Added Matter – Part 2

Video overview:

Pre and Post-Grant Amendments are governed by Articles 123(2) & 123(3) EPC respectively

• Before grant, amendments can broaden the claim scope as long as the resulting claim is clearly and unambiguously disclosed in the original application (Article 123(2) EPC).
• Common pitfalls include intermediate generalisations and shrinking/cherry-picked lists, both of which may introduce a combination of features not clearly and unambiguously disclosed originally. To avoid this, applicants should try to: 
  • provide a general basis for all features in isolation as well as desired combinations of features to provide useful fallback positions;
  • provide a pointer to particular selections from long lists;  and 
  • not rely solely on Figures for support.
• After grant, broadening the claim scope (e.g. by Deleting limiting features) is not allowed.
• A Patentee may find themselves in the “inescapable trap” if a pre-grant amendment adds matter under Article 123(2) EPC, and it cannot be remedied post-grant without broadening the claim which would violate Article 123(3) EPC. 
• The Result of the Inescapable trap is therefore that the Patent may is held to be invalid, and cannot be rescued via amendment.
• Careful drafting and amendment strategy is therefore essential to avoid this legal pitfall.