Thursday, 15 April 2010

T 364/08 – Cut-off Relativized

The possibility of re-introducing subject-matter that has been deleted from a European patent or, in other words, the existence of a “cut-off” effect is one of the more delicate questions dealt with in the case law. T 1149/97 has established that there is a “cut-off” for subject-matter that has been deleted in view of A 84 and A 69. T 37/99 has followed this decision. Subsequent decisions appear to have struggled with the findings of T 1149/97. T 241/02 has stated that “the grant of a patent does not necessarily constitute a final and automatic cut-off point excluding any reinsertion of deleted subject-matter” (point 1.4 of the reasons) and that T 1149/97 did not lay down a strict rule (point 2.3.5 of the reasons). T 1481/05 noted that “T 1149/97 itself [did] not consider re-introduction of deleted features - as opposed to deleted subject-matter falling under patent protection - to be inadmissible as a matter of principle” (point 4.7 of the reasons) and re-centred the cut-off effect in A 123(3) by defining a useful test: Is it possible to identify some subject-matter which did not fall under the scope of protection in the granted version of the patent, but would do so if the amendment in question (the reintroduction of the deleted features) would be allowed? (point 4.8 of the reasons) If such abandoned subject-matter is identified, the amendment cannot be allowed.

I may be wrong, but my impression is that the Boards are somewhat embarrassed by the undifferentiated wording of T 1149/97 but do not wish to state their disagreement. They rather delimit its domain of application.

The present decision appears to follow the same approach. It pays lip service to T 1149/97 but – if my understanding of the reasoning is correct – it recalls that what really matters is conformity with A 123(3), which is finally very close to what T 1481/05 (which is not referred to) had found.

[1.4] According to A 123(2) the European Patent “may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed” (emphasis added by the Board).

Thus there is no basis for the respondent’s argument that subject-matter based on the originally filed claims 2, 3 and 4, said claims no longer being part of the patent as granted and thus their subject-matter, cannot be reintroduced into the patent.

In this respect the Board concurs with the findings of T 1149/97 [6.1.9-10] that a “cut-off” effect due to the grant of a patent can be seen in the formal restrictions imposed on further amendments to the patent specification by R 80 and R 138 and, substantively only in the restriction imposed by A 123(3).

In the present case, subject-matter of the originally filed claims 2, 3 and 4, can therefore be re-introduced into claim 1, as long as it does not infringe A 123(2) and (3).

To read the whole decision, click here.