Amendments under the European Patent Convention
Encyclopedia
Article 123 of the European Patent Convention
(EPC) relates to the amendments under the EPC, i.e. the amendments to a European patent application
or patent
, and notably the conditions under which they are allowable. In particular, prohibits adding subject-matter beyond the content of the application as filed, while prohibits an extension of the scope of protection by amendment after grant.
(EPO), to amend its European patent application and for a patent proprietor the right to amend its European patent. This must however be done in accordance with the Implementing Regulations. In particular, under , amendments before receiving the European search report are generally not allowed. Article 123(1) EPC also provides that the applicant has "at least one opportunity to amend the application of his own volition"
An extension of the subject-matter of the European patent beyond the content of the application as filed is a ground of opposition
, and revocation.
in such a way as to extend the protection conferred by a European patent. It is for instance "not allowable to replace a technical feature of a granted claim with another technical feature which causes the claim to extend to subject-matter which was not encompassed by the granted claim." "Article 123(3) EPC is directly aimed at protecting the interests of third parties by prohibiting any broadening of the claims of a granted patent, even if there should be a basis for such broadening in the application as filed."
According to Enlarged Board of Appeal decision G 2/88, "it is the totality of the claims before amendment in comparison with the totality of the claims after the proposed amendment that has to be considered". If for instance the subject-matter of the claims is changed during opposition proceedings to a different embodiment and if, thereby, the scope of protection of the claims has been extended, the amendment, or change, is contrary to Article 123(3) EPC.
by the examining division, since the responsibility for any amendment always lies with the applicant.
European Patent Convention
The Convention on the Grant of European Patents of 5 October 1973, commonly known as the European Patent Convention , is a multilateral treaty instituting the European Patent Organisation and providing an autonomous legal system according to which European patents are granted...
(EPC) relates to the amendments under the EPC, i.e. the amendments to a European patent application
Patent application
A patent application is a request pending at a patent office for the grant of a patent for the invention described and claimed by that application. An application consists of a description of the invention , together with official forms and correspondence relating to the application...
or patent
Patent
A patent is a form of intellectual property. It consists of a set of exclusive rights granted by a sovereign state to an inventor or their assignee for a limited period of time in exchange for the public disclosure of an invention....
, and notably the conditions under which they are allowable. In particular, prohibits adding subject-matter beyond the content of the application as filed, while prohibits an extension of the scope of protection by amendment after grant.
Article 123(1) EPC
Article 123(1) EPC provides the right for an applicant, in proceedings before the European Patent OfficeEuropean Patent Office
The European Patent Office is one of the two organs of the European Patent Organisation , the other being the Administrative Council. The EPO acts as executive body for the Organisation while the Administrative Council acts as its supervisory body as well as, to a limited extent, its legislative...
(EPO), to amend its European patent application and for a patent proprietor the right to amend its European patent. This must however be done in accordance with the Implementing Regulations. In particular, under , amendments before receiving the European search report are generally not allowed. Article 123(1) EPC also provides that the applicant has "at least one opportunity to amend the application of his own volition"
Article 123(2) EPC
Article 123(2) EPC provides that a European patent application, or European patent, may not be amended (during prosecution for an application, and after grant for a patent) in such a way that it contains subject-matter which extends beyond the content of the application as filed. In other words, an amendment cannot go beyond the original disclosure of the application. The underlying idea of Article 123(2) EPC is that an applicant should not be allowed to improve his position by adding subject-matter not disclosed in the application as filed, which would give him an unwarranted advantage and could be damaging to the legal security of third parties relying on the content of the original application. This legal provision illustrates the importance accorded by the Convention to the content of a European patent application as filed - i.e. on the filing date - in respect of its legal effects.An extension of the subject-matter of the European patent beyond the content of the application as filed is a ground of opposition
Opposition procedure before the European Patent Office
The opposition procedure before the European Patent Office is a post-grant, contentious, inter partes, administrative procedure intended to allow any European patent to be centrally opposed...
, and revocation.
Application
The provisions of Article 123(2) EPC do not concern whether amendments have introduced an expression not present in the application as filed, but whether the amendments have introduced subject-matter extending beyond the content of the application as filed.Article 123(3) EPC
Article 123(3) EPC prohibits amendments to granted claims during opposition proceedingsOpposition procedure before the European Patent Office
The opposition procedure before the European Patent Office is a post-grant, contentious, inter partes, administrative procedure intended to allow any European patent to be centrally opposed...
in such a way as to extend the protection conferred by a European patent. It is for instance "not allowable to replace a technical feature of a granted claim with another technical feature which causes the claim to extend to subject-matter which was not encompassed by the granted claim." "Article 123(3) EPC is directly aimed at protecting the interests of third parties by prohibiting any broadening of the claims of a granted patent, even if there should be a basis for such broadening in the application as filed."
According to Enlarged Board of Appeal decision G 2/88, "it is the totality of the claims before amendment in comparison with the totality of the claims after the proposed amendment that has to be considered". If for instance the subject-matter of the claims is changed during opposition proceedings to a different embodiment and if, thereby, the scope of protection of the claims has been extended, the amendment, or change, is contrary to Article 123(3) EPC.
Inescapable Article 123(2) and (3) EPC trap
If a European patent contains a feature which was not disclosed in the application as filed (in contravention of Article 123(2) EPC) and if the removal of this feature would extend the scope of protection beyond the scope conferred by the patent as granted (in contravention of Article 123(3) EPC), the European patent has, in principle, to be revoked. In principle again, it does not matter whether the amendment leading to such a situation may have been approved during prosecutionGrant procedure before the European Patent Office
The grant procedure before the European Patent Office is an ex parte, administrative procedure, which includes the filing of a European patent application, the examination of formalities, the establishment of a search report, the publication of the application, its substantive examination, and the...
by the examining division, since the responsibility for any amendment always lies with the applicant.
See also
- G 1/03 and G 2/03G 1/03 and G 2/03G 1/03 and G 2/03 are two decisions of the Enlarged Board of Appeal of the European Patent Office , which were both issued on April 8, 2004....
(relating to disclaimers (patent)) - G 1/05 and G 1/06G 1/05 and G 1/06G 1/05 and G 1/06 are decisions of the Enlarged Board of Appeal of the European Patent Office that were issued on 28 June 2007 and answer questions relating to divisional applications under the European Patent Convention . The two decisions were published in the Official Journal of the EPO in May...
(relating to divisional patent applicationDivisional patent applicationA divisional patent application is a type of patent application which contains matter from a previously filed application...
s)