T 1195/18 - Filing by reference, losing the original claims

Key points

•  This divisional application was filed by reference, i.e. only a request for grant form was filed (here). 
• Box 26.1 was checked, stating that "that reference replaces the description and any drawings" .
• Box 26.2 was not checked, i.e. the box " the reference to the previously filed application also replaces the claims" was not checked.
• The claims were filed later.
• The Board: " 1. The present divisional application 12 173 914 shares a common description and set of drawings with the earlier application 07 766 892 (see point 26.1 in EPO Form 1001E "request for grant of a European patent" with its explicit reference to the description and drawings of the previously filed application). The originally filed claims do not provide a basis for the present claims of all claim requests. This is not contested by the proprietor. Hence, it is only the description or the drawings that could provide such a basis. "
• As a comment, this is a significant disadvantage of filing by reference. 
• As a further comment, you can also file normally, add the original claims as embodiments to the description, omit claims on filing, and file the claims later.
• See also the parallel case T 1472/19, " Contrary to the allegations of the proprietor, the claims of the earlier filed parent application P1b (EP 07 706 172) cannot serve as a basis in the considerations regarding added subject-matter. This is because the reference to P1b according to Rule 40 (1)(c) EPC was only made with regard to the description and drawings, not with respect to the claims (refer to points 26.1 and 26.2 of the request for grant of a European Patent dated 25.04.2012). 15. The proprietor's view, that the explicit reference in the request for grant to the description and drawings of the parent application did not exclude the claims, is not persuasive. Article 123(2) EPC requires that amendments to a claim must derive directly and unambiguously from the original application documents. This implies that the passages referred to as basis for the amendments must be unambiguously identified in the request for grant as being part of the application." 

EPO 

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/t181195eu1.html

Reasons for the Decision

1. The present divisional application 12 173 914 shares a common description and set of drawings with the earlier application 07 766 892 (see point 26.1 in EPO Form 1001E "request for grant of a European patent" with its explicit reference to the description and drawings of the previously filed application). The originally filed claims do not provide a basis for the present claims of all claim requests. This is not contested by the proprietor. Hence, it is only the description or the drawings that could provide such a basis. The description and drawings of the present application are, however, identical with the description and drawings of the earlier application. As a consequence, the various issues of added subject-matter always concern both Article 76(1) and 123(2) EPC. In the following, it is exclusively referred to the description of the earlier application.