Key points
- The Board, in the headnote: “Other than for the purposes envisaged in G 1/93, "technical contribution" is of no relevance when deciding on the allowability of amendments under Article 123(2) EPC. Instead, the gold standard set out in G 2/10 is the only criterion that has to be applied.”
- The headnote can be found in the PDF file of the decision (at the time of writing the present post).
- In the present decision, Board 3.2.06 takes issue with headnote 2 of T 1621/16 of Board 3.3.06 which stated that: “A claim amended on the basis of multiple selections from lists of converging alternatives might be considered to meet the requirements of Article 123(2) EPC if: the subject-matter resulting from the multiple selections is not associated with an undisclosed technical contribution, and the application as filed includes a pointer to the combination of features resulting from the multiple selections.” (emphasis added).
- G 1/93, hn.2 stated that “A feature which has not been disclosed in the application as filed but which has been added to the application during examination and which, without providing a technical contribution to the subject-matter of the claimed invention, merely limits the protection conferred by the patent as granted by excluding protection for part of the subject-matter of the claimed invention as covered by the application as filed, is not to be considered as subject-matter which extends beyond the content of the application as filed within the meaning of Article 123(2) EPC.”
- This headnote of G1/93 is somewhat problematic as was recently analyzed by T 0768/20 ("It is not entirely clear what kind of feature the Enlarged Board had in mind [in G 1/93]"). Possibly the headnote concerns undisclosed disclaimers only and was superseded by G2/03. However, T0768/20 stopped short of saying so.
- The present Board: “This is confirmed in G 2/10 with the following unequivocal statement (following an extensive analysis of G 1/93): "It is, however, evident ... that by introducing the "technical contribution" criterion the Enlarged Board [in G1/93] did not intend to amend the definition concerning when an amendment is allowable under Article 123(2) EPC generally, but that it only sought a way of avoiding the potentially fatal consequences of the patentee being caught in the "inescapable trap" between the requirements of paragraphs (2) and (3) of Article 123 EPC". ”
- The present Board: “Paraphrasing the Enlarged Board [in G 2/10], one would then inevitably conclude that the aspect of "technical contribution" is not something to be taken into account when assessing whether the requirement of Article 123(2) EPC was fulfilled.”
- The rest of the case is illustrative but fact-specific (as always with the gold standard test). The gist is as follows: “Thus, regardless of the fact that both solutions [presented in the application as filed] seem to reduce the usage of materials, and in that sense can be seen to have a common disclosed effect (arguably even a common disclosed "technical contribution", in the sense of T 1621/16, Reasons 1.7.3 and 1.8.6), when applying the gold standard of G 2/10 the Board concludes that there is no direct and unambiguous disclosure of a core with the specific structure defined on page 24 in combination with the remaining features (particularly with the combination of parameter values defined in originally filed claims 1, 4 and 7) as defined in claim 1 of the main request.” “since each of these lists of [parameter ] values [corresponding to claims 1, 4 and 7] contains values applicable only "in various embodiments" (i.e. as opposed to all embodiments), the absorbent inserts of the invention do not necessarily have an absorbent capacity, a unitized insert absorbent capacity or an absorbent mass falling within the values described therein”
- So the application did not say that all embodiments had the absorbent mass of claim 4, and also did not say for the specific embodiment of page 24 that said embodiment had an absorbent mass in the range of claim 4; finally, the core structure of page 24 was not the only core structure being discussed.
Link to the decision after the jump, as well as an extract of the decision.
source http://justpatentlaw.blogspot.com/2022/02/t-193717-technical-contribution-g193.html
