UK: Added Subject Matter Woe At The EPO – How It's Best Avoided

Last Updated: 12 January 2018
Article by Simon Haslam

The European Patent Office has a reputation for being very strict when assessing whether an amendment has basis in the application as filed. Applications drafted without European patent practice in mind often fall foul of the EPO's very strict approach to added subject matter, resulting in applicants not obtaining patent protection at all or obtaining patent protection which is narrower than is probably deserved. This newsletter provides some helpful tips to avoid those added subject matter objections.

In order for an amendment to have basis in the application as filed at the EPO the amendment must be "directly and unambiguously derivable" from the application as filed. The application as filed is either the European application as filed or the PCT application as filed, if the European application is derived from a PCT application. While "directly and unambiguously derivable" does not mean "verbatim", as a rule of thumb it is generally preferable for any amendment to be taken verbatim from the application as filed. This means that the applicant or their attorney has to think in detail about the claim language when filing the application. This explains why the descriptions of many applications drafted with the EPO in mind contain a series of statements which mirror the language of the claims. These so-called statements of invention are used to provide verbatim basis for future amendments and to allow the applicant to explain the benefits of particular claim features. It is therefore extremely useful for applications destined for the EPO to include such statements of invention. They are conventionally included towards the beginning of the description, but can merely be added as a set of clauses. The clauses should have multiple dependency, like multiple-dependent claims, which are common in European practice.

One rather trite example set of such clauses may be:

A first aspect of the present invention will now be described with reference to the following clauses of which:

  • Clause 1 - A lawnmower comprising a cutting means
  • Clause 2 - The lawnmower according to clause 1 in which the cutting means comprises a rotatable cutter.
  • Clause 3 - The lawnmower according to clause 1 or clause 2 comprising a receptacle for receiving cut grass
  • Clause 4 - The lawnmower according to any of clauses 1 to 3 comprising a handle.

A second aspect of the present invention will now be described with reference to the following clauses of which:

  • Clause 5 - A method of cutting a lawn comprising contacting a rotating cutter with the lawn
  • Clause 6 - The method of cutting a lawn according to clause 5 comprising collecting cut grass.

Generalisation of features

If the only basis for an amendment was a widget comprising a spring, the EPO would most likely refuse to allow a broader claim directed to a widget comprising "a bias means" on the ground of added subject matter.

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