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We at BARDEHLE PAGENBERG have decades of experience in dealing with added matter objections in many different scenarios. Contact us so that we can help you find the right strategy and changing the debate from added matter to patentability: https://www.bardehle.com/en/team
When wanting to argue in support of novelty and inventive step, added matter objections can be challenging and frustrating obstacles. But with careful planning, these obstacles can be overcome. So let's see how a strategic approach can make the difference between success and failure.
Added matter objections are raised when the EPO Examiner believes that the content of a European patent application has been amended to include subject matter which was not directly and unambiguously disclosed in the original application as filed.
First of all, it is important to understand the objection fully by, for example, identifying exactly what feature or language is being objected to and determining why the Examiner considers it not directly and unambiguously derivable from the original application.
It may be that the wording is entirely new, or that a generalisation or selection is not supported.
Perhaps it is a combination of features that was never disclosed together.
When formulating counter arguments, always use the whole application as filed, i.e. the description, claims, and the drawings. Even general statements or preferred embodiments in the application may help justify the amendment.
You can rely on both literal support, which is the direct verbatim disclosure of the feature, or implicit support, which is how a skilled person would understand the disclosed feature based on common general knowledge in view of the application as a whole.
Try not to add intermediate generalisations not supported by the application; cherry picking of features which may be inextricably linked to other features omitted in the claim is frowned upon.
The same goes for combining features from different embodiments without citing any basis which may justify such a combination.
Using functional language which is not directly present in the application will more than likely cause problems since arguing based on implicit support alone is more challenging than relying on literal support.
Broadening or narrowing the scope of a claim without a disclosed basis can equally raise issues.
So, how can you effectively address added matter objections? Some ways may be to:
- Reformulate the amendment in line with the originally disclosed wording.
- Remove the added feature entirely if it is non-essential.
- Consider reverting to the original claim wording, if possible. You could delete the problematic amendment and pursue it in a divisional application with appropriate support.
- Clearly point to specific passages in the application as filed and explain why a skilled person would understand the disclosure as supporting the amended wording.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
