Most Applicants for European patent applications at some time face the dreaded "added subject matter" objection following a claim amendment in a European patent application. The standard is strict. It is a hurdle that must be overcome before all else.
Sometimes "added subject matter" objections (under Article 123(2) EPC) are issued simply because the Examiner cannot quickly locate where the supposed support for the amendment is to be found in the original specification (if the Applicant does not indicate support, most Examiners do no more than a simple word search). One of the recent rule changes at the EPO has introduced a new preliminary step to the examination of amendments which is intended to force Applicants to provide full support for amendments. In particular, if an Applicant has not indicated where in the original specification support may be found for the amendments or if the indicated passages do not appear relevant to the amendments, the EPO Examiner will issue an Official Letter setting a deadline of one month for providing better support.
At Jenkins, we have for many years routinely indicated the passages in the specification which provide support for amendments. This has for a long time been the best way to ensure that amendments are accepted and to proceed to grant. Indeed, identifying precise wording of suitable amendments for which proper support can be specified can be a major time factor in the preparation of a response to an Examination Report.
If the EPO Examiner considers that this new preliminary step is satisfied, he or she will then proceed with a full investigation as to whether the amendments are supported by the specification. As discussed in the article "Added Matter and Article 123(2) EPC - what is the test for claim broadening" in our Autumn 2009 edition of Patent issues, the EPO is very strict when assessing support for amendments. Some types of amendments are known to be likely to attract added matter objections, including:
• removing features described as essential from an independent claim,
• combining features from different embodiments when the particular combination is not disclosed in the application as filed, and
• intermediate generalizations (see below).
But some amendments which may appear to be "safe" at first sight might not be as safe as one would expect.
For example, we are aware of a telecoms case in which the EPO Examiner expressed the view that the word "transmitting" in a feature "transmitting a packet" added matter even though the application as filed clearly contained the words "send a packet" in the relevant context. (In the context of the other steps of the amended claim, the word "transmitting" was considered more appropriate.) The EPO Examiner needed to be persuaded that the meaning of "transmitting" was clearly and unambiguously derivable from the word "sending". While this may at first sight appear slightly ridiculous, it should be borne in mind that English is not the mother tongue of many EPO examiners. Accordingly, an examiner may not be certain that one word is synonymous with another, and indeed may assume this not to be the case because it begs the question "why does the Applicant want to use a different word or phrase?" The Examiner may suspect the substitution of one word or phrase with another is intended to change the meaning or eliminate an ambiguity, which is not permissible under the strict standard applied.
Another area in which an apparently "safe" amendment may not in fact be allowed is where a new feature is taken from a specific embodiment. In such a situation, an EPO Examiner may be of the view that the new feature is disclosed only in combination with the other features of the specific embodiment. Introducing the new feature into the claim without the other features of the specific embodiment would be seen as introducing subject matter which is not described in the original specification (a so-called "intermediate generalisation"). It is therefore important to identify any passages in the specification which indicate that the other features of the specific embodiment are not essential, or that the features can be selected in isolation of each other.
So, what is best practice when making amendments?
Our suggestion when making claim amendments/adding new claims is :
• try to stay close to the wording of the original specification (and use the same wording where possible);
• indicate the passage(s) in the specification as filed which describe the feature(s) concerned;
• justify any differences between the wording of the amendment and the wording in the original specification; and
• explain why the amendment does not require the addition of any further features into the claim, particularly if the amendment originates from a passage describing a specific embodiment of the invention.