The European Patent Office (EPO) is known for the very high standard it applies when assessing whether amendments to European patents and applications are supported by the original patent documents. The EPO strongly believes that only language that is literally supported by the original application documents can be used for an amendment, in the interest of safeguarding legal certainty for third parties by avoiding amendments that may introduce, after the filing date, information that is not actually disclosed in the original application documents. At the same time, users often perceive the standard applied by the EPO as being too strict compared to the skilled person’s understanding of the information actually disclosed in those documents. Such very strict standard is often perceived as being contrary to the interest to be pursued by the patent system, which is that of conferring fair protection for the technical invention actually devised at the filing date.

With this background in mind, on February 7, 2014 the EPO held a symposium on its practice regarding Art. 123(2) of the European Patent Convention (EPC), i.e. the EPC provision according to which amendments may only be allowed if they do not go beyond the subject-matter of the original patent application documents. On the occasion of such symposium, the EPO gathered patent professionals from Europe, Japan and the USA as well as EPO examiners, lawyers and procedural experts, with a view to enhancing understanding of how the EPO applies Art. 123(2) EPC so as to make the examiners aware of the concerns of the users.

The symposium was opened by an overview of the EPO practice when assessing amendments under Art. 123(2) EPC. The users were given the opportunity to presented the position on amendments as seen from the perspective of US, Japanese and European practice. The discussion then continued with a technology-specific focus, in that the participants were divided into four groups specializing in mechanics, electricity/physics, chemistry and biotechnology. The four groups included a EPO examination director, two examiners as well as EPO experts on patent law and patent procedures management. The users were represented by five to ten patent professionals. The four groups extensively addressed the practice currently being applied, by having both the examiners and the patent professional bring specific examples. At the end of the technology-specific discussions, there was a final plenary session during which the outcome of those discussions was presented.

What emerged was that the participants generally agreed that the criteria to be applied when assessing added subject-matter under Art. 123(2) EPC, novelty and priority should be the same. From the patent professionals came a request to apply a less formalistic approach to the assessment of amendments under Art. 123(2) EPC, while more value should be given to the actual invention as understood by the skilled person when reading the original application documents. Otherwise, the overly formalistic approach of the EPO would invariably lead to an artificial drafting of patent applications so as to ensure disclosure of all possible combinations that might, in the future, serve as support for amendments.

Overall, the symposium participants agreed that the discussions were constructive and could help increase awareness of the concerns of the users. The EPO announced that they would carefully study the results arising from symposium and use them to improve the relevant sections of the Guidelines. It is hoped that this symposium and other contacts with the EPO will allow to introduce an approach to amendments which is more reflective of the need to obtain fair protection for the technology disclosed in European patent applications.

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