Key points
- The Board: “It is not entirely clear what kind of feature the Enlarged Board had in mind [in G 1/93] when referring to a feature that "merely excludes protection for part of the subject-matter of the claimed invention as covered by the application as filed" without "providing a technical contribution to the subject-matter of the claimed invention".”
- I'm glad this Board dares to say this.
- The Board, after an extensive review of G 1/93, G2/03, G2/10 and G1/16, summarizes it as follows: “the jurisprudence of the Enlarged Board of Appeal, as understood by this board, specifies that the "gold standard" developed in opinion G 3/89 and decision G 11/91 and reaffirmed by decision G 2/10 is the general rule to be used when examining the compliance of amendments with Article 123(2) EPC. Undisclosed disclaimers constitute an exception to this rule. They are governed by the rules laid down in decision G 1/03. Point 2 of the order of decision G 1/93 (and point 16 of the reasons for the decision) also appears to concern undisclosed disclaimers, which decision G 1/03 examined in greater detail. If there are features other than undisclosed disclaimers that, "without providing a technical contribution to the subject-matter of the claimed invention, merely exclude protection for part of the subject-matter of the claimed invention as covered by the application as filed", they would constitute a second exception to the general rule. To the best knowledge of this board, the jurisprudence of the Enlarged Board of Appeal does not provide for any further exception in the context of Article 123(2) EPC.”
- "in the eyes of the board, point 2 of the order of decision G 1/93 concerns undisclosed disclaimers as per decision G 1/03. "
- The Board nevertheless also applies G 1/93, hn.2, for the event that said headnote is not limited to undisclosed disclaimers, and after some further analysis of that headnote and of the amendment at issue, finds that: "It follows that the amendment does not qualify as an amendment as per point 2 of the order of decision G 1/93. Consequently, this exception to the gold standard does not apply and the allowability of the amendment under Article 123(2) EPC has to be examined using the gold standard."
T 0768/20 -
2.2 Exception to the "gold standard"?
The appellant's second line of reasoning involved
presenting the amendment in hand as being one to which the "gold standard" did not apply. Before this argument can be examined as to its merits, it is necessary to consider the development of the jurisprudence of the Enlarged Board of Appeal in respect of the allowability of amendments.
source http://justpatentlaw.blogspot.com/2022/01/t-076820-g-193-and-undisclosed.html
