Key points
- "In the current case, the application [as originally filed] was drafted to provide a large reservoir of options and alternatives to be selected and combined to create a vast number of embodiments."
- If the Board includes such a remark in the decision in the opposition case, the outcome under Art. 123(2) EPC becomes easy to predict.
- Still, "The assessment of whether this standard is complied with is very case specific. It requires taking into account the teaching of the application as filed as a whole, avoiding artificial semantic constructions. Factors which may play a role in the assessment are, inter-alia, the number of alternatives disclosed in the application; the length, convergence and any preference in the lists of enumerated features; and the presence of examples pointing to a combination of features. For instance, if the values in a number of examples are clustered within specific ranges, this may provide a pointer to those ranges."
- " the mere fact that features are described in terms of lists of more or less converging alternatives does not give the proprietor carte blanche to freely combine features selected from a first list with features selected from a second list disclosed in the application as filed. Any such amendment will only be allowable under Article 123(2) EPC if it complies with the gold standard."
- "Decision T 1621/16 does not provide for an exception to this rule. It requires, in fact, that a claim amended on the basis of multiple selections from lists of converging alternatives may only be considered to meet the requirements of Article 123(2) EPC if the application as filed includes a pointer to the combination of features resulting from the multiple selections".
- Turning to the facts of the case: "The application describes a clinical study monitoring the concentration of HMOs in human milk during lactation. The results show that the concentrations of HMOs decrease over time. However, the application was drafted to go far beyond this finding and to encompass age-tailored nutritional systems which can satisfy any foreseeable evolving nutritional need for HMOs, not only their decrease over time."
- " In view of the very broad teaching of the application [] as filed and the vast number of alternative options disclosed in the application, the current case cannot be compared to T 350/18."
EPO
The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.
source http://justpatentlaw.blogspot.com/2023/08/t-113321-drafted-to-provide-large.html
