ARTICLE
5 September 2025

Added Matter – Part 2 (Video)

HL
HGF Ltd

Contributor

HGF is one of Europe's largest firms of intellectual property specialists in Europe, with 21 offices across the UK, The Netherlands, Germany, Austria, Switzerland and Ireland. The firm's trade mark attorneys, patent attorneys and IP solicitors provide an integrated IP solution for clients.
Pre- and Post-Grant Amendments are governed by Articles 123(2) & 123(3) EPC respectively...
United Kingdom Intellectual Property

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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.

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.

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