T 0046/15 - Indeed no more the essentiality test

Key points

• As a bit of housekeeping, this decision is still to be discussed.
• The Board (3.2.04) agrees (expressly) with T 1852/13 wherein the Board " even stated that the essentiality test as such could not replace the application of the gold standard, and that if in some cases it could give a useful indication, the gold standard was still the only relevant test" 
• Board 3.2.04 has said the same in T 1472/15 in [2.3]. 
• See also T 2095/12, [2.7] : " The Board concurs with the findings in recent decisions, cf. for example T 1852/13 [], that the "essentiality test" of T 331/87 may not always be suitably applicable. This in particular holds true in case of intermediate generalisations, cf. T 2311/10. Generally, the "essentiality test" is an aid that can in certain circumstances be used to assess the allowability of amendments. However, it cannot replace the need to answer the question what a skilled person derives directly and unambiguously from description, claims and drawings of an European patent application on the date of filing, the so-called "Gold Standard" (directly and unambiguously derivable), []." 

EPO T 0046/15 - link 

2.8.1 The essentiality test has been elaborated in the decision T0331/87. The Board held that the replacement or removal of a feature from a claim might not be in breach of Art. 123(2) EPC 1973 if the skilled person would directly and unambiguously recognise that (1) the feature was not explained as essential in the disclosure, (2) it was not, as such, indispensable for the function of the invention in the light of the technical problem it served to solve, and (3) the replacement or removal required no real modification of other features to compensate for the change.

As to the applicability of this test the Board first notes that the decision T0337/87 primarily concerned the removal of a feature. Since in the present case a specific device "CSTC" has been generalised by defining a more generic "device", the present Board is not convinced that the test's use is appropriate in the present case.

More particularly, having regard to the assessment of the generalisation at hand, the Board refers to, e.g., T 2311/10, where the essentiality test has been found not applicable in the case of (intermediate) generalisations.

In the more recent decision T 1852/13 the Board even stated that the essentiality test as such could not replace the application of the gold standard, and that if in some cases it could give a useful indication, the gold standard was still the only relevant test (see point 2.2.7.a)).

Both decisions have therefore concluded that the "essentiality test" could not replace the need to answer the question of what a skilled person would objectively have derived from the description, claims and drawings of a European patent application on the date of filing known as the "gold standard". The present Board concurs with these decisions, and as exposed here above already came to the conclusion that the amendment does not pass the gold standard.

2.8.2 Even if the essentiality test was used as an examining aid to determine the allowability of the present amendment, the Board would not reach the same result as the appellant.