EP 3 432 813 A1, relates to a rotational atherectomy system of eccentric abrading heads, filed as PCT/US2017/017770 and published as WO 2017/165013.
Brief outline of the case
The application was refused for added matter.
The board remitted the case to the ED for further processing.
The applicant’s point of view
The feature of claim 1 of the MR (former AR2) that the device comprised more than two counterweights could be derived from the published application. Its inclusion in claim 1 did not violate Art 123(2).
Paragraph [0079] of the published application described and defined a counterweight as referred to in the present application. It referred to “a system of an abrasive element with two or more counterweights“, thus disclosing the possibility of having more than two counterweights.
Furthermore, paragraph [0101] referred to “one or more counterweights” and paragraph [0107] disclosed “more than one proximal counterweight, and/or more than one distal counterweight“.
The board’s decision
Claim 1 of each of the requests on file defines a high-speed rotational atherectomy device comprising a guide wire, a drive shaft, an eccentric abrasive element disposed on the drive shaft, and counterweights disposed on the drive shaft.
As stated in points 1.4 and 1.5 of the Reasons of G 3/89, the content of the application as filed consists of the description, claims and drawings as filed, i.e. on the filing date. In this case, the application as filed was published with the international application number WO 2017/165013 A1.
The claims filed on entry into the European phase do not correspond to those of the application as filed. Therefore, the claims filed on entry into the European phase do not provide a basis for assessment of the compliance of the amendments with Art 123(2).
For the board, the ED incorrectly relied on the claims filed upon entry into the European phase for the assessment of Art 123(2). It therefore appears that a proper assessment of compliance with Art 123(2) may not yet have been carried out.
Furthermore, it is not apparent from the first-instance proceedings whether the ED could have had further concerns in relation to other requirements of the EPC, for example in relation to Art 52(1) or 84.
Consequently, the board remitted the case to the ED for further prosecution under Art 11 RPBA.
Comments
It should be clear for any ED that, in case of a Euro-PCT application entering the reginal phase, the application as filed is the PCT application as filed and any claim filed when entering the regional phase, has to be assessed against the PCT application as filed.
In T 703/05, Reasons 2.3, the applicant even argued that amendments made during the international phase cannot be objected under the provisions of the EPC.
The board held that amendments filed during the international phase have to comply with the substantive requirements of the EPC, in particular that of Art 123(2).
This applies as well to the present case.
Comments
1 reply on “T 1424/23-Assessment of Art 123(2) when entering the regional phase at the EPO”
An interesting point of discussion in such cases is always: what does ‘two or more counterweights’ mean to the skilled person?
Does this disclose two distinct variants: ‘two counterweights’ and ‘more than two counterweights’ or only one variant: ‘the number of counterweights irrelevant as long as it is at least two’?
If the ED followed the second interpretation, it could well be that did (contrary to the finding of the board) consider the application as filed, but that they saw the isolation of ‘more than two’ from the group ‘two or more’ as the actual Art 123(2) problem.