14 Nov 2017

T 1775/14 - No consideration for US style drafting

Key points

  • For Article 123(2), the patentee argued that  " it should be taken into account that the patent in suit was based on US priority documents and on a US-PCT application so that, although the original set of claims was worded in accordance with American practice, the skilled person would understand that multiple dependency of the dependent claims was contemplated." 
  • The Board is not convinced. Because of G 2/10 " the question whether the amended claims are based on an application filed in the US or in Europe cannot play a role" .



T 1775/14 -  link

4.1 The appellants argued that the combination of features now being defined in claim 1 was derivable from the combination of claims 1, 7 (feature B)(i)), 8 (feature B)(ii)), 18 (feature C1)) and 19 (feature C2)) as originally filed.
4.1.1 However, each of original claims 7, 8, 18 and 19 was only dependent on original claim 1. Therefore, the combination of claims 1, 7, 8, 18 and 19 cannot be held to be directly and unambiguously derivable from the original set of claims. In particular, the original set of claims can neither provide a valid support for the combination of features B)(i) and B)(ii) nor of features C1) and C2). Nor can it provide a valid basis for the combination of all those features together.
4.1.2 In that respect, the appellants argued that it should be taken into account that the patent in suit was based on US priority documents and on a US-PCT application so that, although the original set of claims was worded in accordance with American practice, the skilled person would understand that multiple dependency of the dependent claims was contemplated.


However, for the assessment of Article 123(2) EPC, the question to be answered is whether or not the subject-matter of an amended claim extends beyond the content of the application as filed, i.e. whether after the amendment the skilled person is presented with new technical information (see G 2/10, OJ EPO 2012, 376, point 4.5.1 of the Reasons and Case Law, supra, II.E.1 and 1.2.1).
Therefore, the question whether the amended claims are based on an application filed in the US or in Europe cannot play a role. Besides, in the present case, there is no doubt that the combination of claims 7, 8, 18 and 19 provides new technical information as compared to the subject-matter of each of those claims on its own. For that reason, the appellants' argument did not convince.
4.1.3 Also, the wording of original claim 19 is not identical to feature C2) now present in claim 1 because its subject-matter is not limited to reaction products being "polyurethanes". Therefore, original claim 19 per se does not provide a valid support for the amended feature C2) now present in claim 1.
4.1.4 For those reasons, the appellants' arguments based on the claims only did not succeed.

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