T 1437/07 - The title and Art. 123(2)

Key points

• An older decision from 2009.
• The abstract can not be used as basis for Art. 123(2). However, can the title of the application be used for Art. 123(2)?
• "In decision T 246/86 (OJ EPO 1989, 199, point 2.2), the board found that the abstract does not form part of the disclosure for the purposes of Article 123(2) EPC." 
• Because Article 85 EPC provides that "the abstract shall merely serve for use as technical information; it may not be taken into account for any other purpose".
• The Board: "amended claim 1 [in the present case] is based on a heading which is not on the cover sheet, but which is within the description of the application as filed [namely, the heading of Example 9]. According to Article 76(1) EPC and Article 123(2) EPC the allowability of an amendment is judged on the "content" of the application. The term "content" relates to the parts of a European patent application which determine the disclosure of the invention, namely the description, claims and drawings (Case Law of the Boards of Appeal, 5th edition 2006, III.A.1.1, first paragraph). Thus, headings that are situated within any of these parts form part of the disclosure content of an application and therefore amendments may be based on them."
• As a comment, an application as filed usually does not have a "cover sheet". The A1 publication may have a cover sheet. USA provisional applications sometimes have a cover sheet, but those are not relevant applications for Art. 123(2). The filing of an EP application normally includes the Request for Grant form (mutatis mutandis the PCT Request form for Euro-PCT applications). 
• Some patent applications have a title on the top of page 1 of the description. I think the present decision implies that also such a title on the top of page 1 of the description is "situated within any of these parts form part of the disclosure content of an application and therefore amendments may be based on them" and hence is part of the basis for Art. 123(2).
• The Board: "[The opponent] submitted that the special character of a heading becomes evident when considering that the title of a patent could be amended by the EPO without informing the applicant or patent proprietor. However, the only titles that may be amended by the EPO are those printed on the cover sheet of a patent application (for the amendment procedures, see the Notice dated 13 March 1991 concerning the amendment of the title of the invention in European patent applications, OJ EPO 1991, 224; Guidelines, A-III, 7.2). This "title of the invention" is also part of the abstract (Rule 47(1) EPC). "
• As a comment, the title of the application that can be amended by the EPO is indeed the title that is printed on the cover sheet of the publication of the application (e.g. the A1 publication) (and later on the cover sheet of the patent specification). Neither the EPO nor the applicant can amend the application as filed, as I understand it (subject to R.56, missing parts).
• The Board recalls that "This "title of the invention" is also part of the abstract", but that probably means the abstract included in the publication of the application (the abstract on the cover page of the A1 publication). The abstract that is part of the application as filed documents filed by the applicant when filing the application, typically on a separate page, does not change if the EPO amends the title.

EPO T 1437/07

The link to the decision is provided after the jump, as well as (an extract of) the text of the decision.

https://www.epo.org/law-practice/case-law-appeals/recent/t071437eu1.html

3. The respondents argue that a heading could not provide a basis for a claim because the purpose of a heading is merely to structure a text and therefore it could not be considered as "disclosing" anything. It is submitted that the special character of a heading becomes evident when considering that the title of a patent could be amended by the EPO without informing the applicant or patent proprietor.

3.1 However, the only titles that may be amended by the EPO are those printed on the cover sheet of a patent application (for the amendment procedures, see the Notice dated 13 March 1991 concerning the amendment of the title of the invention in European patent applications, OJ EPO 1991, 224; Guidelines, A-III, 7.2). This "title of the invention" is also part of the abstract (Rule 47(1) EPC). Both the abstract and the title of the invention serve for information and documentation purposes. In decision T 246/86 (OJ EPO 1989, 199, point 2.2), the board found that the abstract does not form part of the disclosure for the purposes of Article 123(2) EPC. Consequently, the title of the invention may not be used as a basis for any amendments of a claim as well.

3.2 In contrast, amended claim 1 is based on a heading which is not on the cover sheet, but which is within the description of the application as filed. According to Article 76(1) EPC and Article 123(2) EPC the allowability of an amendment is judged on the "content" of the application. The term "content" relates to the parts of a European patent application which determine the disclosure of the invention, namely the description, claims and drawings (Case Law of the Boards of Appeal, 5th edition 2006, III.A.1.1, first paragraph). Thus, headings that are situated within any of these parts form part of the disclosure content of an application and therefore amendments may be based on them.