Claims amendments before the EPO. Questions and answers

14 April 2021

We highlight the most relevant key points that regulate claims amendments before the EPO, a complex and fundamental issue in order to obtain the grant of a European patent.

14 April 2021

Why amending the claims?

The main reasons for amending claims are usually the following:

– To meet the requirements of novelty and inventive step. In the search carried out by the EPO, documents may be found, not known to the applicant, which describe or render obvious some of the claims. It may be necessary to amend or add some features to make the claims not anticipated by those documents and thus make the claims comply with the requirements of novelty and inventive step vis-à-vis those documents.
– To better explain/define the claims and thus resolve any clarity objections that the EPO may have raised to during processing.

When claims can be amended during prosecution?

In the case of a direct European patent application (non-PCT) no claim amendments can be made before receiving the EPO search report (with the accompanying written opinion). In response to the Search Report and the written opinion, the applicant may amend the claims before the relevant due date (6 months after publication of the Search Report).

After this first chance of amending the claims, amendments can only be made if the EPO examiners in charge of the examination allow it (if they decide not to allow the amendments, the examiners should justify said decision). In practice, amendments are usually allowed if they are aimed at overcoming objections raised by the EPO examiners during examination.

For European applications from a PCT application (so-called Euro-PCT), amendments can be made at European phase entry, in response to objections raised during PCT prosecution or in response to the EPO supplementary search report (if any) and, later, only if allowed by the examiners (under the same conditions as above).

What are the fundamental requirements for amendments to be accepted?

The fundamental requirement is given by Article 123 of the European Patent Convention (EPC) which states, in paragraph 2:

“The European patent application [pending] or European patent [granted] may not be amended in such a way as to contain subject matter which extends beyond the content of the application as filed”.

The content of the application includes the description, claims and figures originally filed, but does not include either the abstract of the application or the priority application (if any).

In other words, amendments can only be made on the basis of the description, claims or figures originally filed, but nothing new can be added (however important and fundamental it may be to the invention). It is therefore very important to draft the patent text from the beginning as clear, accurate and complete as possible because, if some important point is missing or not well defined, it cannot be added or better defined afterwards (if that implies an addition of subject matter).

The main reason for this requirement is that it would not be fair to other parties if, by means of an amendment after the filing date, content is introduced into the patent that was not already included in what was originally filed, since this new content would have the same effective date as the rest of the patent, i.e. the filing date of the patent.

The addition of subject matter that extends beyond the original content may be caused not only by an amendment involving the addition of a feature, but also by the replacement of one feature by another or even by the removal of a feature (as this removal may make the content presented after the amendment broader than the original by having fewer features, i.e. fewer constraints).

To fulfil this requirement (that an amendment does not result in an extension beyond the original content), it is not essential that the subject matter on which the amendment is based is explicitly disclosed in the original content (it may be implicitly disclosed) or that it is literally stated in the original content; but it is essential that the amendment is directly and unambiguously derivable from the original content of the patent application for a person skilled in the art (taking also into account the features that are implicitly described in the original content for a person skilled in the art).

For the amendment to be considered allowable, it is not enough that the amendment is obvious or self-evident (from what is disclosed in the originally filed content), but it is required that the amendment is unambiguously derivable from the original content, which is a much more limiting condition.
If the amendment involves the combination of features found in the original content as part of different independent embodiments of the proposed invention, it would also not be allowable unless such a combination is presented (or directly and unambiguously derivable) in the original content.

Generally speaking, it can be said that in order to judge this requirement (that an amendment does not imply an extension beyond the original content), the EPO applies very strict criteria and requires that the non-addition of subject matter (or in other words, the support in the original content) is proven clearly and beyond any doubt.

Can amendments be made after the patent has been granted?

Once the patent is granted it can be amended either by a limitation procedure (filed by the patent owner) or during an opposition against the grant of the patent (filed, by a party other than the owner).

In the case of post-grant amendments, in addition to what is stated in the previous section (Article 123(2)), the requirement of Article 123 paragraph 3 (123(3)) of the EPC must be fulfilled; this article reads:

“The [granted] European patent cannot be amended in such a way as to extend the protection it confers”.

In other words, no amendments may be made that would extend the protection initially granted. Simplifying, this paragraph 3 mainly means that claims may not be amended beyond the content of the granted claims. If in Article 123(2) the limit for amendments was the originally filed content, here the limit is given by the granted claims.

The main reason for this requirement is that it would not be fair to other parties if after the grant (even many months later, as an opposition can take years to finalise), the scope of protection granted by the patent is extended (e.g. to cover products that were not protected by the initially granted patent). As this would create significant legal uncertainty for other parties (other companies) who would not know for sure how far could be the protection provided by the granted patent, as it could be extended afterwards (i.e. they would not know for sure when they would infringe the patent and when they would not).

A so-called conflict between the requirements of Articles 123(2) and 123(3) may arise. This conflict consists of the following: It may happen that, during examination, the addition of a feature is allowed and during opposition is considered to be not allowable by Article 123(2), i.e. in opposition, it is considered that there has been an addition of subject matter with respect to the original content of the patent application; this implies that such an added feature would have to be removed and if the feature is not removed, the patent would be revoked in opposition for not complying with Article 123(2). However, removing this feature would result in an extension of the protection conferred, contrary to Article 123(3) and therefore, if the feature is removed, the patent would be revoked in opposition for not complying with Article 123(3). Consequently, due to having allowed the addition of such a feature during examination, the patent will be revoked in opposition no matter what is done.

This is another reason why the EPO examiners, during prosecution, are very strict in the application of Article 123(2) for allowing amendments.

In summary, the regulation of amendments before the EPO contains very delicate and relevant aspects, a complex and fundamental issue that must be taken into account in order to obtain the grant of a European patent.

5/5 - (5 votes)

Manuel Pérez

Telecommunications Engineer.Patents Department.Telecommunications and software patents area director.

Comentarios

Leave a Reply

Your email address will not be published. Required fields are marked *

Responsable del tratamiento: HERRERO & ASOCIADOS, S.L.

Finalidad del tratamiento: Publicar su comentario sobre la noticia indicada.

Derechos de los interesados: Puede ejercer los derechos de acceso, rectificación, supresión, oposición, portabilidad y limitación del tratamiento, mediante un escrito, acompañado de copia de documento que le identifique dirigiéndose al correo dpo@herrero.es.

Para más información visita nuestra Política de Privacidad.

*Los campos marcados con el asterisco son obligatorios. En caso de no cumplimentarlos no podremos contestar tu consulta.

No Comments