction into the claim.
When considering whether an amendment adds subject matter, it is worth bearing in mind one of the EPO’s oft-quoted added subject matter objections:
“The application as filed is not a reservoir of features from which the applicant can pick and choose when making amendments.”
The dreaded A123(2)/123(3) trap
All claim amendments have to have basis in the application as filed (A123(2) EPC). Furthermore, post-grant amendments cannot extend the protection that a patent confers (A123(3) EPC). Therefore, it is not possible to overcome an added subject matter objection post-grant by making an amendment that extends the protection that a patent confers. This is sometimes referred to as the “Article 123(2)/123(3) trap”, which can pose a problem in unlikely places.
For example, it is not unknown for EPO examiners to suggest amendments to the claims that would lead to a granted patent. While this can be incredibly helpful to an applicant, it is important to ensure that the suggested amendment (or indeed any amendment) has basis in the application as filed or at the very least, that the claim can be narrowed further so that it has basis in the application as filed. If, during post-grant proceedings, such as opposition proceedings, the EPO objects to a claim on the basis that the claim does not have basis in the application as filed, then it would not be possible to amend the claim post-grant to address that objection if the amendment extends the protection that the patent confers. For example, if the EPO has objected post-grant to the addition of certain wording to an independent claim during prosecution, it may not be possible to remove that wording post-grant because removal of that wording would increase the scope of the claim, and that is not permissible post-grant. It may be possible to narrow the claim in order to overcome the added subject matter objection, but this will depend on the facts of the case.
It is therefore vital for an independent claim to have basis in the application as filed or at the very least for the independent claim to be capable of being narrowed so that it has basis in the application as filed. It is therefore important to not just accept the amendment suggested by the Examiner during prosecution, and to consider whether or not the amendment does indeed have basis in the application as filed.
Validity of the priority claim
As mentioned above, there is no grace period at the EPO. Therefore, if there is a non-confidential disclosure of invention which is the subject matter of a European patent application after the priority application is filed, but before the European application is filed, then the priority claim of the European application needs to be valid in order to avoid the non-confidential disclosure being prior art against the European application.
Given that the validity of a priority claim of a European patent application or patent to an earlier application is assessed using the same test as for added subject matter, it is also highly beneficial for the priority application to contain claims and/or statements of invention or clauses containing claim-like language which includes all of the preferred features of the invention. If the priority claim is important, then we should not rely upon skimpy provisional applications in which the language of the claims has not been considered. It is therefore highly desirable for attorneys to consider the scope of the invention before the priority application is filed. This is particularly important because if the priority claim is invalid, the filing date of the claim will be the filing date of the European patent application (or PCT application if the European application is derived from a PCT application). Given that there is no grace period at the EPO, any non-confidential disclosure in the priority year could fatally harm your European patent if the priority claim is invalid.
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You can read Part 2: Practice at the EPO vs elsewhere here.
You can read Part 3: Practice at the EPO vs elsewhere here.
